WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. Mcse Braindumps / Leif Nissen
Case No. D2007-1494
1. The Parties
The Complainant is Forest Laboratories, Inc., New York, New York, United States of America, represented by its internal counsel.
The Respondent is Mcse Braindumps (a/k/a Leif Nissen), St. Petersburg, Florida, United States of America, represented by Fried, Frank, Harris, Shriver & Jacobson LLP, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <lexipro.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2007. On October 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On October 12, 2007, the Registrar transmitted by email to the Center its verification response indicating that the Respondent Mcse Braindumps is listed as the registrant and providing the contact details. In response to a communication from the Center based on the Registrar's verification response, the Complainant filed an amendment to the Complaint on October 22, 2007. The Center verified that the Complaint together with the amendment to 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 October 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2007. The Response was filed with the Center on November 14, 2007. On November 21, 2007, the Complainant requested leave to submit a Supplemental Filing in reply to the Response.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 26, 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. On December 13, 2007, the Panel requested a copy of the Complainant’s Supplemental Filing, which the Center forwarded to the Panel on that date.
4. Factual Background
The Complainant is a Delaware corporation headquartered in New York City. Its stock is publicly traded on the New York Stock Exchange. The Complainant sells pharmaceutical products, including antidepressant preparations containing escitalopram oxalate that are marketed in the United States under the brand name LEXAPRO.
The Complainant filed an intent-to-use trademark application for this mark with the United States Patent and Trademark Office on December 22, 2000, immediately following the publication of clinical trial results on December 13, 2000. A year later, on December 13, 2001, the Complainant issued a press release announcing its plans to market the preparation in the United States under the LEXAPRO mark.
United States Trademark Registration Number 2684432 was issued to the Complainant on February 4, 2003, showing first use in commerce on September 5, 2002.
The Complainant operates a website about LEXAPRO at “www.lexapro.com”, a domain name that it registered on January 22, 2001.
The Complainant reports that over 15 million patients have obtained LEXAPRO prescriptions since the United States Food and Drug Administration (FDA) approved the drug for sale on December 18, 2003. Annual sales reportedly exceed US$2 billion.
The Domain Name was registered on January 25, 2002. The registration is in the name of Mcse Braindumps, which the Response identifies as an alias for Leif Nissen, an individual residing in St. Petersburg, Florida. According to the Response, Mr. Nissen designs websites and operates a web hosting business from his home under the trade name Properhosting.com. Since 2002, he has registered dozens of domain names, such as <briefcasesdirect.com>, <cameraslink.com>, and <onlydentists.com>. He has developed some domains for advertiser-supported websites, such as “www.funnywebzone.com” (which features humorous videos), while offering other domain names for sale or for use in hosting his customers’ websites.
The Complainant submitted in this proceeding a Declaration of Leif Nissen dated September 21, 2007, which Mr. Nissen originally filed in the judicial proceeding discussed below. According to this Declaration, the Respondent did not associate the Domain Name with any website until April 2004. From that time until May 2007, the Domain Name resolved to a website operated by Domainsponsor that displayed sponsored advertising links and paid the Respondent a portion of its pay-per-click advertising revenues. In May 2007, the Respondent switched to another, similar service provided by Parked.com. In setting up the parked website, the Respondent acknowledges that he selected “depression” from a drop-down list of 50 advertising key words displayed by Parked.com as potentially relevant to the Domain Name.
The Complainant submitted printouts of the website to which the Domain Name resolved in August 2007. All of the featured advertising links concerned medications, illnesses, or mental health. A link to the Complainant’s LEXAPRO website was displayed, along with links to websites selling other drugs or alternative therapies for depression.
On August 1, 2007, counsel for the Complainant emailed a cease-and-desist letter to Mr. Nissen, claiming that the use of the Domain Name violated the Complainant’s trademark rights.
Mr. Nissen responded by email on the same day, saying that he had the Domain Name before the Complainant’s LEXAPRO product “even existed” and that Parked.com determined what advertisements were displayed on the website to which the Domain Name resolved. Mr. Nissen reported that he had recently heard from other companies, some of them “offshore”, concerning their interest in purchasing the Domain Name. He concluded, “I do, however, understand your situation and I’m willing to sell you the domain for $10,000”.
