DECISION

G.D. Searle & Co. v. Zyphen Marketing

Claim Number: FA0212000137036

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Zyphen Marketing, Las Vegas, NV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <celebrex-arthritis.com>, registered with BulkRegister.com, Inc.

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 10, 2002; the Forum received a hard copy of the Complaint on December 11, 2002.

On December 10, 2002, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <celebrex-arthritis.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 December 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 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-arthritis.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 January 9, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 makes the following assertions:

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

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

3. Respondent registered and used the <celebrex-arthritis.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, Zyphen Marketing, registered the <celebrex-arthritis.com> domain name on June 15, 1999 and 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 over three and a half years ago.

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 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 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.

Respondent’s  <celebrex-arthritis.com> domain name is confusingly similar to Complainant’s fanciful CELEBREX mark. The dominant feature of the disputed domain name is Complainant’s mark, which the domain name incorporates in its entirety. The only distinguishing characteristic is the addition of the word “arthritis,” a word which describes the malady that Complainant’s drug was designed to combat. The addition of this word cannot prevent a finding of confusing similarity by the Panel. 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 <celebrex-arthritis.com> domain name is confusingly similar to Complainant’s fanciful CELEBREX mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In the present dispute, Respondent’s lack of a response to the Complaint will be viewed by the Panel as evidence that it lacks rights and legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Along with Respondent’s failure to submit a Response, Complainant can actively demonstrate Respondent’s lack of rights or legitimate interests in the domain name with a showing that Respondent does not qualify for the protections offered under Policy ¶ 4(c)(i)-(iii). Upon such a showing, Complainant will have successfully met its burden, shifting the onus to Respondent to rebut Complainant’s allegations. See 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); see also 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”).

Respondent has made no use of the <celebrex-arthritis.com> domain name; as such, it cannot be said to be making a bona fide offering of goods or services under the domain name, nor can it be said to be making a legitimate noncommercial or fair use of the domain name. In these circumstances, Policy ¶ 4(c)(i) and (iii) are inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).

Complainant coined the fanciful CELEBREX name for use in conjunction with its anti-arthritic medication. Given the nature of the mark, and Respondent’s lack of response, the Panel finds that Respondent has never been “commonly known by” the name <celebrex-arthritis.com>, CELEBREX-ARTHRITIS, or any derivative of Complainant’s CELEBREX mark. Policy ¶ 4(c)(ii) is likewise inapplicable to Respondent. 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"); see also 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 <celebrex-arthritis.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has not used the <celebrex-arthritis.com> domain name since its registration over three and a half years ago. Nothwithstanding the fact that this Panel doubts Respondent could find a good faith use for the domain name, or that it initially registered the domain name in good faith, such passive holding equates to bad faith use and registration under Policy ¶ 4(a)(iii).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though 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).

Accordingly, the Panel finds that Respondent registered and used the <celebrex-arthritis.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  January 13, 2003

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