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G.D. Searle &Co. v. Mike Flynn [2002] GENDND 1686 (17 December 2002)


National Arbitration Forum

DECISION

G.D. Searle & Co. v. Mike FlynnClaim Number: FA0210000128644 PARTIESComplainant is G.D. Searle & Co., Peapack, NJ (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry.  Respondent is Mike Flynn, New York, NY (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAMESThe domain names at issue are <cheapcelebrex.com> and <genericcelebrex.com>, registered with eNom.com, Inc. PANELThe undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra Franklin as Panelist. PROCEDURAL HISTORYComplainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 17, 2002; the Forum received a hard copy of the Complaint on October 18, 2002. On October 21, 2002, eNom.com, Inc. confirmed by e-mail to the Forum that the domain names <cheapcelebrex.com> and <genericcelebrex.com> are registered with eNom.com, Inc. and that Respondent is the current registrant of the names.  eNom.com, Inc. has verified that Respondent is bound by the eNom.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 October 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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@cheapcelebrex.com, and postmaster@genericcelebrex.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 December 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 SOUGHTComplainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONSA. ComplainantThe  <cheapcelebrex.com> domain name is confusingly similar to Complainant's CELEBREX mark. The  <genericcelebrex.com> domain name is confusingly similar to Complainant's CELEBREX mark. Respondent has no rights or legitimate interests in the disputed domain names. Respondent registered and used the disputed domain names in bad faith. B. RespondentRespondent failed to submit a Response. FINDINGSComplainant 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 [Complainant’s] new portfolio.” 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 (“USPTO”) as Registration Number 2,321,622.  Complainant’s mark represents “pharmaceutical products in the nature of anti-inflammatory analgesics.” Respondent registered the disputed domain names on March 19, 2002.  Respondent does not have a license or permission from Complainant to use the CELEBRX mark.  Respondent is using the disputed domain names in order to solicit drug orders from Internet users. DISCUSSIONParagraph 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 SimilarComplainant has established that it has rights in the CELEBREX mark through registration with the USPTO and through its continuous and widespread use. Respondent’s <cheapclebrex.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire CELEBREX mark and merely adds the descriptive term “cheap.”  The addition of this word does not create any distinguishing characteristics because it merely signals to the Internet user that he or she would be able to find inexpensive CELEBREX brand drugs at Respondent’s domain name.  Complainant’s mark is still the dominant element of the domain name and therefore it does not overcome a claim of confusing similarity.  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 Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term). Respondent’s <genericcelebrex.com> domain name is also confusingly similar to Complainant’s CELEBREX mark because it incorporates Complainant’s entire mark and merely adds the generic term “generic.” The addition of a generic word such as “generic” does not overcome a claim of confusing similarity because Complainant’s mark is still the dominant element of the domain name.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate InterestsRespondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also 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”). Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks rights and legitimate interests in the disputed domain names.  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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise). Respondent is using the two disputed domain names in order to attract Internet users to its website and solicit orders for drugs.  The disputed domain names are confusingly similar to Complainant’s CELEBREX mark and therefore likely to cause Internet user confusion as to the source, sponsorship and affiliation of the domain names.  The use of  domain names confusingly similar to Complainant’s mark to attract Internet users is not considered to be a use in connection with 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).  See 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); see also 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). Furthermore, based on the fame of Complainant’s mark it would be very difficult for Respondent to establish that it is commonly known as CHEAP CELEBREX, GENERIC CELEBREX, <cheapcelebrex.com>, or <genericcelebrex.com>.  Respondent has failed to come forward with any evidence that it is commonly known by the disputed domain names and therefore the Panel finds that Respondent does not have rights or legitimate interests 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 FaithBased on the fact that Respondent is using the disputed domain names in order to sell Complainant’s CELEBREX brand drugs it can be inferred that Respondent had actual knowledge of Complainant’s rights, in the CELEBREX mark before it ever registered the disputed domain names.  Registration of infringing domain names, despite actual knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug”); see also 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). Furthermore, Internet users visiting the disputed domain names are likely to be confused as to the source, sponsorship and affiliation of the disputed domain names because they are confusingly similar to Complainant’s mark.  Respondent is therefore creating a likelihood of confusion for its own commercial gain.  This type of behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISIONHaving 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 names <cheapcelebrex.com> and <genericcelebrex.com> be transferred from Respondent to Complainant. Sandra Franklin, Panelist

Dated: December 17, 2002


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