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Generic Top Level Domain Name (gTLD) Decisions |
G.D. Searle & Co. v. dfrantum
Claim Number: FA0210000128146
PARTIES
Complainant
is G.D. Searle & Co., Peapack,
NJ (“Complainant”) represented by Paul
D. McGrady, Jr., of Ladas &
Parry. Respondent is dfrantum, Brea, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrexwatcher.com>,
registered with ItsYourDomain.com/Innerwise.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits 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/Innerwise confirmed by e-mail to the Forum
that the domain name <celebrexwatcher.com>
is registered with ItsYourDomain.com/Innerwise and that Respondent is the
current registrant of the name. ItsYourDomain.com/Innerwise
verified that Respondent is bound by the ItsYourDomain.com/Innerwise
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 16, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 5, 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@celebrexwatcher.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
November 25, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
Hon. Carolyn Marks
Johnson 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
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
<celebrexwatcher.com> domain name is confusingly similar to
Complainant’s registered CELEBREX mark.
Respondent has no rights or legitimate interests in the <celebrexwatcher.com> domain name.
Respondent registered and used the <celebrexwatcher.com> 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 for this mark.
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, dfrantum, registered the <celebrexwatcher.com> domain name
on July 29, 2002, but is not licensed or otherwise authorized to make use of
the CELEBREX mark for any purpose. Respondent’s
website has posted no content
since its registration.
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 Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers
appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph
4(a) of the Policy requires that 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 by
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 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”).
The domain name registered by Respondent,
<celebrexwatcher.com>, 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 “.com” after the mark and
the addition of the generic word “watcher.”
As top-level domains are a required
feature for each domain name, the “.com” 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., FA 95093 (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 generic word
“watcher” to Complainant’s registered CELEBREX mark also fails to sufficiently differentiate
the
disputed domain name from Complainant’s mark. The dominant feature of the
disputed domain name remains Complainant’s fanciful CELEBREX
mark, while the
generic word “watcher” does nothing to distinguish the domain name from the
CELEBREX 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 Complainant
combined with a generic word
or term).
Accordingly, the Panel finds that the <celebrexwatcher.com> domain name
is confusingly similar to Complainant’s registered and distinctive CELEBREX
mark under Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶
4(c)(i)-(iii), Respondent may 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 Complainant rebuts each of these
elements, it has satisfied
its burden by successfully addressing any of the
specified claims Respondent could make under Policy ¶¶ 4(c)(i)-(iii), thereby
shifting
the burden to Respondent. 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’s
failure to respond to the Complaint is evidence of a lack of legitimate rights
or interests in the <celebrexwatcher.com> 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 has made no use of the
infringing domain name since its registration. In registering an infringing
domain name that is
confusingly similar to Complainant’s registered and
distinctive mark, while failing to make any use of the domain name, 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 Nike, Inc. v. Crystal Int’l,
D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests
where Respondent made no use of the infringing domain
names); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service
or develop the site demonstrates that Respondents
have not established any
rights or legitimate interests in the domain name); see also Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent
merely passively
held the domain name).
Furthermore, given the fanciful nature of
Complainant’s registered CELEBREX mark, it is doubtful that Respondent could
show a legitimate
noncommercial fair use of the disputed domain name, or offer
any bona fide goods or services under it. The very nature of Complainant’s
mark
shifts the burden to Respondent to prove rights or interests in the infringing
domain name. See 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 where there are
no other indications that Respondent could have registered
and used the domain name in question for any non-infringing purpose);
see
also Body Shop Int’l PLC v. CPIC NET
& Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1)
Respondent failed to use the domain name and (2) it is clear that Respondent
registered the domain name as an opportunistic attempt to gain from the
goodwill of Complainant).
As Respondent offered no submission in
this dispute, the Panel draws all appropriate inferences in favor of
Complainant’s submitted
facts, and finds that Complainant has adequately met
its burden under Policy ¶¶ 4(c)(i) and (iii). 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 Ziegenfelder Co. v. VMH Enter.,
Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on
Respondent’s failure to respond: (1) that Respondent does not
deny the facts
asserted by Complainant, and (2) Respondent does not deny conclusions that
Complainant asserts can be drawn from the
facts).
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 CELEBREXWATCHER or <celebrexwatcher.com>.
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 Rest. 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, FA 96949 (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 <celebrexwatcher.com> domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Policy
paragraph 4(b) lists four examples evidencing bad faith use and registration of
a domain name. However, that list is not an
exhaustive set of every conceivable
circumstance of bad faith registration and use of a domain name. See
Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of
the Policy is not an exhaustive list of bad faith
evidence); see also Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out
in ¶4(b),
does not mean that the domain names at issue were not registered in and are not
being used in bad faith”).
An example of bad faith registration not
enumerated in the Policy is registration of an infringing domain name when
Respondent had
constructive or actual notice of Complainant’s mark prior to
registration. See 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 <celebrexwatcher.com> was
committed with actual knowledge of Complainant’s mark, and was done in bad
faith. See Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known
mark at the time of registration).
Respondent’s
passive holding of the disputed domain name is evidence of bad faith use. See
DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see
also Phat Fashions v. Kruger, FA
96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(b)(iv) even though Respondent has not used the domain
name because “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”);
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). While
Respondent has
not held onto its infringing domain name for an excessive period of time,
Complainant has alleged that the very nature
of its fanciful CELEBREX mark
creates a situation where good faith use of the domain name by Respondent would
be implausible at best.
As Respondent submitted no evidence either rebutting
this assertion or demonstrating a plan for the domain name to the contrary,
the
Panel concludes that Respondent has no good faith use planned for the disputed
domain name. The lack of potentiality for a good
faith use of the disputed
domain name, under these circumstances, allows the Panel to conclude that
Respondent’s lack of use of the
infringing domain name equates to use of the
domain name in bad faith. See 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); 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).
Accordingly, the Panel finds that
Respondent both registered and used the <celebrexwatcher.com>
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 <celebrexwatcher.com> domain name
be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: December 9, 2002.
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