WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. Modern Empire Internet Ltd.
Case No. D2007-0974
1. The Parties
The Complainant is Forest Laboratories, Inc., New York, New York, United States of America, internally represented.
The Respondent is Modern Empire Internet Ltd., Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name is registered with F.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2007. On July 5, 2007, the Center transmitted by email to F a request for registrar verification in connection with the domain name at issue. On July 6, 2007, F transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and notified that the disputed domain had been placed under registrar lock. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2007.
The Center appointed Derek M. Minus as the sole panelist in this matter on August 22, 2007. 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 following uncontested and unchallenged facts appear from the Complaint and the supporting documents submitted with it:
The Complainant is a well known pharmaceutical company with its headquarters in New York City. The Complainant markets and sells pharmaceutical products in the United States of America under the brand name LEXAPRO which contain the chemical compound, escitalopram oxalate, which have been approved by the United States Food and Drug Administration for the treatment of depression. LEXAPRO is the Complainant’s flagship product, with yearly prescriptions to over 15 million people in the United States and sales exceeding $2 billion.
The Complainant provided evidence of its United States Trademark (Reg. No. 2,684,432) registered on February 4, 2003, for the LEXAPRO mark for “pharmaceutical preparations, namely antidepressants in Class 5”. The Complainant stated that the validity of this registration has not been challenged. The LEXAPRO trademark is arbitrary, coined, and fanciful and other than as a means to identify the Complainant’s product, has no meaning in any language.
The Complainant owns the domain name , which was registered on January 22, 2001, and has continuously used the LEXAPRO mark in commerce since September 5, 2002.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that:
(a) The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
(b) The Respondent has no rights or legitimate interests in respect of the domain name.
(c) The domain name was registered and is being used in bad faith.
B. Respondent
The Respondent failed to provide a response to the Complainant’s contentions. The Panel shall decide the complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a response as the Panel considers applicable (Rules, paragraph 14(b)).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;
(ii) that the Respondent has no rights or legitimate interests in the domain name;
(iii) that the domain name has been registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
According to the Complainant, its rights in the well known LEXAPRO mark are strong. The Complainant asserts that the domain name is identical and/or confusingly similar to its LEXAPRO mark because it incorporates the mark in its entirety.
The Panel accepts that the Complainant is the owner of the trademark rights in the name LEXAPRO. Earlier decisions have found that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark (see Janus International Holding Co. v. Rademacher, WIPO Case No. D2002-0201).
Here the disputed domain name incorporates the Complainant’s LEXAPRO trademark but adds the sole letter “e”, connected to the Complainant’s mark by a hyphen at the beginning and the top level “.com” identifier at the end. It has been held that a domain name with the addition at the beginning, of the letter “e” separated from a complainant’s trademark by a hyphen and ending with the “.com” gTLD is confusingly similar to the complainant’s trademark (see Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2005-0650).
Merely adding the generic words “e-” apparently signifying e-commerce, and “.com” at the end, is not sufficient to create a distinct domain name, and does not sufficiently distinguished the disputed domain name from the Complainant’s trademark (see Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026).
Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s registered trademark, in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name (i) use of, or preparation to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been known by the domain name; and (iii) legitimate non-commercial or fair use of a domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name because the Complainant has not agreed or consented to the Respondent’s use of, or registration of the domain name
which comprises the Complainant’s unique, well-known, and federally registered LEXAPRO mark.
There is no evidence that the Respondent is commonly known by the mark. Also, the Panel notes that the registration of the Complainant’s trademark predates the registration of the disputed domain name by the Respondent.
