Celebrexonline.com

The timeline behind celebrexonline.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION G.D. Searle & Co. v. Celebrex Online Claim Number: FA0109000099703 PARTIES Complainant is G.D. Searle & Co., Skokie, IL ("Complainant") represented by Paul D. McGrady, of Ladas & Parry. Respondent is Celebrex Online, Tyrone, GA ("Respondent"). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <celebrexonline.com>, registered with Tierra.Net. 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. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 10, 2001; the Forum received a hard copy of the Complaint on September 11, 2001. On September 13, 2001, Tierra.Net confirmed by e-mail to the Forum that the domain name <celebrexonline.com> is registered with Tierra.Net and that Respondent is the current registrant of the name. Tierra.Net has verified that Respondent is bound by the Tierra.Net 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 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2001 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@celebrexonline.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 October 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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 the Respondent to the Complainant. PARTIES’ CONTENTIONS A. Complainant The <celebrexonline.com> domain name is confusingly similar to Complainant’s CELEBREX trademark. Respondent has no rights or legitimate interests in repect to the <celebrexonline.com> domain name. Respondent registered and used in bad faith. B. Respondent No Response was received. FINDINGS Complainant has filed applications to register the CELEBREX mark in over 112 countries. The CELEBREX mark is globally marketed in conjunction with anti-arthritic pharmaceutical products. Due to Complainant’s extensive advertising and marketing of the CELEBREX mark it has become famous throughout the United States and the world. A February 13, 2001 New York Times article referring to CELEBREX as "a blockbuster drug", and a Forbes Magazine article calling CELEBREX "the $2 billion (sales) crown jewel in Pharmacia’a new portfolio" indicate the mark’s fame. Well after the CELEBREX mark had gained global recognition, Respondent registered <celebrexonline.com> on September 18, 2000. Respondent used the website to sell Complainant’s goods to individual consumers. 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. 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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 Respondent’s <celebrexonline.com> domain name is confusingly similar to Complainant’s CELEBREX trademark because the addition of the generic term "online" does not adequately distinguish the domain name from the trademark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM 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). The panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent has no rights or legitimate interests in <celebrexonline.com> because Respondent is not using it to offer bona fide goods. Respondent’s use of its website to sell the Complainant’s product without Complainant’s authority is not a bona fide offering of goods. See Nat’l Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell complainant’s goods without complainant’s authority, as well as others’ goods is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of a mark to sell complainant’s perfume, as well as other brands of perfume, is not bona fide use). Respondent has no rights or legitimate interests in <celebrexonline.com> because Respondent is not commonly known by the domain name and has not been authorized by Complainant to use the CELEBREX mark. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in 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 or never applied for a license or permission from Complainant to use the trademarked name). Respondent has no rights or legitimate interests in <celebrexonline.com> because Respondent did not make fair use of the domain name. Respondent’s use of the domain name to attract consumers of the Complainant’s product to Respondent’s unauthorized website is not a fair use. See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent’s use of the domain name at issue is evidence of bad faith because it had actual knowledge of Complainant’s CELEBREX mark. Respondent’s actual knowledge is demonstrated by their distribution of Complainant’s CELEBREX product through their website. See Ticketmaster Corp. v. Spider Web Design, Inc., D2000-1551 (WIPO February 4, 2001) (finding that "active or constructive knowledge of the Complainant’s rights in Trademark is a factor supporting bad faith"); see also Cellular One Group v. Brien, D2000-0028 (WIPO March 10, 2000) (finding that as a matter of United States law, Respondent had prior constructive or actual knowledge of Complainant’s trademark because the mark was registered). 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 <celebrexonline.com> be transferred from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme C our, NY (Ret) Dated: October 24, 2001 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.