WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Eli Lilly and Company v. Matt Brown

Case No. D2000-0350

 

1. The Parties

The Complainant is Eli Lilly and Company, a corporation incorporated under the laws of the state of Indiana, with a place of business at Lilly Corporate Center, Indianapolis, Indiana 46285, U.S.A.

The Respondent is Matt Brown, whose full post office address is Flat 1, 96 Palace Road, Tulse Hill, London, SW2 3JZ, United Kingdom.

 

2. The Domain Name(s) and Registrar(s)

The domain name in issue is "prozacpages.com"; the Registrar with which the disputed domain name is registered is CORE Internet Council of Registrars, World Trade Center II, 29 route de Pre-Bois, CH-1215 Geneva, Switzerland.

 

3. Procedural History

The Complaint was filed on April 28, 2000. The Center acknowledged receipt of the Complaint on May 3, 2000. A request for Registrar verification was forwarded to CORE Internet Council of Registrars on May 3, 2000. On May 9, 2000, CORE Internet Council of Registrars confirmed by e-mail that Matt Brown, Flat 1, 96 Palace Road, (Palace Road), SW2 3JZ United Kingdom is the current registrant of the domain name in issue.

On May 8, 2000 the Respondent sent a letter by e-mail to the Center in response to the Complaint.

On May 12, 2000, the Center forwarded Notification of Complaint and Commencement of Administrative Proceeding to Matt Brown by e-mail and Post/Courier. The Center advised the Respondent that a response was due within twenty (20) calendar days from the day of receipt of the notification. The Respondent was advised that the last day for sending the Response to the Complainant and the Center is May 31, 2000. The Center also acknowledged the Respondentís Communication of May 8, 2000 and requested the Respondent to indicate whether the letter of May 8 should be regarded as the Response in the administrative proceeding.

On May 18, 2000 the Respondent sent an e-mail to the Center advising that the earlier letter (dated May 8, 2000) was his Response to the Complaint. The Respondent also raised one other point to its Response, namely, that others were using domain names including "prozac".

On May 19, 2000 the Center forwarded a Response Deficiency Notification by e-mail to the Respondent stating that the Respondentís letter did not satisfy the requirements set out in Paragraph 5 of the Rules for Uniform Domain Name Resolution Policy and advising that the Respondent is requested to remedy the deficiencies by May 31, 2000. The Center also responded to the Respondentís e-mail dated May 18, 2000 and advised that the determination on the substantive facts of the case will be in the sole discretion of the administrative panel.

On June 5, 2000 the Center sent an e-mail to the Respondent advising that having failed to receive a communication from the Respondent subsequent to the Centerís Response Deficiency Notification by the deadline of May 31, 2000, the Center will proceed to appoint the Administrative Panel.

On June 5, 2000 the representatives for the Complainant sent an e-mail letter to the Center commenting on the submissions made by the Respondent. On June 5 the Center acknowledged receipt of the Complainantís letter and advised that the communication would be forwarded to the Panel who would decide whether to give weight to the communication.

On June 7, 2000 the Respondent sent an e-mail enclosing a letter to the Center commenting on the second submission of the Complainant dated June 5, 2000. On June 9, 2000 the Center acknowledged receipt of the Respondentís e-mail and letter and advised that the communication will be transferred to the panel and it will be at the sole discretion of the Panel to decide whether to give weight to the communication.

On June 13, 2000, the Center forwarded a Notification of Appointment of Administrative Panel to the Parties and advised that the Administrative Panel is required to forward its decision to the Centre by June 26, 2000.

 

4. Factual Background

The Trademarks

The Complaint is based on the ownership of the trademark PROZAC registered in over 70 countries around the world in respect of pharmaceutical preparations. The trademark PROZAC has been used by the Complainant in relation to pharmaceutical preparations since at least as early as 1984. The trademark PROZAC has acquired a substantial reputation and has become well known to the public as a famous trademark, denoting the products of the Complainant alone.