According to an email from Parked.com attached to the Complaint, Parked.com “banned” the Domain Name after receiving a cease-and-desist letter from counsel for the Complainant. The Domain Name does not currently resolve to a website.
Following this action, Mr. Nissen sent an email to the Complainant dated August 14, 2007, with the following message
“Well, you’ve gotten parked.com to stop running ads on the site. Being that you’re being so reasonable, maybe I’ll sell it to a webmaster in Pakistan who will put a porn site on it. Let’s start being reasonable here before I do something stupid. There are 10+ domain parking companies so we can keep going that route before I get so upset I sell it offshore if that’s really the tactic you want to take.”
The Complainant promptly filed a lawsuit against Mr. Nissen alleging trademark infringement and trademark dilution in the federal district court for the Southern District of New York, Forest Laboratories, Inc. v. Nissen, No. 07 Civ. 7399 (SDNY, Aug. 20, 2007). The court granted a preliminary injunction forbidding Mr. Nissen and the Registrar from using the Domain Name during the pendency of the litigation. After the discovery phase had commenced, the Complainant voluntarily dismissed the lawsuit on October 9, 2007, in favor of “pursuing more expeditious remedies” through the current UDRP proceeding. Thus, there is no currently pending judicial proceeding relating to the substance of this dispute, and there is no final judicial determination on the merits of any of the issues that must be addressed in this proceeding.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its registered LEXAPRO mark, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant points out that the Domain Name was registered on January 25, 2002, the day following the Complainant's public announcement that it had received FDA approval to market LEXAPRO in the United States. The Complainant considers this evidence of bad-faith registration and also argues that the Domain Name has been used to generate pay-per-click advertising revenues based on the likelihood of confusion with the Complainant’s LEXAPRO mark. Additionally, the Complainant contends that the Respondent’s offer to sell the Domain Name to the Complainant for $10,000, or alternatively to sell it to an offshore webmaster who might use it for “a porn site”, reflects the Respondent’s bad faith.
The Respondent concedes that the Complainant holds the LEXAPRO trademark but argues that it is not “confusingly similar” to the Domain Name because the coined word “lexipro” is suggestive of legal or language professionals. The Response asserts that Mr. Nissen selected the Domain Name without knowledge of the Complainant’s trademark and before it was registered or first used in commerce. Mr. Nissen argues that he is not responsible for the advertising links generated by the two website “parking” services.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Supplemental Filings
The Rules do not explicitly provide for supplemental filings in a Policy proceeding, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, UDRP Panels are reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.
The Respondent submitted with its Response a copy of its motion for an award of attorney’s fees in the litigation mentioned above, in connection with the Respondent’s assertion that the Complainant’s actions in prosecuting first a lawsuit and then the UDRP Complaint reflects the Complainant’s bad faith. The Complainant requested leave to reply by submitting its own court brief opposing the Respondent’s motion for an award of attorney’s fees.
The Panel does not find the dispute over attorney’s fees and the Complainant’s motivation for pursuing first one and then another form of legal redress to be material to an evaluation of the Complaint under the Policy. Hence, the Complainant’s request to submit a Supplemental Filing is denied.
B. Identical or Confusingly Similar
The Complainant unquestionably has rights in the LEXAPRO trademark. It is visually and phonetically nearly identical to the distinctive portion of the Domain Name <lexipro.com>, differing in spelling by one letter.
The Panel concludes, therefore, that the Domain Name is confusingly similar to the Complainant’s mark for purposes of the first element of the UDRP Complaint
C. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(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 noncommercial 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.”
The Complainant states without contradiction that it has never authorized the Respondent to use its LEXAPRO mark.
The Respondent does not claim to have been known by the Domain Name or to have made legitimate noncommercial use of the Domain Name. Rather, the Respondent claims to have made use of the Domain Name in connection with a bona fide offering of goods or services -- the business of hosting and developing websites. The Complainant argues that the Domain Name was chosen with the intent to mislead Internet users interested in its trademarked products. If the preponderance of the evidence indicates that the Domain Name was registered and used with such bad-faith intent, then the Respondent’s use of the Domain Name to earn advertising revenues could not be deemed a bona fide commercial activity. That issue is better addressed below, in considering the bad-faith argument under the third Policy element.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name, or [. . . ]”
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The record does not indicate that LEXAPRO or “lexipro” are words in English or any other language; both are coined names. The Response contends that Mr. Nissen selected the Domain Name as suggestive of legal or language professionals. The Response cites a company offering a software product called “LexiPro”, a lexicon for Hebrew speakers that can be downloaded to handheld computers, and a Texas company named “Lexapro, LLC” that offers audio voice-over and transcription services. The Respondent does not claim a connection with either party. Moreover, there is nothing in the record that establishes that the Respondent ever offered or prepared to offer a product, service, or advertising venue concerned with legal or linguistic services of any kind.
