DECISION

G.D. Searle & Co. v. Balloon Junction Marketing

Claim Number: FA0210000128144

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry.  Respondent is Balloon Junction Marketing, Pasadena, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <celebrex-prescriptions-information.org>, registered with Bulkregister.

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 15, 2002; the Forum received a hard copy of the Complaint on October 16, 2002.

On October 15, 2002, Bulkregister confirmed by e-mail to the Forum that the domain name <celebrex-prescriptions-information.org> is registered with Bulkregister and that Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister 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 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 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-prescriptions-information.org by e-mail.

Having received no 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 25, 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 any 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:

Respondent’s <celebrex-prescriptions-information.org> domain name is confusingly similar to Complainant’s registered CELEBREX mark.

Respondent does not have any rights or legitimate interests in the <celebrex-prescriptions-information.org> domain name.

Respondent registered and used the <celebrex-prescriptions-information.org> domain name in bad faith.

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

FINDINGS

Complainant, G.D. Searle & Co., holds two domestic trademarks for the CELEBREX mark (U.S. Reg. Nos. 2,321,622 and 2,307,888). Complainant registered these marks on February 22, 2000 and January 11, 2000, respectively, on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and has used them in commerce since at least February of 1999. Complainant has also applied for or received trademark registrations in more than 112 countries worldwide.

Complainant adopted the use of its distinctive CELEBREX mark to market “pharmaceutical products in the nature of anti-inflammatory analgesics” in a global campaign for its anti-arthritic medicine. Under the CELEBREX mark, Complainant receives billions of dollars in annual sales.

Respondent, Balloon Junction Marketing, registered the <celebrex-prescriptions-information.org> domain name on March 19, 2002 and is not licensed or otherwise authorized to make use of the CELEBREX mark for any purpose. Respondent uses its website to solicit drug orders for VIAGRA.

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 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 its CELEBREX mark through registration on the Principal Register of the USPTO, as well as via continuous and widespread use of the mark worldwide.  Complainant’s consistent use of its fanciful CELEBREX mark demonstrates that it has sufficient rights in the mark to bring this Complaint against Respondent.  See Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the 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”).

Respondent’s <celebrex-prescriptions-information.org> domain name is confusingly similar to Complainant’s fanciful CELEBREX mark.  The only difference between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.org” after the mark and the addition of the descriptive phrase “prescriptions-information.”  As top-level domains are a required feature for each domain name, the “.org” in the disputed domain name does not prevent a finding of confusing similarity.  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).

The addition of the descriptive phrase “prescriptions-information” to Complainant’s registered CELEBREX mark also fails to sufficiently differentiate the disputed domain name from Complainant’s mark.  As Complainant’s CELEBREX is a pharmaceutical product, this phrase implies to an Internet user that Respondent’s website is somehow affiliated with or licensed by Complainant.  The dominant feature of the disputed domain name remains Complainant’s fanciful CELEBREX mark, while the additional phrase only adds confusion to the established similarity between the domain name and Complainant’s mark.  See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

Accordingly, the Panel finds that the <celebrex-prescriptions-information.org> domain name is confusingly similar to Complainant’s registered and distinctive CELEBREX mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon a complainant.  Under Policy ¶¶ 4(c)(i)-(iii), a respondent can rely on a “bona fide offering of goods or services” connected with the disputed domain name, the fact that it has been “commonly known by the domain name,” or that it is making a “legitimate noncommercial or fair use of the domain name” to demonstrate a right or legitimate interest in a domain name.  If a complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims a respondent could make under Policy ¶¶ 4(c)(i)-(iii), thereby shifting the burden to the respondent.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent’s failure to respond to the Complaint is evidence of a lack of rights and legitimate interests in the <celebrex-prescriptions-information.org> domain name.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent uses the infringing domain name to solicit drug orders for the prescription drug VIAGRA. In registering an infringing domain name that is confusingly similar to Complainant’s registered and distinctive mark for its commercial operation in a similar industry, namely, drug sales, Respondent is not making a bona fide offering of goods or services, or legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii).  See G.D. Searle & Co. v. Fred Pelham, FA117911 (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, FA112559 (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)); see also Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Complainant has not authorized Respondent to use its CELEBREX mark and Respondent’s contact information implies that it is not “commonly known by” the name CELEBREX-PRESCRIPTIONS-INFORMATION or <celebrex-prescriptions-information.org>.  Furthermore, as Complainant’s mark is a fanciful term, specifically coined by Complainant, it is doubtful that anyone other than Complainant could claim to be “commonly known by” a derivative of the mark.  See Stork Restaurant v. Sahati, 166 F.2d 348, 76 U.S.P.Q. 374 (9th Cir. 1948) (greater degree of protection given to fanciful marks than to names in common use); Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp. 1419, 12 U.S.P.Q.2d 1091, 1098 (D. Minn. 1989) (quoting treatise: "Fanciful marks, if adopted in a bona fide first use, are considered the strongest of marks because their inherent novelty creates a substantial impact on the buyer's mind").  In light of Respondent’s failure to offer any evidence that it has ever been commonly known by the disputed domain name, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").  

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the <celebrex-prescriptions-information.org> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Registering and using an infringing domain name to “intentionally attempt to attract, for commercial gain, Internet users…by creating a likelihood of confusion…as to the source, sponsorship, affiliation, or endorsement of…a product of service on your website,” exemplifies bad faith under Policy ¶ 4(b)(iv).  In the present dispute, Respondent’s <celebrex-prescriptions-information.org> domain name, used to solicit offers for the drug VIAGRA, fits sqaurely within this provision of the Policy.  By registering a domain name that infringes on Complainant’s mark, and using that domain name to gain commercial profit from drug sales, Respondent both registered and used its domain name in bad faith. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also G.D. Searle & Co. v. Fred Pelham, FA117911 (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).

Furthermore, registration of an infringing domain name when Respondent had constructive or actual notice of Complainant’s mark prior to registration is evidence of bad faith registration.  See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding Respondent “was aware of and had knowledge of” Complainant’s mark when registering the domain name because Complainant’s mark was a coined arbitrary term with no meaning apart from Complainant’s products).  In this dispute, Respondent could only have registered a domain name that included Complainant’s fanciful mark in its entirety, along with a phrase describing Complainant’s product, with knowledge of Complainant’s mark.  The Panel finds that Respondent’s registration of <celebrex-prescriptions-information.org> was committed with actual knowledge of Complaiant’s mark, and was done in bad faith.

Accordingly, the Panel finds that Respondent registered and used the <celebrex-prescriptions-information.org> domain name in bad faith under Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <celebrex-prescriptions-information.org> domain name be TRANSFERRED from Respondent to Complainant.

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

Dated: December 1, 2002

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