DECISION

G.D. Searle & Co. v. Celebrex Medication

Claim Number:  FA0302000146219

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Celebrex Medication, Pasadena, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <celebrex-medication.com>, registered with Bulkregister.Com, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 18, 2003; the Forum received a hard copy of the Complaint on February 19, 2003.

On February 19, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain name <celebrex-medication.com> is registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the name. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.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 February 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 2003 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@celebrex-medication.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 March 18, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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:

1. Respondent’s <celebrex-medication.com> domain name is confusingly similar to Complainant’s CELEBREX mark.

2. Respondent does not have any rights or legitimate interests in the <celebrex-medication.com> domain name.

3. Respondent registered and used the <celebrex-medication.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, G.D. Searle, is the holder of numerous registrations and applications for the CELEBREX trademark. Complainant has filed applications to register the CELEBREX mark in more than 112 countries. More specifically, Complainant holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,321,622 for the CELEBREX mark, registered on the Principal Register on February 22, 2000. Complainant’s CELEBREX mark denotes “pharmaceutical products in the nature of anti-inflammatory analgesics.”

Complainant has made extensive use of the CELEBREX mark through marketing anti-arthritic medicine internationally under the moniker. Due to Complainant’s extensive marketing and advertising, the CELEBREX mark has earned worldwide notoriety for the purpose of protection under the Paris Convention[1] and the U.S. Trademark Dilution Act.[2]

Complainant’s CELEBREX mark began receiving extensive media attention as early as February 10, 1998 in the United States and abroad.

Respondent, Celebrex Medication, registered the <celebrex-medication.com> domain name on February 12, 2002. Complainant’s investigation of Respondent reveals that Respondent’s domain name resolves to a website that solicits drug orders from Internet users. Respondent is not licensed or authorized to make use of Complainant’s CELEBREX mark.

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 draw such inferences 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 and/or Confusingly Similar

Complainant has established rights in the CELEBREX mark by successfully registering the mark with the USPTO and other internationally authorized trademark authorities. Complainant has continuously used the CELEBREX mark in connection with the marketing of the anti-arthritic product since at least 1998.

Respondent’s <celebrex-medication.com> domain name is confusingly similar to Complainant’s CELEBREX mark. Respondent’s second-level domain incorporates Complainant’s fanciful mark in its entirety and adds the word “medication,” a term of significant relevance because it describes Complainant’s CELEBREX product. The addition of an industry-related word to a famous mark fails to create a distinguishable domain name under Policy ¶ 4(a)(i), and increases confusion among Internet users. Because Complainant’s mark constitutes the focus of Respondent’s domain name, the domain name is rendered confusingly similar under Policy ¶ 4(a)(i). 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 Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Additionally, because top-level domains (such as “.com”) are required in domain names, their presence is inconsequential when determining if a domain name infringes on a mark under the Policy. 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 “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

Respondent failed to submit a Response in this proceeding and Complainant’s assertions are unopposed. Because Complainant’s submission constitutes a prima facie case, Respondent has an obligation to rebut Complainant’s supported arguments and to present circumstances that substantiate its rights and legitimate interests in the domain name. 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 with respect to 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”).

The Panel may draw such inferences as it considers appropriate if a respondent fails to submit a response. Because Respondent failed to respond, all inferences in the Complaint may be accepted as true, unless clearly contradicted by the evidence. 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); 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).

Complainant has submitted uncontested evidence that indicates Respondent’s <celebrex-medication.com> domain name resolves to a commercial website that solicits drug orders from interested Internet users. Respondent’s unauthorized use of Complainant’s CELEBREX mark to generate Internet interest in its pharmaceutical sales fails to establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii). See 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); see also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).

Although Respondent is listed as “Celebrex Medication” in BulkRegister.Com’s registration agreement, the Panel finds Respondent’s representation insincere. Complainant remains the senior user of the CELEBREX mark and there is no evidence that indicates Respondent is authorized or licensed to use the mark in a domain name. Because Complainant’s mark is fanciful and famous, there is a presumption that Respondent is not commonly known by a domain name that incorporates the CELEBREX mark. Therefore, Respondent fails to establish rights in the <celebrex-medication.com> domain name under Policy ¶ 4(c)(ii). See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

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

Registration and Use in Bad Faith

Respondent registered the <celebrex-medication.com> domain name in bad faith because it had constructive knowledge of Complainant’s rights in the mark prior to registering the infringing domain name. Complainant’s CELEBREX mark is a coined term, referring only to Complainant’s product. Fanciful marks are referred to as the “strongest” of all marks, in that their novelty creates a substantial impact on the buyer’s mind, if sufficiently advertised and recognized. Being a “strong” mark holds significance in that the mark will then be given an expansive scope of judicial protection into different product or geographical markets and as to more variations of format. McCarthy on Trademarks and Unfair Competition, § 11:6 (4^th Ed. 2002). Because Complainant’s mark is fanciful and is registered on the Principal Register of the USPTO, Respondent had constructive notice of Complainant’s claim of ownership. Respondent’s subsequent registration of the subject domain name, despite knowledge of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See 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); see also Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Respondent’s bad faith use of the domain name is articulated under Policy ¶ 4(b)(iv). Complainant has provided the Panel with uncontested evidence that indicates Respondent is using the <celebrex-medication.com> domain name to solicit drug orders over the Internet. Respondent is opportunistically trading on the fame of Complainant’s mark by incorporating the mark in its entirety into an infringing domain name; therefore, Respondent’s actions constitute bad faith use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website where it solicited pharmaceutical orders); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith).

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

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 25, 2003

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