WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. WhoisGuard Protected
Case No. D2008-0005
1. The Parties
The Complainant is Forest Laboratories, Inc., New York, New York, United States of America.
The Respondent is WhoisGuard Protected, Westchester, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names, and , are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2008. On January 3, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On January 3, 2008, eNom 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”), 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 January 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2008. The Respondent did not submit any response. Accordingly, the Center issued a notification of the Respondent’s default to both parties on February 1, 2008.
The Center appointed Dennis A. Foster as the sole panelist in this matter on February 12, 2008. 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 a well-established United States of America pharmaceutical company that markets products under the trademark, LEXAPRO, which is registered with the United States Patent and Trademark Office (the “USPTO”) (Registration No. 2,684,432; February 4, 2003).
The Respondent registered the disputed domain names, and , on March 5, 2007 and March 16, 2007, respectively. The disputed domain names resolve to a website that offers the Complainant’s products and the products of its competitors at discount prices.
5. Parties’ Contentions
A. Complainant
The Complainant is a well-known United States of America pharmaceutical company that markets and sells, among other products, drugs containing escitalpram oxalate with the brand name LEXAPRO. Prescriptions under that name number more than 15 million in the United States, bringing in annual revenue greater than $2 Billion USD.
The Complainant has used the mark LEXAPRO continuously since September 5, 2002, obtaining a USPTO registration for it on February 4, 2003. The Complainant has also owned the domain name since January 22, 2001.
The Respondent registered the disputed domain names and , both of which are identical or confusingly similar to the Complainant’s mark because they both incorporate the mark in its entirety. The additions of the generic terms “drugs” and “order” are without legal significance in determining similarity.
The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant did not agree or consent to the Respondent’s registration of domain names containing the Complainant’s trademark. The disputed domain names resolve to a website which offers at discount prices the Complainant’s products as well as those marketed by third party competitors. Such use does not constitute a “bona fide offering of goods or services”.
The disputed domain names were registered and are being used in bad faith. The Respondent knew of the Complainant’s trademark and undoubtedly sought to trade off of the well-known mark in its attempt to attract internet users for commercial gain.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i)-(iii), the Complainant may prevail in this administrative proceeding and gain possession of the disputed domain names, and , provided that the Complainant can demonstrate the following:
(i) The disputed domain names are identical or confusingly similar to a trademark 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 names; and
(iii) The disputed domain names were registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has furnished the Panel with plain evidence that the Complainant owns a valid USPTO registration for the trademark LEXAPRO at Exhibit D of the Complaint. Therefore, the Panel finds that the Complainant has established its right in that mark. See Reebok International Limited v. Shaydon Santos, NAF Case No. FA565685 (“Complainant owns a United States Patent and Trademark Office (“USPTO”) registration…This trademark registration is adequate to establish rights pursuant to Policy [paragraph] 4(a)(i).”); and Hola S.A. and Hello Limited v. Idealab,WIPO Case No. D2002-0089.
The Panel concurs with the Complainant’s contention that both of the disputed domain names incorporate the Complainant’s entire trademark. Each name then adds a hyphen with a generic term – “drugs” and “order” respectively – as well as an obligatory gTLD. While those names may not be identical to the trademark, the Panel finds no difficulty in concluding that they are each confusingly similar to the mark, as the additional generic terms merely reinforce the product-line associated with the trademark or suggest how to obtain those associated products. See Sanofi-aventis v. Alma Navaro,WIPO Case No. D2005-1042 (where the panel found the disputed domain name to be confusingly similar to the trademark AMBIEN); and Sanofi-Aventis v. US-M,WIPO Case No. D2004-0809 (where the Panel determined that, among others, the disputed domain names and were confusingly similar to the trademark ACOMPLIA).
Therefore, the Panel rules that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
With near unanimity, prior UDRP panels have held complainants to the minimal burden of establishing only a prima facie case as to respondents’ lack of rights or legitimate interests in disputed domain names before shifting the burden onto respondents to put forth an affirmative case on this issue. See, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc., NAF Case No. FA154527 (“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
[paragraph] 4(a)(ii).”)
The Complainant’s possession of a valid trademark registration for LEXAPRO and assertion that the Complainant did not consent to the Respondent’s use of the same in a domain name establish just such a prima facie case. Typically, in rebuttal a respondent argues that it satisfies one or more of the criteria of legitimacy set forth in Policy paragraphs 4(c)(i)-(iii), but in this case the Respondent has chosen not to respond.
In examining the record for applicability of the above criteria, the Panel concludes that paragraph 4(c)(ii) does not apply, given that the Respondent’s name, WhoisGuard Protected as given in the Whois database does not correspond to the disputed domain names in any coherent manner. Further, the Panel dismisses the applicability of paragraph 4(c)(iii) because the Respondent uses the disputed domain names to offer various drugs for sale at discount prices – a commercial instead of a “noncommercial or fair” use of those names. Finally, while the Respondent does conduct an offering of products at its website connected with the disputed domain names, that offering – of competing products – does not constitute a “bona fide offering” as required by paragraph 4(c)(i). See Pfizer Inc. v. Kent Gormat aka kgormat,WIPO Case No. D2004-0591; and The Coryn Group, Inc., and AM Resorts, LLC v. Media Insight, NAF Case No. FA198959 (“…Respondent uses the [disputed domain] names to divert Internet users to its website that offers competing services. Thus, Respondent is not providing a bona fide offering of goods or services…within the meaning of Policy [paragraph] 4(c)(i)…”).
In view of the above, the Panel holds that the Complainant has sustained its burden to prove that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In paragraph 4(b), the Policy suggests four circumstances that, if substantiated, would give rise to a ruling that the Respondent registered and is using the disputed domain names in bad faith. However, these circumstances are not intended to be exhaustive of the reasons for a bad faith ruling. In this case, the Respondent appears to have, and the Panel believes deliberately, filed domain name registrations under what appears to be a privacy shield service. Several panels in prior UDRP cases have found such conduct to be suggestive of bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. See, for example, HSCB Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, and Countrywide Financial Corporation, Inc. and Countrywide Home Loans, Inc.,WIPO Case No. D2005-0248 (“…the Panel determines that by operating through a Whois Agent, the Respondent took deliberate steps to hide its true identity…which behavior has been found to constitute evidence of bad faith within the meaning of the Policy.”). The Panel agrees with the conclusions reached in these cases and decides that the same reasoning should be applied in the instant case. Further, the Respondent’s use of the domain names as explained above under ‘Rights or Legitimate Interests’ falls squarely within the circumstances of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has shown that the Respondent registered and is using the disputed domain names in bad faith.
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 names, and , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: February 26, 2008
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