There is no evidence that the Respondent is making a legitimate, noncommercial or fair use of the domain name, without intent for commercial gain. On the contrary the Complainant has provided evidence that the disputed domain name resolves to a
website on which the Complainant’s LEXAPRO brand medication is for sale to the general public at discount prices. The products offered for sale also include the products of other pharmaceutical companies, some of which are marketed for the treatment of depression (e.g., Paxil), and therefore compete with Complainant’s LEXAPRO products. Therefore, Respondent’s use of the domain name to advertise and sell pharmaceutical products cannot constitute a bona fide offering of goods and services because the domain name at issue is confusingly similar to the Complainant’s mark and is used in connection with the promotion and sale of competing products. See Pfizer Inc v. Kent Gormat, WIPO Case No. D2004-0591 where the panel held that use of a domain name to advertise and sell an alleged generic version of the trademarked drug product did not constitute a use in connection with a bona fide offering of goods and services, in line with previous WIPO UDRP decisions; Chanel, Inc. v. Cologne Zone, WlPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WlPO Case No. D2000-0700; Pfizer Inc. v. Magic Islands, WlPO Case No. D2003-0870; Nikon. Inc. and Nikon Corporation. v. Technilab Inc., WlPO Case No. D2000-1774.
The Complainant has made a prima facie showing of the Respondent’s lack of rights. The Respondent has therefore not provided evidence of circumstances required by paragraph 4(c) of the Policy, or any other circumstances giving it a right or legitimate interest in the domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation”, will be evidence of bad faith registration and use of a domain name.
According to the Complainant’s submission, there are a number of circumstances that are relevant to finding that the Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating the likelihood of confusion with the Complainant’s mark.
First, the Complainant began using the LEXAPRO mark in commerce on September 22, 2002 and received a United States registration on February 4, 2003. The Respondent registered the domain name on or about October 2, 2003. It is argued, that the Respondent must have been aware of the Complainant’s mark, which is unique and invented, when it registered its domain name, which is virtually identical to Complainant’s mark.
Second, the Respondent does not use the domain name to identify its business, but conducts it under the name “PILLS.NET online pharmacy”.
Third, escitalopram oxalate, the active ingredient of LEXAPRO, is protected by United States patent laws. The Complainant is the exclusive licensee of D.S. Patent RE 34,712, which covers escitalopram oxalate and the United States District Court for the District of Delaware recently upheld the patent’s validity. The Respondent, in offering to sell escitalopram oxalate in the United States without the approval of the Complainant, is infringing on the Complainant’s patent.
Fourth, the Respondent does not have authorization from the United States Food and Drug Administration to sell its products. Therefore, the Respondent’s sale or importation into the United States of unapproved drugs violates the Federal Food, Drug and Cosmetic Act.
Fifth, the same Respondent has been involved in eight other domain name disputes, see, Joseph Patelson Music House, Ltd. v. Modern Empire Internet Lt d., WIPO Case No. D2007-0723; The University of Windsor v. Modern Empire Internet Limited, WIPO Case No. D2006-1238; Army and Air Force Exchange Service (AAFES) v. Modern Empire Internet Ltd., WIPO Case No. D2006-0510; Vicman Software, Inc. and Sazhin, Victor Victorovich v. Modern Empire Internet Limited, WIPO Case No.D2006-0205; Swarovski A.G v. Modern Empire Internet Ltd., WIPO Case No. D2006-0148; NBTY, Inc. v. Modern Empire Internet Ltd., WIPO Case No. D2005-0832; Weld Racing, Inc. v. Modern Empire Internet Limited, WIPO Case No. D2005-0305 and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,.WIPO Case No. D2003-0455. In all of these cases, the Respondent was found to have registered and used the domain name at issue in bad faith.
The Panel finds that the Respondent has capitalized on Complainant’s trademark by registering and using as a domain name a name confusingly similar to the Complainant’s trademark, see Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
Evidence of bad faith registration is shown when registration of a domain name occurs in order to utilize another’s well-known reputation by attracting Internet users to the registrant’s website, for commercial gain, see Soci�t� Air France v. Patrick Ory, WIPO Case No. D2003-0628.
Accordingly, the Panel finds from the circumstances enumerated above, that the Respondent registered and is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Pursuant to paragraph 4(b)(iv) of the Policy, this constitutes evidence of bad faith registration and use of a domain name for purposes of paragraph 4(a)(iii).
It is therefore established that the Complainant has made out each of the three elements that it is required to prove.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Dated: September 5, 2007
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