DECISION

G.D. Searle & Co. v. David Gregg

Claim Number: FA0210000128077

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry.  Respondent is David Gregg, Riverside, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <guide-to-celebrex.com>, registered with ItsYourDomain.com.

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 16, 2002, ItsYourDomain.com confirmed by e-mail to the Forum that the domain name <guide-to-celebrex.com> is registered with ItsYourDomain.com and that Respondent is the current registrant of the name.  ItsYourDomain.com has verified that Respondent is bound by the ItsYourDomain.com 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@guide-to-celebrex.com 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 December 2, 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

The <guide-to-celebrex.com> domain name is confusingly similar to Complainant’s CELEBREX mark.

Respondent has no rights or legitimate interests in the <guide-to-celebrex.com> domain name.

Respondent registered and used the <guide-to-celebrex.com> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, G.D. Searle, 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 Complainant’s registration is U.S. Patent and Trademark Office 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 and 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 coined the CELEBREX mark for use in connection with its “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 substantial advertising resources expended on the CELEBREX mark, it 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.

Respondent registered the domain name on August 2, 2002.  Respondent has yet to develop a website with content in association with the subject domain name. 

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 standing by submitting proof of its trademark registrations for the CELEBREX mark.  In addition, Complainant has extensively used the fanciful CELEBREX mark in commerce since adopting it in 1998. 

Respondent’s <guide-to-celebrex.com> domain name incorporates Complainant’s entire CELEBREX mark with the mere addition of the prefix “guide-to.”  The prefix adds no distinguishing qualities to the <guide-to-celebrex.com> domain name because it merely suggests that information about the CELEBREX medication can be found at the domain name address.  Since the prefix is suggestive of Complainant’s fanciful CELEBREX mark, the dominant portion of the <guide-to-celebrex.com> domain name remains the mark itself.  Therefore, Respondent’s <guide-to-celebrex.com> domain name is confusingly similar to Complainant’s CELEBREX mark.  See Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).

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

Rights or Legitimate Interests

Complainant carries the initial burden of establishing Respondent’s lack of rights and legitimate interests in the <guide-to-celebrex.com> domain name under Policy ¶ 4(a)(ii).  Complainant has fulfilled its burden by alleging and arguing Respondent has no such right or interests pursuant to Policy ¶¶ 4(c)(i)-(iii).  Hence, the burden shifts to Respondent to come forward and produce evidence showing its rights or legitimate interests in the <guide-to-celebrex.com> domain name.  Respondent has failed to even submit a Response.  Therefore, the Panel presumes that Respondent has no such rights or legitimate interests.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where 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 does not use the <guide-to-celebrex.com> domain name in connection with a website.  Respondent is merely holding onto the registration rights in the <guide-to-celebrex.com> domain name.  Respondent only registered the <guide-to-celebrex.com> domain name four months ago, and such a short amount of time is usually not sufficient to find passive holding lack of rights or legitimate interests.  Normally, a respondent is afforded a grace period to develop a use for the domain name because website development may demand time and the accumulation of resources.  It is taken into account that registering a domain name is a part of a business process and the creation of content associated with a domain name may take some time and effort.  However, Complainant actively seeks protection of its valuable CELEBREX mark and by bringing a Complaint the duty of establishing demonstrable business plans in connection with the <guide-to-celebrex.com> domain name is on Respondent.  Since Respondent has not come forward, all reasonable inferences of fact from the Complaint will be accepted as true and drawn in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also 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).

The circumstances of the present case permit the Panel to infer that Respondent lacks rights or legitimate interests in the <guide-to-celebrex.com> domain name because of its inactive use.  First, the <guide-to-celebrex.com> domain name predominantly displays Complainant’s fanciful CELEBREX mark along with a suggestive phrase.  Since Complainant coined the CELEBREX mark, it is hard to imagine a non-infringing use of the domain name by Respondent.  Second, Respondent has not come forward to provide evidence of a planned use that would not infringe on Complainant’s fanciful CELEBREX mark.  Since Complainant has sufficiently challenged Respondent’s interests in the domain name, the Panel need not wait for an infringing use to develop in order to find that no possible valid use of the domain name exists.  Therefore, the strength of Complainant’s mark and Respondent’s failure to defend its interests allow the Panel to conclude that Respondent has no rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii).  See 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"); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (“It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

Furthermore, the CELEBREX mark was specifically adopted by Complainant to denote its arthritis medication, and therefore, it is highly unlikely that Respondent is known by any confusingly similar version of the mark, such as the <guide-to-celebrex.com> domain name.  Respondent has not argued that it is commonly known by the <guide-to-celebrex.com> domain name.  The only information about Respondent’s identity is provided by the WHOIS information submitted by Respondent, which identifies Respondent as David Gregg.  Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <guide-to-celebrex.com> domain name pursuant to Policy ¶ 4(c)(ii).  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 Respondent has no rights or legitimate interests in the domain name; thus, Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

A list of circumstances that warrant a finding of bad faith can be found in Policy paragraph 4(b).  This list is intended to be a guide to the bad faith analysis but it is merely illustrative.  Hence, the Panel is permitted to look at the totality of circumstances while conducting a bad faith analysis.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Complainant has actively sought trademark protection of its CELEBREX mark since its inception, as evidenced by registration of the mark in over 112 countries.  The CELEBREX mark enjoys protection by the USPTO under the Principal Register.  This trademark registration imparts constructive knowledge upon all secondary users, such as Respondent, of the CELEBREX mark.  Respondent had a duty to clear the rights in its <guide-to-celebrex.com> domain name prior to registering it.  A rudimentary trademark search would have produced evidence showing Complainant’s interest in the CELEBREX mark.  Furthermore, as previously mentioned, Complainant adopted the CELEBREX mark for exclusive use in connection with its arthritis medication.  Thus, it is highly unlikely that Respondent randomly selected the term for use in the <guide-to-celebrex.com> domain name without knowledge of Complainant’s preexisting rights.  Therefore, the Panel concludes that Respondent clearly registered the <guide-to-celebrex.com> domain name with knowledge of Complainant’s interests in the CELEBREX mark, which constitutes bad faith registration under Policy ¶ 4(a)(iii).  See Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); 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).

Respondent’s lack of use of the <guide-to-celebrex.com> domain name, and previously mentioned failure to come forward with demonstrable plans to use the domain name, allows the Panel to infer that the domain name could not be used for any non-infringing purpose.  Hence, the Panel finds Respondent’s inactive use, failure to provide evidence of a valid planned use and surrounding circumstances warrants a finding of bad faith use.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>); see also ”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

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

DECISION

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

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

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

Dated: December 4, 2002

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