The Complainant is H. Lundbeck A/S of Valby, Denmark, represented by Wallberg IP Advice, Denmark.
The Respondent is Ralf Zinc of Hamburg, Germany. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , and (“Disputed Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28 2016. On June 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 29, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 5, 2016. 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 was established in 1915. The Complainant is engaged in research, development, production, marketing and sale of pharmaceuticals worldwide. The Complainant holds registered rights in the CIPRALEX and LEXAPRO trade marks in over 100 countries, including its LEXAPRO trade mark registered in the European Union (“EU”) on December 16, 2003 (registration number 2041259) and its CIPRALEX trade mark registered in the EU on September 25, 2003 (registration number 1909761).
All of the Disputed Domain Names were registered in May and June 2016. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant is the owner of CIPRALEX and LEXAPRO trade marks, including in the EU (registration number 1909761 and registration number 2041259, respectively).
(b) The Disputed Domain Names are identical or confusingly similar to the Complainant’s CIPRALEX and LEXAPRO trade marks. The only difference between some of the Disputed Domain Names and the Complainant’s marks is the addition of the words “online”, “cheap”, “buy”, “order” or “price”. These generic words do not sufficiently distinguish the Disputed Domain Names from the Complainant’s CIPRALEX and LEXAPRO trade marks.
(c) The Complainant has not licensed or otherwise permitted the Respondent to use any of its CIPRALEX and LEXAPRO trade marks, and there is no evidence to show that the Respondent is commonly known by the Disputed Domain Names. Some of the Disputed Domain Names are inactive (i.e. , , , , , , , and ), and therefore the Respondent cannot be said to have any rights or legitimate interests in them. With regard to the other Disputed Domain Names (i.e. , , , , , , and ), the Respondent is using them to purportedly sell the Complainant’s “Cipralex” and “Lexapro” products, which is false. The Complainant’s “Cipralex” and “Lexapro” products are controlled substances, and so their sale online without a prescription from a licensed medical practitioner is illegal. Therefore, the Respondent is not using the Disputed Domain Names for a bona fide offering of goods or services, and the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
(d) The Respondents must have registered the Disputed Domain Names in full knowledge of the Complainant and its CIPRALEX and LEXAPRO trade marks, due to the distinctive nature of the trade marks. With regard to the inactive Disputed Domain Names, it is well established that this can amount to bad faith registration and use for purposes of the UDRP. Due to the distinctive nature and worldwide use of the Complainant’s CIPRALEX and LEXAPRO trade marks, it is inconceivable that the Respondent will be able to use the inactive Disputed Domain Names for any plausible purpose that would not infringe the Complainant’s rights.
(e) With regard to the active Disputed Domain Names, the websites to which they resolve allegedly offer the Complainant’s “Cipralex” and “Lexapro” products for sale, which indicates that the Respondent were clearly aware of the Complainant at the time it registered the Disputed Domain Names. The Respondent therefore registered and is using the Disputed Domain Names in order to mislead Internet users into believing that the websites to which the Disputed Domain Names resolve are affiliated with the Complainant.
(e) The Respondent appears to have registered the Disputed Domain Names using false contact details to conceal its identity. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the CIPRALEX and LEXAPRO trade marks, based on its EU trade mark registrations.
The Disputed Domain Names incorporate either the Complainant’s CIPRALEX trade mark or its LEXAPRO trade mark in their entirety. The Disputed Domain Name is identical to the Complainant’s CIPRALEX trade mark. The only difference between the Complainant’s trade marks and the other Disputed Domain Names (i.e. , , , , , , , , , , , , , , and ) is the addition of the words “online”, “cheap”, “buy”, “order” or “price” as either a prefix or a suffix. Each of the foregoing words are generic and descriptive. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (See Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088).
The Panel finds that “cipralex” or “lexapro” are the distinctive component of the Disputed Domain Names, and the addition of “online”, “cheap”, “buy”, “order” or “price” does nothing to distinguish it from the Complainant’s trade marks.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extensions, in this case “.pw”, “.top” and “.xyz”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has never authorised the Respondent to use its CIPRALEX or LEXAPRO trade marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Names. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel accepts that the Respondent is not commonly known by the Disputed Domain Names, or a name corresponding to them.
The Disputed Domain Names , , , , , , , and do not resolve to an active website. Therefore, the Respondent cannot be said to be making a bona fide offering of goods or services or a legitimate noncommercial or fair use of those Disputed Domain Names. There is no evidence to show that it is making demonstrable preparation to use such Disputed Domain Names for any such purpose.
The other Disputed Doman Names (, , , , , , and ) resolve to websites which falsely purport to sell the Complainant’s “Cipralex” and “Lexapro” products (“Respondent’s Websites”). In light of the foregoing, the Respondents cannot be said to be using the Disputed Domain Names to make a bona fide offering of goods or services, or for any legitimate noncommercial or fair use, as the Respondent is attempting to take advantage of the Complainant’s trade marks in order to generate profit.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The fact that some of the Disputed Domain Names are inactive does not prevent a finding of bad faith registration and use (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The passive holding of a domain name may amount to bad faith registration and use when, inter alia, it is difficult to imagine any conceivable future use of the domain name that would be legitimate and would not infringe a complainant’s well-known mark or would not amount to unfair competition (see Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra).
The Panel accepts that the Respondent knew of the Complainant and the Complainant’s CIPRALEX and LEXAPRO trade marks at the time it registered the Disputed Domain Names, and registered and used the Disputed Domain Names in bad faith, based on the following:
(a) the Respondent registered the Disputed Domain Names in May and June 2016, about 13 years after the Complainant first obtained its EU registration for the CIPRALEX and LEXAPRO trade marks;
(b) “lexapro” and “cipralex” are unique words which have no common meaning in the English or German language other than in relation to the Complainant;
(c) several of the Respondent’s Websites feature the Complainant’s CIPRALEX or LEXAPRO trade marks, and the websites to which , , and ultimately resolve, feature images of the Complainant’s “Cipralex” and “Lexapro” products (along with other products), which creates a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ Websites, for commercial gain; and
(d) the Respondent appears to have registered the Disputed Domain Names using incorrect contact details (i.e. the Respondent’s address appears to be incorrect).
Based on the above, the Panel reasonably believes that the Respondent registered and is using the Disputed Domain Names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 Names, , , , , , , , , , , , , , , , and be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: August 19, 2016
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