DECISION

G.D. Searle & Co. v. Duece Strategies

Claim Number: FA0210000126827

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Duece Strategies, Phoenix, AZ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <celebrex-online-pharmacy.com>, registered with Namesecure.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 1, 2002; the Forum received a hard copy of the Complaint on October 2, 2002.

On October 2, 2002, Namesecure confirmed by e-mail to the Forum that the domain name <celebrex-online-pharmacy.com> is registered with Namesecure and that Respondent is the current registrant of the name.  Namesecure has verified that Respondent is bound by the Namesecure registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@celebrex-online-pharmacy.com by e-mail.

Having received no formal Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a formal Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <celebrex-online-pharmacy.com> domain name is confusingly similar to Complainant’s CELEBREX mark.

2. Respondent does not have any rights or legitimate interests in the <celebrex-online-pharmacy.com> domain name.

3. Respondent registered and used the <celebrex-online-pharmacy.com> domain name in bad faith.

B. Respondent failed to submit a formal Response in this proceeding.

FINDINGS

Complainant, G.D. Searle and Co., is the owner of numerous applications and registrations for its fanciful CELEBREX mark. Complainant has filed applications to register the CELEBREX mark in more than 112 countries around the world. An example of one of Complainant’s registrations is U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,307,888 registered on the Principal Register January 11, 2000 reflecting the CELEBREX mark.

Complainant’s CELEBREX mark began receiving media attention as early as December of 1998. Complainant filed its applications for registration of the mark as early as February 10, 1998 in the U.S., and internationally as early as February 16, 1998.

Complainant’s CELEBREX mark denotes “pharmaceutical products in the nature of anti-inflammatory analgesics” to the international consuming public. Complainant has made extensive use of its CELEBREX mark by using it in connection with the sale of anti-arthritic medicine on an international scale. Complainant’s CELEBREX drug was referred to in an article for The New York Times as a “blockbuster arthritis drug,” and Forbes magazine featured Complainant’s CELEBREX drug, referring to it as “the $2 billion (sales) crown jewel in [Complainant’s] new portfolio.”

Due to Complainant’s extensive marketing campaign and the substantial advertising resources it has expended on the CELEBREX mark, Complainant’s CELEBREX mark has earned (1) worldwide notoriety for the purpose of protection under the Paris Convention, and (2) fame in the U.S. for the purpose of protection under the Trademark Dilution Act.[1]

Respondent  registered the <celebrex-online-pharmacy.com> domain name on June 30, 2001. Complainant’s investigation of Respondent’s acitivities reveals that the subject domian name resolves to an online pharmacy where Respondent solicits drug orders from interested Internet users. However, Respondent communicated in an informal Response that it never intended to infringe on Complainant’s CELEBREX mark and “authorize[s] NameSecure.com to transfer the domain in question.” Complainant received Respondent’s communication, but wishes the Panel to proceed.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the CELEBREX mark through registration of the mark with the USPTO and other international trademark authorities. Subsequent to registration, Complainant has used its coined CELEBREX mark continuously in connection with its development and distribution of the CELEBREX product.

Respondent’s <celebrex-online-pharmacy.com> domain name is confusingly similar to Complainant’s CELEBREX mark. Respondent’s domain name contains Complainant’s CELEBREX mark in its entirety. The second-level domain only deviates with the suggestive addition of “online-pharmacy,” which represents descriptive terms related to Complainant’s operations. Previous panels have determined that the addition of words that describe a complainant’s business fails to create a distinct or separate domain name capable of overcoming a Policy ¶ 4(a)(i) anaylsis. See Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark.  “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

As stated, Respondent failed to submit a formal Response in this proceeding and Complainant’s arguments have gone uncontested. Because Complainant’s assertions are unrefuted, all reasonable inferences will be resolved in favor of Complainant, unless clearly contradicted by the evidence. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Furthermore, Complainant has presented a prima facie case that shifts the burden of establishing rights or legitimate interests to Respondent. By failing to respond, Respondent has not succeeded in fulfilling its burden under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Uncontested evidence indicates that Respondent is utilizing Complainant’s mark and diverting Internet users to its commercial website. Respondent’s use of a famous mark in order to profit from consumer interest fails to establish rights or legitimate interests in the domain name. Respondent’s use of the domain name has opportunistic undertones and is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is using the infringing domain name to sell prescription drugs it can be inferred that Respondent is opportunistically using Complainant’s mark in order to attract Internet users to its website); see also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).

Further, Respondent’s willingness to transfer its rights in the domain name, as illustrated in its informal Response, indicates that Respondent does not have any rights or legitimate interests in the domain name. See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name).

No evidence exists suggesting Respondent is commonly known by the “celebrex-online-pharmacy” second-level domain, or the domain name itself. Therefore, Respondent cannot establish rights or legitimate interests in the subject domain name pursuant to Policy ¶ 4(c)(ii). Complainant’s extensive advertising efforts undertaken to promote the CELEBREX mark make it unlikely that Respondent is commonly known by a domain name that incorporates the famous CELEBREX mark in its entirety. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant’s arguments support a finding that Respondent is opportunistically using the domain name to solicit pharmaceutical orders from interested or confused Internet users. Respondent’s intentions can be gleaned from the suggestive second-level domain, “celebrex-online-pharmacy,” as it implies that Complainant’s CELEBREX drug is available via Respondent’s website. Respondent’s activities constitute bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is benefiting from the unauthorized use and goodwill of Complainant’s mark. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

Additionally, precedent has determined that when a respondent registers and uses an infringing domain name, and subsequently expresses a willingness to transfer its rights in the domain name, the respondent has registered and used the domain name in bad faith. Because of the nature of Respondent’s website, it can be inferred that Respondent had knowledge of Complainant’s product and corresponding rights in the CELEBREX drug. Respondent’s registration and use of a domain name, despite knowledge of Complainant’s rights, evidences bad faith. See G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug”); see also Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <celebrex-online-pharmacy.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: November 26, 2002

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