DECISION

G.D. Searle & Co. v. James Mahony

Claim Number: FA0204000112559

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is James Mahony, Roslindale, MA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <e-viagra-xenical-celebrex-propecia.com>, registered with iaregistry.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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 29, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.

On April 29, 2002, iaregistry.com confirmed by e-mail to the Forum that the domain name <e-viagra-xenical-celebrex-propecia.com> is registered with iaregistry.com and that Respondent is the current registrant of the name.  iaregistry.com has verified that Respondent is bound by the iaregistry.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 May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 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@e-viagra-xenical-celebrex-propecia.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 May 31, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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

1. The disputed domain name <e-viagra-xenical-celebrex-propecia.com> is confusingly similar to Complainant’s CELEBREX mark.

2. Respondent has no rights or legitimate interests in the disputed domain name.

3. Respondent registered and used the disputed domain name in bad faith.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant holds U.S. Patent and Trademark Office Registration No. 2,307,888 issued February 2000 for the CELEBREX mark. Complainant also holds international rights in the CELEBREX mark and is pursuing 112 ongoing registration applications worldwide.

The CELEBREX mark is used to market pharmaceutical products in the nature of “anti-inflammatory analgesics” throughout the world. The drug that CELEBREX denotes has been referred to as a “blockbuster arthritis drug” and a “crown jewel in Pharmacia’s new portfolio” by the New York Times and Forbes, respectively. Complainant began its media campaign to market the anti-inflammatory analgesics, using the CELEBREX mark, as early as December 1998. Complainant’s active marketing tactics have led to worldwide notoriety of the CELEBREX mark.

Respondent registered the contested domain name on January 29, 2002 and has been using it in conjunction with a website that sells pharmaceutical products of the Complainant and the Complainant’s competitors.

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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

The disputed domain name is confusingly similar to Complainant’s registered CELEBREX mark because it incorporates the Complainant’s entire mark with the addition of competitors’ marks and the letter “e.”

Complainant’s CELEBREX mark is incorporated in Respondent’s disputed domain name in its entirety. The contested <e-viagra-xenical-celebrex-propecia.com> domain name merely includes the addition of related industry-specific words, namely, the marks of Complainant’s competitors. The addition of a competitor’s product label that relates to the CELEBREX mark and Complainant’s industry fails to defeat a confusingly similar claim. See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

Respondent’s addition of a hyphenated “e” as a prefix to the contested domain name makes the domain name confusingly similar to Complainant’s mark since the addition of a letter does little to reduce confusion among Internet users; the CELEBREX mark’s impact is still present. See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (WIPO Dec. 15, 2000) (finding that Respondent’s domain name <eebay.com> is confusingly similar to the Complainant’s registered EBAY trademark).

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

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the CELEBREX mark. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or interests in the disputed domain name. See 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). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. 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).

Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization to use the CELEBREX mark is not a bona fide offering of goods and services under Policy ¶ 4(c)(i). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not a bona fide use). Furthermore, using Complainant’s CELEBREX mark to attract potential consumers to Respondent’s website while offering competitor’s products fails to succeed under a Policy ¶ 4(c)(iii) analysis. See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website). The fact that the word CELEBREX is an invented word, and as such is not one domain name registrants would legitimately choose unless seeking to create an impression of an association with the Complainant, demonstrates that Respondent lacks rights or legitimate interests in the domain name

There is no evidence that suggests Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Respondent is known to this Panel only as James Mahony. See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

 

Accordingly, the Panel finds that Policy ¶4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and used the contested domain name in an effort to confuse Internet users while concurrently disrupting Complainant’s competing pharmaceutical business; Respondent’s actions constitute bad faith pursuant to Policy ¶ 4(b)(iii). Given that both Complainant and Respondent are involved in the sale of pharmaceutical goods, it can be inferred that Respondent is attempting to benefit from the intentional confusion created among consumers, specifically those seeking Complainant’s website. See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Gorstew Ltd. & Unique Vacations, Inc. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from Respondent travel agency to Complainants, who operate Sandals hotels and resorts).

Additionally, Respondent’s contested domain name is used to divert consumer interest from Complainant’s <celebrex.com> website by confusing Internet users as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Respondent’s manufactured confusion results in its site accruing commercial benefits from the established goodwill of Complainant’s mark. Such use demonstrates bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

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 should be hereby GRANTED.

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

James A. Carmody, Esq., Panelist

Dated: June 12, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/860.html