DECISION

G.D. Searle & Co. v. Caroline Street Clinic

Claim Number: FA0303000151543

PARTIES

Complainant is G.D. Searle & Co., Peacock, NJ (“Complainant”) represented by Paul D. McGrady, Jr. of Ladas & Parry. Respondent is Caroline Street Clinic, Key West, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.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 March 25, 2003; the Forum received a hard copy of the Complaint on March 26, 2003.

On March 26, 2003, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.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 March 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 21, 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@buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.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 April 28, 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 <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com> domain name is confusingly similar to Complainant’s CELEBREX mark.

2. Respondent does not have any rights or legitimate interests in the <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com> domain name.

3. Respondent registered and used the <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com> domain name in bad faith.

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

FINDINGS

Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the CELEBREX mark (Reg. No. 2,307,888 registered January 11, 2000) related to pharmaceuticals in the nature of anti-inflammatory analgesics. Complainant has also filed applications to register the CELEBREX mark in more than 112 countries worldwide. Complainant operates a website at <celebrex.com> where Internet users can gather information about Complainant’s products.

Respondent registered the <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com> domain name on January 26, 2002. Respondent is using the disputed domain name to redirect Internet users to <prescriptionskeywest.com>, a website that offers medications for sale online.

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 that it has rights in the CELEBREX mark through registration with the USPTO and continuous use in commerce.

Respondent’s <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the disputed domain name incorporates Complainant’s entire mark and adds the descriptive terms “buy,” “medication” and “online,” and the trademarks ULTRAM, VIOXX, FLEXERIL and SOMA. The addition of descriptive terms such as “buy,” “medication” and “online” to a famous mark does not sufficiently differentiate the disputed domain name from Complainant’s mark, especially when those terms clearly relate to the business of the trademark holder. See 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); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

The inclusion of the names of other trademarked medications in the disputed domain name increases the likelihood of confusion among Internet users. See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of Complainant’s competitors).

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

Rights or Legitimate Interests

Respondent has not taken its opportunity to answer the Complaint. Therefore, the Panel is permitted to accept all reasonable allegations and inferences 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 Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Furthermore, because of Respondent’s failure to answer, the Panel may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). 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”).

Respondent is using the disputed domain name to redirect Internet traffic to its website, <prescriptionskeywest.com>, which offers medications for sale online in competition with Complainant. The Panel infers that Respondent is using Complainant’s mark to divert Internet users who are interested in Complainant’s product to Respondent’s website, which is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

The Respondent has provided the Panel with no evidence and there is nothing in the record to suggest that Respondent is commonly known by the disputed domain name. Thus, Respondent has failed to demonstrate that it has any rights to or legitimate interests in the disputed domain with regard to 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"); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).

Therefore, the Panel concludes that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name to divert Internet users to its website, which sells medications in direct competition with Complainant. The registration and use of a domain name confusingly similar to a registered mark primarily for the purpose of disrupting the business of a competitor is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that the Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites).

Moreover, by registering and using a domain name confusingly similar to Complainant’s mark to compete directly with Complainant, Respondent’s behavior indicates that it intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that although Respondent failed to come forward and provide evidence of a planned use for the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name, due to the fact that the domain name incorporates marks of competing pharmaceutical products, it can be inferred that Respondent registered the domain name for ultimate use as an online pharmacy).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:   April 30, 2003

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