WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. MLC
Case No. D2008-0320
1. The Parties
Complainant is Forest Laboratories, Inc., of United States of America, represented by Forest Laboratories, Inc., United States of America.
Respondent is MLC of United States of America.
2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2008. On March 4, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain names at issue. On March 4, 2008, GoD, Inc. 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 Respondent of the Complaint, and the proceedings commenced on March 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2008.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 7, 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
Complainant markets and sells pharmaceutical products containing escitalopram oxalate in the United States under the brand name LEXAPRO. LEXAPRO is Complainant’s flagship product, with prescriptions to over 15 million people in the United States and sales exceeding $2 billion a year.
Complainant registered the domain name on January 22, 2001.
Respondent registered the Domain Names at issue, namely, , and on July 26, 2003.
5. Parties’ Contentions
A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant has made uninterrupted and continuous use of the mark LEXAPRO since September 5, 2002.
Complaint owns United States Trademark Registration No. 2,684,432 for the mark LEXAPRO, which registration issued on February 4, 2003 for “pharmaceutical preparations, namely, antidepressants.”
The Domain Names are identical and/or confusingly similar to Complainant’s LEXAPRO mark because they incorporate the mark in its entirety adding only the descriptive word “side-effects” which is not sufficient to distinguish the disputed domain name from Complainant’s trademark.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Complainant has not agreed or consented to Respondent’s use or registration of the Domain Names at issue;
Respondent is not commonly known by the Domain Names; and
The Domain Names display links that resolve to websites that contain keyword advertisements and links to other domains that are related to LEXAPRO, but that are not affiliated with or sponsored by Complainant, as well as links for online pharmacies that sell unauthorized versions of Complainant’s LEXAPRO product and competing products including EFFEXOR, CYMBALTA, ZOLOFT, and PROZAC. Additionally, some of the web pages contain information and links to competitive products such as “AMORYN,” an antidepressant like LEXAPRO.
Therefore, Respondent’s use of its confusingly similar domain name to attract Internet users with the hope of obtaining advertising revenue is not a bona fide offering of goods or services, or a fair use of Complainant’s trademark.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Complainant filed an intent-to-use trademark application on December 22, 2000, began using the LEXAPRO mark in commerce at least as early as September 5, 2002, and received a U.S. registration on February 4, 2003. Respondent registered the Domain Names at issue on July 26, 2003.
It is inconceivable that Respondent was not aware of Complainant’s coined and fanciful mark when it registered its domain name, which incorporates Complainant’s mark in its entirety.
Respondent registered the Domain Name at issue with the intent to trade on the well-known LEXAPRO mark, and to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website.
Therefore, Respondent registered and has been using the domain names in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the UDRP requires complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Complainant has used the LEXAPRO trademark in commerce since September 5, 2002 and is the owner of United States trademark Registration No. 2,684,432 issued February 4, 2003 for the mark LEXAPRO. Therefore, the Panel finds that Complainant has trademark rights in the LEXAPRO mark.
The Panel also finds that the Domain Names at issue, namely, , and are likely to be confused with Complainant’s LEXAPRO mark since the dominant portion of Complainant’s mark and of the disputed Domain Names is “LEXAPRO.” The addition of the words “side effects” does not eliminate the confusion. The mere addition of a generic or descriptive term is not sufficient to avoid confusion. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (January 6, 2004). (The fact that the word “autoparts” is added to Complainant’s trademark does not eliminate the identity, or at least the similarity, between Complainant’s trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name.) See also, Bayer Aktiengesellschaft v. Dangos & Partners,WIPO Case No. D2002-1115 (February 3, 2003) (addition of generic words “healthcare” to form domain name deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037 (March 9, 2005) (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (October 28, 2003) (finding domains such as , , , and confusingly similar to plaintiff’s PEPSI mark; stating that “[t]hat the mere addition of common terms such as ‘sports,’, ‘basketball’ or ‘soccer’ to the PEPSI mark is of no import”).
Moreover, neither the hyphens in the domain name nor the “.com” and “.org” gTLD suffixes serve to distinguish the Domain Names from Complaint’s mark. It is well established that neither punctuation marks such as hyphens nor the “.com” or “.org” suffixes on their own avoid a finding of confusing similarity. See Owens Corning Fiberglas Technology, Inc v. Hammerstone,WIPO Case No. D2003-0903 (December 29, 2003) (“The addition of a hyphen and the top-level domain designation “.com” are not sufficient to avoid the conclusion that the domain name and mark are confusingly similar.”) See, e.g., Rolls Royce PLC v. Hallofpain,WIPO Case No. D2000-1709 (February 19, 2001) (“[t]he use or absence of punctuation marks, such as hyphens and spaces, does not alter the fact that a domain name is identical to a mark”); Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (April 22, 2000) (“the addition of the generic top-level domain (gTLD) name “.com” is … without legal significance since use of a gTLD is required of domain name registrants”).
The Panel accordingly finds for Complainant under the first element of the Policy.
B. Rights or Legitimate Interests
In order for the Respondent to demonstrate rights or legitimate interests in the Domain Names, it must show
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use any of the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the Domain Names.
With respect to 4(c)(iii) of the Policy, it appears from the available record that Respondent has not made and is not making a legitimate noncommercial or fair use of the Domain Names and has not used the Domain Names, or a name corresponding to the Domain Names, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed, the provided Domain Names were used for a website that advertises and promotes not only Complainant’s LEXAPRO product but also competitor’s products. This is not a case where a party offers a non-commercial discussion of the side effects of a drug.
A complainant is required to make out an initial prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455. Transfer; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110, Transfer. The Panel finds that the circumstances enumerated above establish a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name at issue.
The Panel accordingly finds for Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Complainant has used its LEXAPRO trademark continuously since September 5, 2002, and received a registration for the LEXAPRO trademark on February 4, 2003. Moreover, Complainant registered the domain name on January 22, 2001. Respondent registered each of the Domain Names at issue on July 26, 2003. In view of the above, it is not plausible that Respondent registered the domain name at issue without knowledge of Complainant’s LEXAPRO trademark.
The Panel also finds that Respondent’s use of the domain name in conjunction with a website that among other things, links not only to pharmacies that sell competing products but also directly to websites for competing products such as AMORYN, is evidence of bad faith use and registration. Specifically, Respondent’s conduct is covered by Policy paragraph 4(b)(iv): “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel accordingly finds for Complainant under the third element of the Policy.
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 Complainant.
Lawrence K. Nodine
Sole Panelist
Date: April 21, 2008
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