DECISION

G.D. Searle & Co. v. Sean a/k/a Sean Kim

Claim Number: FA0211000129128

PARTIES

Complainant is G.D. Searle & Co., Peapack, NJ (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry.  Respondent is Sean a/k/a Sean Kim, Minneapolis, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <1888celebrex.com> and <888celebrex.com>, registered with Register.com, 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 November 5, 2002; the Forum received a hard copy of the Complaint on November 5, 2002.

On November 5, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain names <1888celebrex.com> and <888celebrex.com> are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. verified that Respondent is bound by the Register.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 November 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 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@1888celebrex.com and postmaster@888celebrex.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 13, 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

The domain names registered by Respondent, <1888celebrex.com> and <888celebrex.com>, are confusingly similar to Complainant’s registered CELEBREX mark.

Respondent does not have any rights or legitimate interests in the <1888celebrex.com> and <888celebrex.com> domain names.

Respondent registered and used the <1888celebrex.com> and <888celebrex.com> domain names 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, Sean a/k/a Sean Kim, registered both the <1888celebrex.com> and the <888celebrex.com> domain names June 25, 2002, but is not licensed or otherwise authorized by Complainant 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 to and/or Confusingly Similar

Complainant has established in this proceeding that it has 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 use of its fanciful CELEBREX mark demonstrates that it has sufficient rights in the mark to bring this Complaint against Respondent.

The domain names registered by Respondent, <1888celebrex.com> and <888celebrex.com>, are confusingly similar to Complainant’s registered and fanciful CELEBREX mark. Respondent has merely added the “1888” or “888” prefixes to Complainant’s mark, both numbers well-known denotations of toll-free telephone numbers. Many product manufacturers use “888” telephone numbers, followed by the name of their product or business, to solicit sales. Respondent’s use of the “888” prefix in this context serves to increase, not defeat, Internet user confusion between the disputed domain names and Complainant’s CELEBREX mark (which remains the prominent feature of the disputed domain names). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potentiality for confusion); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark).

The addition of the top-level domain “.com” to disputed domain names, a requirement for all domain name registrants, also fails to prevent the Panel from finding that the domain names registered by Respondent are confusingly similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also 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").

Accordingly, the Panel finds that the <1888celebrex.com> and <888celebrex.com> domain names are 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 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 in and of itself 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 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’s use of the subject domain names does not qualify as a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), as Respondent offers no goods or services whatsoever. 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 fails to demonstrate that it is making legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii) as well. 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 suggests that Respondent would find it difficult 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 no other indications suggest 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 also shown that Policy ¶ 4(c)(ii) is inapplicable to Respondent in this case. Complainant has not given Respondent permission or consent to use its CELEBREX mark and Complainant has asserted that Respondent is not “commonly known by” the name 1888CELEBREX, 888CELEBREX, <1888celebrex.com> or <888celebrex.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); 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 <1888celebrex.com> and <888celebrex.com> domain names 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 not enumerated in the Policy, yet still evidencing bad faith use and registration under Policy ¶ 4(a)(iii), is registration of an infringing domain name when Respondent had actual notice of Complainant’s mark prior to 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 the generic “1888” or “888” toll-free number string, with full knowledge of Complainant’s mark and consequent rights in that mark. The Panel finds that Respondent’s registration of <1888celebrex.com> and <888celebrex.com> domain names was done with actual knowledge of Complainant’s mark and was therefore 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 no other indications suggest 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 five 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 always and 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 find 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 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 names; 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 <1888celebrex.com> and <888celebrex.com> domain names 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 <1888celebrex.com> and <888celebrex.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: December 27, 2002.

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