DECISION

G. D. Searle & Co. v. Xenadrin-Source.com

Claim Number: FA0209000125477

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Xenadrin-Source.com, Thunder Bay, Ontario, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <celebrex-xenical.com>, registered with Network Solutions.

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 September 20, 2002; the Forum received a hard copy of the Complaint on September 23, 2002.

On September 24, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <celebrex-xenical.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 September 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 14, 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@celebrex-xenical.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 November 4, 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.

PROCEDURAL ISSUE – MARKS OF MULTIPLE PARTIES

Respondent’s <celebrex-xenical.com> domain name incorporates numerous parties’ marks and interests.  More specifically, the following drug companies are implicated by way of Respondent’s domain name: G.D. Searle (Complainant) (CELEBREX), Roche Laboratories Inc.(XENICAL). Due to practical difficulties inherent in the UDRP, cooperative complaint initiation is unlikely and unfeasible.  Because Complainant initiated this dispute prior to any other interested party, it has the opportunity to acquire the domain name, while seeking to protect its CELEBREX mark from an infringing use.  However, due to the procedural complexities presented by the current dispute the following issue must be addressed: that Complainant seeks acquisition of the subject domain name in good faith, and will forfeit its interest in the contested domain name if the other represented marks are infringed upon following a transfer of the domain name registration to Complainant.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (Complainant’s continuing control of the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is contingent upon good faith possession, and Complainant will forfeit its interest in the domain name if it infringes on the other represented marks).

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The  <celebrex-xenical.com> domain name is confusingly similar to Complainant's CELEBREX mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has registered its CELEBREX mark in 112 countries around the world, including the United States.  Complainant’s mark is registered on the Principal Register of the United States Patent and Trademark Office as Registration Number 2,321,622.  Complainant’s mark represents “pharmaceutical products in the nature of anti-inflammatory analgesics.”  Complainant has promoted its CELEBREX mark on a global scale.  Due to its extensive marketing and advertising promoting the CELEBREX mark, the mark has earned worldwide notoriety.  The New York Times referred to Complainant’s CELEBREX product as a “blockbuster arthritis drug,” and Forbes referred to CELEBREX as the “sales crown jewel in Pharmacia’s (Complainant) new portfolio.”

Respondent registered the disputed domain name on December 31, 2000.  Respondent has made no use of the disputed domain name, nor has it developed a website.  Respondent does not have a license from Complainant to use the 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 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 that it has rights in the CELEBREX mark through registration with the United States Patent and Trademark Office as well as its continuous and substantial use of the CELEBREX mark.

Respondent’s <celebrex-xenical.com> domain name is confusingly similar to Complainant’s mark because it merely adds the name brand of another drug to Complainant’s mark and separates the two with a hyphen.  The addition of another drug brand name does not create a distinct mark because the additional brand name combined with Complainant’s mark will further confuse Internet users as to the source, sponsorship, and affiliation of the disputed domain name.  See G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”); see also G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“The Panel concludes that the <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names in the domain name does not defeat a confusing similarity claim”).  Furthermore, the hyphen between the two words of the domain name does not create a distinct characteristic capable of overcoming a confusing similarity claim.  See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark).

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

Rights or Legitimate Interests

Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent has held the disputed domain name for almost two years and has failed to develop a website, or make any other use of the <celebrex-xenical.com> domain name.  The passive holding of a domain name does not create rights or legitimate interests in a domain name because its holder does not use the domain name in connection with any activity that is considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Respondent has passively held the disputed domain name since December 31, 2000, therefore, it has failed to use <celebrex-xenical.com> for any purpose that could give rise to rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).

Respondent has not submitted a Response in this proceeding and therefore the Panel has no evidence before it that establishes that Respondent is commonly known by any other name than “Xenadrin-Source.com.”  There is no evidence on record, and Respondent has presented no proof that it is commonly known as CELEBREX-XENICAL or <celebrex-xenical.com>.  Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).

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

Registration and Use in Bad Faith

Based on the fame of Complainant’s CELEBREX mark it can be inferred that Respondent had actual or constructive knowledge of Complainant’s rights when it registered the disputed domain name.  Registration of a domain name that includes Complainant’s mark, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent registered the disputed domain name in December of 2000 and has failed to make any use of it.  The passive holding of a domain name for an extended period of time gives rise to the inference of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

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 shall be hereby granted.

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

James A. Carmody, Esq., Panelist

Dated: November 7, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1522.html