WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. Whois Privacy Protection Service, Inc.
Case No. D2007-1050
1. The Parties
The Complainant is Forest Laboratories, Inc., of New York, New York, United States of America.
The Respondent is Whois Privacy Protection Service, Inc., of Bellevue, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lexapro-rx-store.com> is registered with @Com Technology LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2007. On July 20, 2007, the Center transmitted by email to @Com Technology LLC a request for registrar verification in connection with the domain name at issue. On July 30, 2007, @Com Technology LLC 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 August 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2007.
The Center appointed Angela Fox as the sole panelist in this matter on August 29, 2007. 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 New York-based pharmaceutical manufacturer. Among its products is an antidepressant marketed under the name LEXAPRO.
The LEXAPRO brand was launched in September 2002 and has been used continuously since then for the treatment of depression and, since December 2003, for the treatment of general anxiety disorder. The Complainant describes LEXAPRO as its “flagship product”, with U.S.-based prescriptions exceeding 15 million each year and sales topping $2 billion per annum.
The Complainant owns U.S. federal trademark registration No. 2,684,432 for LEXAPRO for “pharmaceutical preparations, namely, antidepressants”, filed on December 22, 2000 and granted on February 4, 2003.
The disputed domain name was registered on September 24, 2003. It links to an online pharmacy, Prescriptions PublicRXSupply, based at the Internet address “www.prescriptions-publicrxsupply.com”, which offers for re-sale the Complainant’s LEXAPRO product and other competing and non-competing drugs.
5. Parties’ Contentions
The Complainant asserts that the contested domain name is identical and/or confusingly similar to the Complainant’s LEXAPRO mark. The disputed domain name incorporates the LEXAPRO mark in its entirety, and the Complainant argues that the remaining matter is descriptive and generic and does nothing to distinguish the domain name from the Complainant’s mark. In the Complainant’s contention, the LEXAPRO mark stands out from the disputed domain name, and the Respondent’s unauthorised use of it is likely to mislead the public into believing that the linked website is somehow associated with or connected to the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not consent to the Respondent’s use of the LEXAPRO mark, and the Respondent is not commonly known by a name corresponding to it. The Complainant points out that the domain name links to the website of a business that appears to trade under the name Prescriptions PublicRXSupply. The Complainant asserts that the Respondent’s unauthorised use of a domain name incorporating the Complainant’s trademark to attract Internet users to the Respondent’s on-line pharmacy cannot be regarded as bona fide commercial use.
Finally, the Complainant submits that the domain name was registered and has been used in bad faith. The Respondent registered the domain name a year after the Complainant’s launch of the LEXAPRO product, and the Complainant asserts that the Respondent must have been aware of the Complainant’s use. The Complainant contends that the Respondent’s registration was made with the intention to use the fame of the LEXAPRO mark to attract Internet users to the Respondent’s on-line prescription site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation and endorsement of the Respondent’s online pharmacy.
The Respondent did not reply to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under Paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(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 the domain name;
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Respondent’s domain name consists of LEXAPRO coupled with the generic prescription indicator “rx” and the word “store”. The element LEXAPRO is identical to the Complainant’s registered trademark. In the Panel’s view, the additional matter is not enough to avoid the likelihood of confusion arising from the use of LEXAPRO.
The generic prescription indicator “rx” and the word “store” have both been found to be descriptive by other WIPO UDRP panels. In particular, the Panel notes the decisions in Sanofi-Aventis v Whois Privacy Protection Service Inc., WIPO Case No. D2006-0914 (involving the domain name <ambien-rx-store.com>); Sanofi-Aventis v. Billionaire Club, WIPO Case No. D2004-0805 (involving a finding that <accompliarx.com> was confusingly similar to the complainant’s ACCOMPLIA drug brand), and Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004–0809 (involving the domain name <accomplia-store.com>).
It is a well-established principle that descriptive or generic additions, and particularly those that designate the goods or services with which a trademark is used, do not avoid confusing similarity of a domain name with a trademark. The Panel concurs with the reasoning on this point in inter alia, Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661, Sanofi-Aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045, Deutsche Bank AG v. New York TV Show Tickets, Inc., WIPO Case No. D2001-1314, and Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254. In the present case, the Complainant has established that its LEXAPRO trademark is used in respect of a prescription drug. The indicator “rx” denotes a prescription, and the word “store” in the context of a domain name simply denotes a website through which goods can be purchased. The added matter in the disputed domain name therefore does nothing to distinguish the domain name from the Complainant’s trademark, and moreover serves to reinforce the conceptual link between them.
