DECISION

G.D. Searle & Co. v. John Barry

Claim Number: FA0205000112611

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is John Barry, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <celabrax.com>, registered with eNom.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 1, 2002; the Forum received a hard copy of the Complaint on May 2, 2002.

On May 3, 2002, eNom confirmed by e-mail to the Forum that the domain name <celabrax.com> is registered with eNom and that Respondent is the current registrant of the name.  eNom has verified that Respondent is bound by the eNom 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 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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@celabrax.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 June 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) 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

The disputed <celabrax.com> domain name is confusingly similar to CELEBREX, a registered mark in which Complainant holds rights.

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

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

B. Respondent

Respondent did not submit a Response.

FINDINGS

Complainant, a wholly owned subsidiary of Pharmacia Corp., produces and markets an anti-arthritic medicine under the CELEBREX mark, sold around the world.  Complainant has gone to great lengths and expended significant sums in promoting its CELEBREX mark and product and asserts that the mark has earned “worldwide notoriety” within the meaning of the Paris Convention and “fame” within the meaning of the U.S. Trademark Dilution Act.

Complainant’s CELEBREX mark is registered in the U.S., among other countries, on the Principal Register of the U.S. Patent and Trademark Office as Registration Nos. 2,307,888 and 2,321,622.

Respondent registered the disputed domain name on March 31, 2002, and has used the domain name to redirect Internet users to an online pharmacy website, which Complainant asserts sells products that compete with its CELEBREX product.

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

Complainant has established its rights in the CELEBREX mark through trademark registration and continuous subsequent use.

The disputed domain name is confusingly similar to Complainant’s mark as it is phonetically almost identical to the mark, trading the letter “e” for “a” in two instances and adding the generic top-level domain “.com.”  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Further, the use of the disputed domain name to sweep Internet users into a pharmacy website suggests Respondent specifically selected the name for its confusingly similar quality.  See Exxon Corp. v. Texas Motor Exch. of Houston, [1980] USCA5 2084; 628 F.2d 500, 506 (5th Cir. 1980) ("The best evidence of likelihood of confusion is provided by evidence of actual confusion").

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, the Panel may presume it holds 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).

Complainant asserts that Respondent is not commonly known as CELEBREX and that Respondent holds no trademark rights in CELEBREX.  Although the disputed domain name does not contain the word CELEBREX, but rather “celabrax,” the Panel will assume that Respondent is commonly known by its purported name “John Barry,” and not “celabrax” or <celabrax.com>, as would establish rights under Policy ¶ 4(c)(ii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); 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).

Respondent’s use of <celabrax.com>, a domain name confusingly similar to Complainant’s CELEBREX mark, to sell various pharmaceutical products does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Respondent has chosen the disputed domain name in the hope that Internet users will mistakenly believe “celabrax” is the correct spelling of Complainant’s mark and visit Respondent’s website believing it to be Complainant’s.  See 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 bona fide use); see also 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).

Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the disputed domain name with the hopes of snagging Internet users seeking information from Complainant’s website.  Respondent is using the name to opportunistically trade on the fame and goodwill associated with Complainant’s mark for its own commercial gain.  Such behavior demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offers a number of web services); 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).

Furthermore, Respondent’s mere act of registering a misspelling of Complainant’s mark has been recognized as “typosquatting,” an activity also evidencing bad faith.  See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding that the Respondent’s registration of names of famous people, with slight typographical errors, was evidence of bad faith); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant).

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 <celabrax.com> domain name be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: June 14, 2002

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