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Generic Top Level Domain Name (gTLD) Decisions |
G.D. Searle & Co. v. Argo Wibowo
Claim Number: FA0210000128668
PARTIES
Complainant
is G.D. Searle & Co., Peapack,
NJ (“Complainant”) represented by Paul
D. McGrady, Jr., of Ladas &
Parry. Respondent is Argo Wibowo, Jakarta, NA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <drugcelebrex.com>,
registered with eNom, Inc.
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 18, 2002; the Forum received
a hard copy of the
Complaint on October 18, 2002.
On
October 18, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
name <drugcelebrex.com> is
registered with eNom, Inc. and that Respondent is the current registrant of the
name. eNom, Inc. has verified that Respondent
is bound by the eNom, 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@drugcelebrex.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 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 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:
The
domain name registered by Respondent, <drugcelebrex.com>, is confusingly similar to Complainant’s
registered CELEBREX mark.
Respondent has no rights or legitimate interests in
the <drugcelebrex.com> domain name. Respondent registered and used the <drugcelebrex.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.
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, Argo Wibowo, registered the
domain name, <drugcelebrex.com>,
on July 30, 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 the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as it 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 to 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
use of its fanciful CELEBREX mark demonstrates that it has sufficient
rights in
the mark to bring this Complaint against Respondent.
Respondent’s <drugcelebrex.com> 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 “.com” after the mark and the addition of the descriptive
word
“drug.” 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 descriptive word
“drug” 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 word “drug” simply describes the type of product that
Complainant produces and reflects with its CELEBREX mark. The
addition of this
word increases the likelihood of confusion between Complainant’s mark and the
disputed domain name. 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 Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does
not take the disputed
domain name out of the realm of confusing similarity).
Accordingly, the Panel finds that the <drugcelebrex.com> domain name is
confusingly similar to Complainant’s registered and distinctive CELEBREX mark
under Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
When the Panel
has no Response to rely upon in deciding a dispute, it will accept all
reasonable allegations put forth in the Complaint
as true. 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).
In analyzing the Complaint, if the Panel
concludes that Complainant has put forth a reasonable prima facie case
supporting the proposition that Respondent has no rights or legitimate
interests in the disputed domain name, the burden will
shift to Respondent to
provide evidence rebutting Complainant’s allegations. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (holding that 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). Failure to respond to a Complaint, which lays out a prima
facie case against Respondent, does not meet this burden and is tantamount
to an admission of no rights or legitimate interests in the disputed
domain
name.
Furthermore, Respondent’s failure to
respond to the Complaint is evidence of a lack of legitimate rights and
interests in its 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 rights to or legitimate interest is
sufficient to shift the burden of proof to Respondent to demonstrate that such
rights or legitimate
interests 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). In the
present dispute, Respondent submitted no Response to the Complaint. Therefore,
if
the Complainant’s reasonable allegations meet Complainant’s burden to show a
prima facie case against Respondent, the Panel will conclude that
Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has established a prima
facie case by showing that Respondent has made no use of the infringing
domain since its registration. In
registering an infringing domain name that is confusingly similar to
Complainant’s registered and distinctive mark, and in failing
to make any use
of the domain name, Respondent has not made a bona fide offering of goods or
services or a legitimate noncommercial
or fair use of the domain name under
Policy ¶¶ 4(c)(i) and (iii). See
Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding
that no rights or legitimate interest can be found when Respondent fails to use
disputed domain names in any way); 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).
Furthermore, given the fanciful nature of
Complainant’s registered CELEBREX mark, it is doubtful that Respondent could
find a legitimate
or 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 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).
Complainant has not given Respondent
permission or consent to use its CELEBREX mark and has urged that Respondent is
not “commonly
known by” the name DRUGCELEBREX or <drugcelebrex.com>. Furthermore, as Complainant’s mark is a
fanciful term that was 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); see also 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 rights or legitimate interests in the <drugcelebrex.com> domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
While the Policy lists four examples that
will equate to bad faith use and registration of a domain name, that list is
not exclusive.
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”).
One such example of bad faith
registration that is 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
Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should
have been aware of
Complainant’s trademarks, actually or constructively”); 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 word
describing Complainant’s product, with knowledge of Complainant’s mark. The
Panel finds that Respondent’s registration of <drugcelebrex.com> was committed with actual knowledge of
Complainant’s mark, and was done in bad faith.
Respondent’s failure to legitimately use
the disputed domain name evidences bad faith use. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29,
2000) (finding bad faith under Policy ¶ 4(b)(iv) although 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 held the disputed
domain name for less than four months, the Panel takes careful note of the
fanciful nature
of Complainant’s mark when concluding that Respondent has used
the disputed domain name in bad faith.
Failure to use a domain name does not necessarily equate to bad faith
use of a domain name under the Policy; however, under the circumstances
of this
dispute, it is difficult to imagine any situation where Respondent could show a
good faith use for its domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the “domain names are so obviously connected with
the Complainants that the use or
registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make
any active use of the disputed domain names without
creating a false impression of association with the Complainant”). Respondent
is neither licensed by Complainant nor associated in any way with Complainant,
and as Respondent submitted no plan for the domain
name to the contrary, the
Panel concludes that Respondent has no good faith use planned for the disputed
domain name. Thus, Respondent’s passive
holding 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 <drugcelebrex.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 <drugcelebrex.com> domain name be
TRANSFERRED from Respondent to
Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: December 18, 2002.
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