 

5. Partiesí Contentions

A. Complainant

(i) The Complainant submits that the domain name prozacpages.com is confusingly similar to the Complainantís registered trademark PROZAC.

(ii) The Complainant submits that the Respondent has no legitimate interest in any domain name incorporating the PROZAC trademark.

(iii) The Complainant further submits that the Respondent being aware that PROZAC is a registered trademark of the Complainant has registered the trademark prozacpages.com in bad faith. The Complainant further submits that the Respondent has made unfair use of the Complainantís trademark PROZAC to attract visitors to his web site.

(iv) The Complainant also submits that after attracting visitors to his web site, the Respondent has attempted to tarnish the reputation of the Complainantís trademark by creating an injurious association between the PROZAC trademark and the "distasteful contents" of the prozacpages. com web site.

With respect to the first element (i) of confusion between the domain name and the registered trademark PROZAC the Complainant attaches as Annex C copies of the Complainants registered trademarks for PROZAC registered in Spain, Denmark, Finland, Benelux, Germany, Sweden, Italy, United Kingdom, Greece and Community Trade Mark. The trademarks are registered in relation to pharmaceutical preparations and substances. The domain name prozacpages.com contains the whole of the Complainantís registered trademark PROZAC. The additional element pages.com is irrelevant in trademark terms, since it is wholly descriptive and non-distinctive, merely referring to the nature of the material, that is, web pages. The additional element pages.com does nothing to distinguish the Respondentís domain name from the Complainantís registered trademark. The Respondentís web site features pictures of the Complainantís goods, namely the distinctive green and cream trade dress of the PROZAC capsules. The green and cream capsules are also the subject of trademark registrations owned by the Complainant. Each capsule bears the PROZAC trademark.

With respect to the second element (ii) whether the Respondent has no rights or legitimate interest in respect of the disputed domain names; the Complainant`s evidence is that the Respondent has no rights in the trademark PROZAC and is not making non-commercial or fair use of the trademark PROZAC. The Respondent is not associated with, affiliated with or licensed by the Complainant to use the Registered Trademark PROZAC for the goods for which the trademark is registered.

With respect to the third element (iii) the Complainant submits that the Respondent was aware that PROZAC is a registered trademark for pharmaceutical preparations manufactured and sold by the Complainant. The Complainant submits that use of the registered trademark PROZAC as the distinctive part of the domain name prozacpages.com is misleading as it suggests that there is some link or connection between the site and the Complainant, the owner of the registered trademark PROZAC. In his letter dated June 7, 2000 the Respondent states "Yes, I have deliberately chosen to include the word "prozac" in the title to attract more visitors".

With respect to element (iv) as the Complainant has not provided the Center with copies of text of the Respondentís web site it is not possible to decide whether the web site contains "distasteful" information.

B. Respondent

No formal Response with respect to the Complaint was received by the Center or by the Panel.

The Respondent submitted a letter on May 8, 2000 raising several points in response to the matters raised in the Complaint. The first point made by the Respondent is that prozacpages.com is a non-profit site, the purpose of which is to highlight and attempt to help others to understand the mental disruption that is the nature of severe depression. The second point is that the name prozacpages.com was allegedly registered in good faith, as a clear way to highlight the fact that this web site relates to severe depression. The third point made by the Respondent is that the domain name prozacpages.com itself was not at any time registered with any internet search engine. The fourth point is that the trademark PROZAC for pharmaceutical preparations has gone beyond merely being a trademark distinguishing a pharmaceutical preparation manufactured and sold by the Complainant. The Respondent further alleged improper trademark and copyright marking by third parties and use of prozac as part of titles and domain names operated by third parties.

In a second letter from the Respondent dated May 18, 2000 the Respondent referred again to working sites of third parties which included the trademark PROZAC as part of the domain name.

By letter of June 5, 2000 the Complainant denied that the trademark PROZAC registered in relation to pharmaceutical substances had become a generic term available for all to use and countered that PROZAC was a famous trademark distinguishing a pharmaceutical preparations manufactured and sold by the Complainant. The Complainant also contested the point that the contested domain name is not registered with any internet search engine. A print out of a search on the ALTA VISTA search engine was attached.

