WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G.D. Searle LLC v. Aleksey Bezkrovnuy

Case No. D2013-1178

1. The Parties

The Complainant is G.D. Searle LLC of New York, New York, United States of America, represented by Kaye Scholer, LLP, United States of America.

The Respondent is Aleksey Bezkrovnuy of Kharkiv, Oblast, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <celebrexaustralia.com> (the “Disputed Domain Name”) is registered with Cloud Group Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2013. On July 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 2, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2013.

The Center appointed John Swinson as the sole panelist in this matter on August 1, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is G.D Searle LLC., a wholly owned and controlled subsidiary of Pfizer Inc. Pfizer Inc. is one of the world’s largest pharmaceutical companies with operations in more than 150 countries.

The Complainant owns numerous worldwide registrations for CELEBREX, including the following:

• US Trade Mark Registration No. 2,307,888, registered January 11, 2000 (word mark);

• US Trade Mark Registration No. 2,321,622, registered February 22, 2000 (logo mark);

• Australia Trade Mark Registration No. 755167, registered February 17, 1998 (word mark); and

• Ukraine Trade Mark Registration No. 20992, registered October 15, 2001. (together, the “Trade Mark”).

The Complainant uses the Trade Mark as the name of, and in connection with, the worldwide sale of medication for the relief of the signs and symptoms of osteoarthritis, rheumatoid arthritis and ankylosing spondylitis, and for the management of acute pain in adults.

The Respondent is Aleksey Bezkrovnuy of Kharkiv, Ukraine. The Respondent did not file a Response, and consequently little information is known about the Respondent.

The Respondent registered the Disputed Domain Name on February 20, 2012. The website at the Disputed Domain Name is a blog which provides information about the Complainant’s product (e.g. “Celebrex interactions with drugs, alcohol and food”). The website also links to “www.aupills.com”, a website which provides pharmaceutical information and is titled “AU PILLS MEN’S HEALTH PILLS ONLINE BUY”.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Identical or Confusingly Similar

The Disputed Domain Name is confusingly similar to the Trade Mark. It wholly incorporates the Trade Mark and merely adds the country name “Australia”.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

• the Respondent is not commonly known by the Disputed Domain Name, or any variation thereof;

• the Respondent is not affiliated with the Complainant;

• the Complainant has not given the Respondent any permission to use the Trade Mark; and

• there is no evidence of the Respondent currently using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Disputed Domain Name to attract visitors to its website to generate pay-per-click fees (through linking users to websites for products which compete with the Complainant’s product). It is irrelevant that the Disputed Domain Name also provides links to websites that genuinely sell the Complainant’s product.

Registered and Used in Bad Faith

The Respondent has registered and is using the Disputed Domain Name in bad faith for the following reasons:

• the Respondent is plainly aware of the goodwill and reputation associated with the Trade Mark;

• the Disputed Domain Name wholly incorporates the Trade Mark (which is an invented word); and

• the Respondent is using the Disputed Domain Name to intentionally attract users to its website for commercial gain “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement” of the information and products offered on the links connected to the website at the Disputed Domain Name. The website at the Disputed Domain Name links users to websites for products which compete with the Complainant’s product.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Issues

The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Disputed Domain Name is a combination of the Trade Mark and the country name “Australia”. The Panel finds that the Trade Mark remains the dominant element in the Disputed Domain Name. It is well established that the addition of a country name (such as “Australia”) to a trade mark does not prevent confusingly similarity (see, e.g., Pfizer Inc. v. Bharat Gohil, WIPO No. D2005-1290 (<viagraindia.com> confusing similar to VIAGRA) and Pfizer Inc. v. Tahar Aoudia, WIPO Case No. D2004-0958 (<pfizerfrance.com> confusingly similar to PFIZER).

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Respondent has made out a prima facie case. This finding is based upon the following:

• there is no evidence that the Respondent is commonly known by the Disputed Domain Name;

• there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark; and

• the Respondent registered and began using the Disputed Domain Name after the Complainant had established rights in the Trade Mark through registration and use.

A “legitimate noncommercial or fair use” of a domain name can generate rights or legitimate interests in a domain name (see paragraph 4(c)(iii) of the Policy). Here, the website at the Disputed Domain Name at first blush appears to be a site with factual information about the Celebrex product, and arguably related commentary. It contains information about the Complainant’s product and includes posts such as “Celebrex interactions with food and drugs” and “How to use Celebrex”. However, the Respondent’s use in this Panel’s view is not “noncommercial.” It links to a website at <aupills.com>, which (according to the Complainant) linked to an online “pill shop”, presumably offering products competitive with the Complainant’s product. The Panel infers that either the Respondent received pay-per-click revenue for linking to this online shop, or that the website at the Dispute Domain Name was designed for purposes of search engine optimization with the purpose of boosting the search engine rankings of a linked-to commercial website.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Complainant, its holding company and the Trade Mark are well known, particularly within the pharmaceutical industry. It would be highly unlikely that the Respondent was unaware of the Complainant (and its Trade Mark) when it registered the Disputed Domain Name.

The Panel finds that the Respondent, prior to its registration and use of Disputed Domain Name (which wholly incorporates the Complainant’s Trade Mark) was aware of the Complainant, and was aware that the Complainant used the Trade Mark (including in Australia and the Ukraine) as the name of, and in connection with, the worldwide sale of medication.

The above discussion regarding the “noncommercial” nature of the website at the Disputed Domain Name also supports the Complainant’s submission that the Respondent registered and has been using the Disputed Domain Name in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith use of a domain name exists where the name is intentionally used to attract Internet users to a website, for commercial gain, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the products promoted on the website. Here, the Respondent has used the Trade Mark to attract Internet users to the website at <aupills.com> which advertised and linked to an online “pill shop”. The Panel infers that this shop sold a range of pharmaceutical products possibly including the Complainant’s product but also including other competing and non-competing products (see, e.g., Pfizer Inc. v. Jeff Ferris, WIPO Case No. D2006-1242 and the cases cited therein).

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <celebrexaustralia.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: August 11, 2013