WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories Inc. v. DialupOne Internet Services LLC
Case No. DWS2008-0004
1. The Parties
Complainant is Forest Laboratories Inc., New York, New York, United States of America, represented by Eric M. Agovino, United States of America.
Respondent is DialupOne Internet Services LLC, Carson City, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2008. On July 1, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. Later that same day GoD, Inc. transmitted by email to the Center its verification response confirming that 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 July 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 25, 2008.
The Center appointed Seth M. Reiss as the sole panelist in this matter on August 6, 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 is a widely-known pharmaceutical company headquartered in New York City. Complainant's flagship product is a pharmaceutical containing escitalopram oxalate which it sells in the United States of America under the brand name LEXAPRO. With prescriptions to over 15 million people in the U.S., Complainant's LEXAPRO branded escitalopram oxalate sales exceed US D$2 billion a year.
LEXAPRO brand escitalopram oxalate products were approved by the U.S. Food and Drug Administration for the treatment of depression and general anxiety disorder on December 18, 2003. Complainant has made uninterrupted and continuous use of the LEXAPRO mark since September 5, 2002 and received a U.S. federal trademark registration for the mark LEXAPRO (Reg. No. 2,684,432) on February 4, 2003. Complainant also owns the domain name , which was registered on January 22, 2001.
LEXAPRO's active ingredient, escitalopram oxalate, is the subject of a pending U.S. patent, the validity of which was recently considered and upheld by the U.S. Court of appeals for the Federal Circuit. Complainant holds the exclusive license for this U.S. patent.
According to available Whois records, Respondent DialupOne Internet Services LLC registered the disputed domain name on March 15, 2008. The disputed domain name points to a website that advertises for sale without prescription “Generic Lexapro” manufactured by a company not affiliated with the Complainant. The website, titled “4Rx.com”, offers links for a variety of other categories of medications many of which are similarly characterized as “generics” of other well known brand pharmaceuticals.
5. Parties' Contentions
A. Complainant
Complainant contends that the disputed domain name, , is identical or confusingly similar to Complainant's LEXAPRO mark. Complainant further contends that Respondent has no rights or legitimate interests in respect of the domain name as Complainant has never authorized Respondent's use of the LEXAPRO mark, there is no evidence that Respondent is commonly known by the name “Lexapro”, and Respondent's offering of “generic Lexapro” cannot qualify as a bona fide offering of goods or services. Finally, Complainant contends that the domain name was registered and is being used in bad faith as it is inconceivable that Respondent was unaware of Complainant's rights in the LEXAPRO mark when it registered , and because Respondent's website purports to sell escitalopram without a prescription, without authority from the U.S. Food and Drug Administration, and in violation of Complainant's patent rights.
By way of remedy, Complainant request that the disputed domain be transferred to it.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
2) that Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A respondent's default does not automatically result in a decision in favor of the complainant. Subject to the principle that a complainant is only required to make out a prima facie showing with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the respondent's default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 4.6.
A. Identical or Confusingly Similar
Complainant has demonstrated trademark rights in the LEXAPRO mark through uninterrupted and continuous use and by virtue of U.S. federal trademark Registration No. 2,684,432 which dates from February 4, 2003.
Respondent's domain name is identical to Complainant's LEXAPRO mark because it incorporates the LEXAPRO mark in its entirety. Forest Laboratories, Inc. v. Awad Kajouk,WIPO Case No. D2007-1650. The addition of the gTLD “.ws” has no legal significance nor does it function to distinguish Respondent's use of Complainant's LEXAPRO mark. Volvo Trademark Holding AB v. Tarek Abd El Moaty, WIPO Case No. DWS2004-0001 (addition of “.ws” does not change the fact that the domain is identical to Complainant's famous VOLVO marks); Sherwin-Williams Company et al. v. Tom Lento,WIPO Case No. DWS2000-0002 (addition of the phrase “.ws” is non-distinctive because it is a gTLD required for registration of a domain name).
This Panel finds that is identical to a trademark in which Complainant has rights and that Complainant has discharged its burden under the first element of the Policy.
B. Rights or Legitimate Interests
“Lexapro” is an arbitrary, coined and fanciful term, without meaning or significance apart from indicating the source or origin of Complainant's escitalopram oxalate pharmaceutical product. Other than as a means to identify Complainant's products, the term has no meaning in any language. Based upon the sales figures for LEXAPRO branded escitalopram oxalate, LEXAPRO arguably qualifies as famous or well-known mark.
Complainant maintains it never gave Respondent permission or consent to use the LEXAPRO mark. There is no evidence in the record, or from the “www. ” website, that Respondent is commonly known by LEXAPRO or that Respondent is selling authentic LEXPRO branded escitalopram oxalate. Rather, the evidence strongly suggests Respondent is offering for sale a competing product and may be doing so in violation of the U.S. Food, Drug and Cosmetic Act and Complainant's patent rights.
This Panel is satisfied that Complainant has made a prima facie showing that Respondent is without any right or legitimate interest in respect of the disputed domain name and there is nothing in the record to rebut the presumption established thereby. Accordingly, the Panel finds that the second element of the Policy is met.
C. Registered and Used in Bad Faith
It is inconceivable that Respondent was not aware of Complainant's LEXAPRO mark in March of this year when Respondent registered the domain name. In describing its pharmaceutical product as “Generic Lexapro”, Respondent acknowledges the existence and commercial importance of the LEXAPRO mark.
Registration of a domain name that is confusingly similar or identical to a famous trademark by an entity with no relationship to the mark is itself sufficient evidence of bad faith registration and use. Glaxo Group Limited, SmithKlineBeecham Corporation d/b/a GlaxoSmithKline. v. Michale Kelly,WIPO Case No. D2004-0262; F. Hoffman-La Roche AG v. Gustavo Guardo,WIPO Case No. D2007-1550.
Respondent's use of the domain name to offer for sale a competing product demonstrates Respondent's intent to trade on the recognition value of the LEXAPRO mark to attract for commercial gain internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation and endorsement. Policy, paragraph 4(b)(iv).
Respondent's offer to sell “Generic Lexapro” in the U.S. in contravention of Complainant's patent rights is further evidence of Respondent's bad faith registration and use of the disputed domain name. Lilly ICOS LLC v. Cialis Pillz,WIPO Case No. D2005-0063; Forest Laboratories, Inc. v. Fra Zero Tech, Alexey Gavrilo,WIPO Case No. D2008-0716.
The Panel notes that Complainant's LEXAPRO mark has been the subject of no fewer than eleven UDRP decisions issued by the Center all which resulted in the transfer of the disputed domain names to Complainant.
The Panel finds that the third element of the Policy has been established and that Complainant is entitled to the relief requested.
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.
Seth M. Reiss
Sole Panelist
Dated: August 20, 2008
Full & Egal Universal Law Academy