The Respondent’s use of a domain name consisting of relevant descriptive elements added to LEXAPRO is likely to give rise to confusion. The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant did not consent to the Respondent’s use of the disputed domain name, nor has the Respondent offered any evidence that it holds any right or legitimate interest in it. The Panel may nonetheless infer that the Respondent has such a right or interest if based on its evaluation of the evidence the following under paragraph 4(c)(i) of the Policy applies:
(i) before any notice to the Respondent of the dispute, the Respondent used, or made 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…
The Respondent has clearly been making a commercial use of the disputed domain name. It is apparent from the materials annexed to the complaint that the Respondent has relied on the Complainant’s reputation in its LEXAPRO trademark to attract and re-direct Internet users to its on-line pharmacy at prescriptions-publicrxsupply.com by using a domain name incorporating the Complainant’s trademark and the generic prescription and retail indicators “rx” and “store”. Once on the Respondent’s site, visitors are offered the opportunity to purchase the Complainant’s LEXAPRO branded goods. A drop-down bar labeled “Choose Additional Medication” also offers a wide range of other pharmaceuticals, including third-party competing and non-competing drugs.
Other panels have considered the question of whether re-sellers like the Respondent have a legitimate right to or interest in using domain names that incorporate complainants’ trademarks. In F. Hoffman-La Roche AG v. Lythion Services Ltd., WIPO Case No. D2006-0035, involving the domain name <4-valium.com>, the panel answered that question in the negative, noting that the respondent’s online pharmacy was different from a pharmacy on the street because it was accessed not by walking in, but by clicking on a website bearing a domain name that was confusingly similar to the complainant’s well-known brand. The panel stated, “Using a name confusingly similar to another’s famous name to attract customers to a site or place not authorized by that other, for commercial gain, cannot be considered bona fide use”.
Other WIPO UDRP panelists have also found that while re-sellers may have a right to use a complainant’s trademark to describe genuine goods of the complainant for re-sale, they do not enjoy a right to register and use a complainant’s marks as domain names without the complainant’s consent (Hoffman-LaRoche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793).
The complaint shows that the Complainant’s trademark has enjoyed considerable commercial success, and the Respondent’s conduct in knowingly adopting a domain name that is confusingly similar to it was clearly calculated to trade on and benefit from the fame of the Complainant’s mark in promoting the Respondent’s on-line pharmacy. The Respondent did not have the Complainant’s consent to do this. The Respondent’s use does not, in the Panel’s view, constitute a bona fide offering of goods or services that gives rise to a legitimate right or interest in the disputed domain name.
Moreover, the Respondent’s use of a domain name incorporating the Complainant’s trademark to offer third-party goods cannot be bona fide commercial use because it is misleading. As observed by another WIPO UDRP panel, “The use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch’ selling” (Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946).
In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia paragraph 4(b)(iv):
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of its website or of a product on that site.
The Complainant has submitted, and the Respondent has not denied, that the LEXAPRO mark has been used in respect of a highly successful prescription drug in the U.S. It is implausible that the Respondent did not know of the Complainant’s mark when it registered the disputed domain name, given the commercial profile of the brand and the Respondent’s use of the disputed domain name to re-sell pharmaceuticals, including the Complainant’s LEXAPRO product.
The Respondent has been using the disputed domain name to attract Internet users to its on-line pharmacy. Such activities are manifestly intentional and for commercial gain. The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trademark, and the Respondent’s activities therefore represent an intentional attempt to attract, for commercial gain, Internet users to the linked site by creating a likelihood of confusion with the Complainant’s LEXAPRO mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s on-line pharmacy and the products sold through it.
Even if a visitor to the Respondent’s site were to realise that he or she had been re-directed to an online pharmacy unconnected with the Complainant, nonetheless the initial interest confusion that lured the visitor in would also support a finding of bad faith (F. Hoffman-La Roche AG v. Lythion Services Ltd., WIPO Case No. D2006-0035). As observed by another panel, “the deliberate creation of initial interest confusion and the consequent diversion of internet traffic is sufficient to establish bad faith on the Respondent’s part” (Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128).
In the Panel’s view, the evidence is sufficient to support the claim that the disputed domain name was registered and used in bad faith. The Panel so finds.
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 <lexapro-rx-store.com> be transferred to the Complainant.
Dated: September 11, 2007