DECISION
G.D. Searle &
Co. v. Mike FlynnClaim Number: FA0210000128644 PARTIESComplainant is G.D. Searle & Co., Peapack, NJ
(“Complainant”) represented by Paul D.
McGrady, Jr., of Ladas & Parry. Respondent is Mike Flynn, New York, NY (“Respondent”). REGISTRAR
AND DISPUTED DOMAIN NAMESThe domain names
at issue are <cheapcelebrex.com> and <genericcelebrex.com>,
registered with eNom.com, Inc. PANELThe undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge has no known conflict
in serving as Panelist in this proceeding. Sandra Franklin
as Panelist. PROCEDURAL
HISTORYComplainant submitted a Complaint to the National
Arbitration Forum (the “Forum”) electronically on October 17, 2002; the Forum
received
a hard copy of the Complaint on October 18, 2002. On October 21,
2002, eNom.com, Inc. confirmed by e-mail to the Forum that the domain names <cheapcelebrex.com> and <genericcelebrex.com> are
registered with eNom.com, Inc. and that Respondent is the current registrant of
the names. eNom.com, Inc. has verified
that Respondent is bound by the eNom.com, Inc. 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 25,
2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”),
setting a deadline of November 14, 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@cheapcelebrex.com, and postmaster@genericcelebrex.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 5,
2002, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Sandra
Franklin 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
SOUGHTComplainant requests that the domain names be
transferred from Respondent to Complainant. PARTIES’
CONTENTIONSA. ComplainantThe <cheapcelebrex.com>
domain name is confusingly similar to Complainant's CELEBREX mark. The <genericcelebrex.com>
domain name is confusingly similar to Complainant's CELEBREX mark. Respondent has no
rights or legitimate interests in the disputed domain names. Respondent
registered and used the disputed domain names in bad faith. B. RespondentRespondent failed
to submit a Response. FINDINGSComplainant has promoted its CELEBREX mark on a global scale. Due to its extensive marketing and
advertising promoting the CELEBREX mark, the mark has earned worldwide
notoriety. The New York Times referred to Complainant’s CELEBREX product as a
“blockbuster arthritis drug,” and Forbes
referred to CELEBREX as the “sales crown jewel in [Complainant’s] new
portfolio.” Complainant has registered its CELEBREX mark in 112 countries around the
world, including the United States.
Complainant’s mark is registered on the Principal Register of the United
States Patent and Trademark Office (“USPTO”) as Registration
Number
2,321,622. Complainant’s mark
represents “pharmaceutical products in the nature of anti-inflammatory
analgesics.” Respondent registered the disputed domain names on March 19, 2002. Respondent does not have a license or
permission from Complainant to use the CELEBRX mark. Respondent is using the disputed domain names in order to solicit
drug orders from Internet users. DISCUSSIONParagraph 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 SimilarComplainant has established that it has rights in the CELEBREX mark through
registration with the USPTO and through its continuous
and widespread use. Respondent’s <cheapclebrex.com>
domain name is confusingly similar to Complainant’s mark because it
incorporates Complainant’s entire CELEBREX mark and merely
adds the descriptive
term “cheap.” The addition of this word
does not create any distinguishing characteristics because it merely signals to
the Internet user that he
or she would be able to find inexpensive CELEBREX
brand drugs at Respondent’s domain name.
Complainant’s mark is still the dominant element of the domain name and
therefore it does not overcome a claim of confusing similarity. 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). Respondent’s <genericcelebrex.com>
domain name is also confusingly similar to Complainant’s CELEBREX mark because
it incorporates Complainant’s entire mark and
merely adds the generic term
“generic.” The addition of a generic word such as “generic” does not overcome a
claim of confusing similarity
because Complainant’s mark is still the dominant
element of the domain name. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word…nor the suffix ‘.com’ detract
from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is
satisfied); see also Parfums Christian
Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four
domain names that added the descriptive words "fashion" or
"cosmetics"
after the trademark were confusingly similar to the
trademark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate InterestsRespondent has failed to come forward with a Response. Therefore, the Panel is permitted to make
reasonable inferences in favor of Complainant and accept Complainant’s
allegations as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless
clearly contradicted
by the evidence); see also 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”). Furthermore, based on Respondent’s failure to respond, it is presumed that
Respondent lacks rights and legitimate interests in the
disputed domain
names. 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, the burden shifts to Respondent
to provide credible evidence that substantiates its claim of rights and
legitimate
interests in the domain name); see
also Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or
legitimate interest in the domain name because Respondent
never submitted a
Response nor provided the Panel with evidence to suggest otherwise). Respondent is using the two disputed domain names in order to attract
Internet users to its website and solicit orders for drugs. The disputed domain names are confusingly
similar to Complainant’s CELEBREX mark and therefore likely to cause Internet
user confusion
as to the source, sponsorship and affiliation of the domain
names. The use of domain names confusingly similar to Complainant’s
mark to attract Internet users is not considered to be a use in connection with
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See
Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000)
(finding no legitimate use when Respondent was diverting consumers to its own
website by
using Complainant’s trademarks); see
also 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). Furthermore, based on the fame of Complainant’s mark it would be very
difficult for Respondent to establish that it is commonly known
as CHEAP
CELEBREX, GENERIC CELEBREX, <cheapcelebrex.com>,
or <genericcelebrex.com>. Respondent has failed to come forward with
any evidence that it is commonly known by the disputed domain names and
therefore the Panel
finds that Respondent does not have rights or legitimate
interests 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and
never applied for a license or permission from
Complainant to use the trademarked name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad FaithBased on the fact
that Respondent is using the disputed domain names in order to sell
Complainant’s CELEBREX brand drugs it can be
inferred that Respondent had
actual knowledge of Complainant’s rights, in the CELEBREX mark before it ever
registered the disputed
domain names.
Registration of infringing domain names, despite actual knowledge of
Complainant’s rights is evidence of bad faith registration pursuant
to Policy ¶
4(a)(iii). 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 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). Furthermore,
Internet users visiting the disputed domain names are likely to be confused as
to the source, sponsorship and affiliation
of the disputed domain names because
they are confusingly similar to Complainant’s mark. Respondent is therefore creating a likelihood of confusion for
its own commercial gain. This type of
behavior is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if Respondent profits from its diversionary use of Complainant's
mark when
the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent
is using the
domain name in bad faith pursuant to Policy 4(b)(iv)); see also Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where Respondent directed Internet users seeking Complainant’s site
to
its own website for commercial gain). The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied. DECISIONHaving 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 names <cheapcelebrex.com> and <genericcelebrex.com> be
transferred from Respondent to Complainant. Sandra Franklin,
Panelist
Dated: December
17, 2002
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