It is undisputed, however, that the Respondent registered the Domain Name a few weeks after the Complainant publicly announced plans to market a new drug under the name LEXAPRO, and exactly one day after the Complainant issued a press release saying that it had received an “approvable letter” from the United States Food and Drug Administration and expected to start marketing LEXAPRO in 2002. Although the Respondent registered the Domain Name before the trademark was registered or first used in commerce, this does not preclude a finding that the Domain Name was registered in bad faith with knowledge that the mark would shortly be used in commerce. See, e.g., World Wrestling Entertainment, Inc. v. DIR Enterprises, LLC, WIPO Case No. D2006-1605; General Growth Properties, Inc. Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320. The Respondent denies such prior knowledge, but the Respondent’s subsequent conduct casts doubt on this denial.
The Panel takes notice of the many UDRP and judicial cybersquatting cases involving domain names incorporating, or slightly misspelling, the trademarked names of prescription drugs. These are clearly viewed as having value in attracting Internet users. When the Respondent parked the Domain Name with advertising networks, it is revealing that the sponsored advertising links featured medications, other therapies, and information about medical conditions relevant to depression and anxiety. These links targeted exactly the audience of Internet users who might be searching for information on the Complainant’s antidepressant drug LEXAPRO. Not one of the advertisements on printouts or archived versions of the websites to which the Domain Name resolved has to do with “legal or linguistic professionals”, the signification claimed by the Respondent. Rather, they concern the Complainant’s and competing antidepressant products, as well as other potentially relevant medical and mental health products and information. This result is hardly surprising, since the Respondent acknowledges that “depression” was a selected key word for the advertising website to which the Domain Name most recently resolved. Such use of the Domain Name is consistent with the instance of bad faith described in paragraph 4(b)(iv) of the Policy, misdirection for commercial gain.
The Respondent denies responsibility for the content of the parking websites to which the Domain Name was directed. But the Respondent acknowledges receiving a share of the modest pay-per-click advertising revenues generated by those websites and also admits awareness that “depression” was a selected key word for the advertising search engine used in connection with the most recent parking website. The Respondent, as the registrant of the Domain Name, remains ultimately accountable for its use. Paragraph 2 of the Policy, “Your Representations”, is incorporated by reference in the registration agreements of ICANN-approved registrars
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
The Respondent’s bad faith is also suggested by Mr. Nissen’s offer to sell the Domain Name to the Complainant for USD $10,000, an amount plainly “in excess of . . . documented out-of-pocket costs directly related to the domain name” (Policy, paragraph 4(b)(i)). It is hard to read the Respondent’s subsequent message as anything other than a threat: “maybe I’ll sell it to a webmaster in Pakistan who will put a porn site on it.”
The Respondent denies any intent to trade on the reputation of the Complainant’s mark. But the Panel finds that the similarity of the Domain Name to a distinctive, coined mark, the timing of the registration, the Respondent’s subsequent use of the Domain Name, and the Respondent’s conduct in attempting to sell the Domain Name to the Complainant are persuasive evidence of bad faith within the meaning of the Policy.
The Respondent argues that the issue of his good faith, as well as his counter-assertion that the Complainant itself has acted in bad faith, should be tested in court, where discovery procedures would produce a fuller record and the judge or jury could assess the witnesses’ demeanor. However, the Complainant dismissed its judicial action against Mr. Nissen and brought a UDRP Complaint instead, and this must be decided under the Policy and on the available record. Based on the evidence in this proceeding, the Panel concludes that the Domain Name was more likely than not registered and used in bad faith. This conclusion does not, of course, preclude the Respondent from himself seeking a judicial resolution of the dispute.
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 <lexipro.com> be transferred to the Complainant.
Dated: December 18, 2007