The Respondent e-mailed a third letter dated June 7, 2000 to the Center contesting portions of the Complainantís letter of June 5, 2000. The Respondent objected to the weight which should be given to the listing on ALTA VISTA search engine and submitted that the disputed domain name was not listed on YAHOO search engine. In the second last paragraph of his letter dated June 7, the Respondent states: "I want to reach as many people who suffer from depression, and who are lonely and do not know who to turn to or talk to as possible. Yes, I have deliberately chosen to include the word "prozac" in the title to attract more visitors. But the audience is specifically targeted through depression news groups and [the site] is extremely unlikely to be viewed casually".

 

6. Discussion and Findings

The first element which the Complainant must prove is that the domain name is identical or confusingly similar to the Complainantís trademarks. The domain name is identical to the Complainantís registered trademarks except for the descriptive addition "pages.com". The Complainant has proved that the disputed domain name is confusingly similar to the Complainantís registered trademark PROZAC registered in association with pharmaceutical preparations since at least as early as 1984 and currently registered in at least 70 countries.

The trademark PROZAC which is the subject of numerous registrations registered in the name of the Complainant for pharmaceutical preparations is an inherently distinctive word as applied to pharmaceutical preparations for which the mark is registered.

The domain name in dispute prozacpages.com is comprised of the two words PROZAC and pages.com. The idea suggested by the disputed domain name and the registered trademark is the pharmaceutical PROZAC and a web site relating to the pharmaceutical PROZAC. The domain name prozacpages.com registered by the Respondent is confusingly similar to the Complainantís registered trademark PROZAC.

The second element which the Complainant is required to prove is that the Respondent has no rights or legitimate interest in respect of the domain name in dispute. The Respondent submits that the registered trademark is generic and that the registered trademark is used by others as part of domain names. The Respondent also submits that the domain name prozacpages.com was registered in good faith as a clear way to highlight that the web site contains information relating to severe depression. In a letter dated June 7, 2000 the Respondent stated: "Yes, I have deliberately chosen to including the word "prozac" in the title to attract more visitors." The issue as to the validity of the Complainantís registered trademarks is not within the jurisdiction of the Panel.

The Respondent is not associated with, affiliated with or licensed by the Complainant to use the Registered Trademark PROZAC for the wares for which the trademark is registered. The Complainant has established that the Respondent has no right or legitimate interest in respect of the domain name in dispute.

The third element which the Complainant is required to prove is that the disputed domain names prozacpages.com has been registered and is being used in bad faith. The domain name prozacpages.com was registered by the Respondent because the famous trademark PROZAC for pharmaceutical preparations will attract more visitors to the Respondentís web site than would a domain name not including the famous trademark. The domain name prozacpages.com is being used in bad faith to continue to attract visitors to a site which many visitors are likely to believe is designed and operated by the Complainant or has received approval of the Complainant.

As part of the dispute relating to the third element both the Complainant and the Respondent made submissions concerning the content of the web site and alleged injurious and distasteful contents of the prozacpages.com web site. As a copy of the material on the web site was not submitted as an annex to the submissions of either party I have not reached any conclusions with respect to this allegation. As the Complainant has established that the domain name prozacpages.com was registered and is being used in bad faith it is unnecessary to make any finding with respect to the contents of the Respondentís web site.

 

7. Decision

In the Complaint, the Complainant requested that in accordance with Paragraph 4(c)(i) of the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel issue a decision that the disputed domain name be cancelled or transferred to Complainant. The Complainant having proved each of the three elements set out in paragraph 4(a)(i)(ii) and (iii) of the Uniform Domain Name Dispute Resolution Policy is entitled to a decision in favour of the Complainant. The Panel requires that the domain name prozacpages.com be transferred to Eli Lilly and Company.

 


 

Ross Carson
Panelist

Dated: June 26, 2000