WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories Inc. v. A. Delsey
Case No. D2008-0285
1. The Parties
The Complainant is Forest Laboratories Inc., of New York, United States of America, represented by its internal counsel.
The Respondent is A. Delsey, of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <lexapro-drugstore.biz> (“the Disputed Domain Name”) is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2008. On February 28, 2008, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Disputed Domain Name. On February 28, 2008, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. By email of March 4, 2008, the Center asked Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com to confirm whether “A. Delsey” or “Pharmacy Network” - which both appear in the Whois information relating to the Disputed Domain Name - shall be considered as the registrant of the Disputed Domain Name. Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com answered by email of March 5, 2008 that “A. Delsey is the registrant’s name and Pharmacy Network is Registrant’s Organization. You can term them as one entity”1. 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 March 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2008.
The Center appointed Jacques de Werra as the sole panelist in this matter on April 7, 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.
Based on the available record, the Disputed Domain Name was set to expire on April 11, 2008. As a result, by email dated April 2, 2008, the Center drew the attention of Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com on the provisions of paragraph 220.127.116.11 of the Expired Domain Deletion Policy of the Internet Corporation for Assigned Names and Numbers (“ICANN”), under which either party is entitled to take the necessary steps to renew a domain name registration which expires during the course of a proceeding under the Policy. In this email, the Center further requested Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com to confirm that the Disputed Domain Name shall be placed in registrar lock status and that the Disputed Domain Name shall remain in such status after the lapse of the expiry date until the instant UDRP proceedings are concluded.
Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com replied by two emails. In a first email of April 3, 2008, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com confirmed that the Disputed Domain Name shall remain under registrar lock until May 19, 2008, “unless it is not renewed explicitly” and that it would then pass into redemption period and will be deleted from the registrar database and the lock will be automatically removed.
In another email of April 4, 2008, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com confirmed its intent to cooperate for ensuring the effective functioning of the ICANN rules and asked the parties to contact them for the renewal of the Disputed Domain Name.
By another email dated April 3, 2007, the Center drew the parties’ attention to the expiration date of the Disputed Domain Name (on April 11, 2008). The Center advised the parties to contact Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com in order to take the required steps in order that the registration of the Disputed Domain Name shall be maintained for the duration of the proceedings.
The Center requested the parties to confirm to the Center as soon as possible once the necessary arrangements had been made with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com in order to ensure that the Disputed Domain Name remains active.
The Center sent a further email to the Complainant on April 14, 2008 asking whether appropriate action had been taken regarding the expiration of the Disputed Domain Name and suggesting to renew the registration of the Disputed Domain Name. No answer was given to the Center by the Complainant.
4. Factual Background
The Complainant is a pharmaceutical company headquartered in New York City. It sells pharmaceutical products, including antidepressant preparations containing escitalopram oxalate that are marketed in the United States of America under the brand name and mark 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 United States of America trademark (Registration Number 2,684,432) was issued to the Complainant on February 4, 2003 (the “Trademark”).
LEXAPRO is Complainant’s flagship product with prescriptions to over 15 million patients in the United States of America and annual sales exceeding USD2 billion.
The Complainant also operates a website at “www.lexapro.com” which was registered on January 22, 2001.
The Disputed Domain Name was registered on April 12, 2006 and its registration expired on April 11, 2008. However, based on the exchange of emails between the Center and the registrar of the Disputed Domain Name (see procedural history under 4, above), the Disputed Domain Name has been put on registrar lock until May 19, 2008.2
Based on the documents filed by the Complainant, consisting of printouts of pages of the website to which the Disputed Domain Name resolved, it appears that the Disputed Domain Name was used by the Respondent to point to a website entitled “Lexapro Drugstore: Lexapro Pharmacy: Anti-Depressant” purporting to offer for sale Complainant’s LEXPRO brand medication to the general public at discount prices. When using the “order” link which was made on the webpage, the Internet user was transferred to another domain name at “www.healthsol.net”, which is a website affiliated with a company called “Health Solutions Network, LLC” offering LEXAPRO products which are not authorized by the Complainant or by the United States Food and Drug Administration and which compete with those offered by the Complainant.
5. Parties’ Contentions
The Complainant first claims that the Disputed Domain Name incorporates the Trademark in its entirety and that the addition of the descriptive term “drugstore” is legally insignificant.
The Complainant then contends that the Respondent has not been authorized by the Complainant to use the Trademark, that it is not known by the Disputed Domain Name and that the use made by the Respondent of the Disputed Domain Name for selling LEXAPRO products does not constitute a bona fide offering of goods and services.
The Complainant finally claims that the Respondent was fully aware of the Trademark when it registered the Disputed Domain Name and that it has registered and is using the Disputed Domain Name in a bad-faith attempt to attract Internet users to its website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the distinctive LEXAPRO name which results from the registration of the Trademark. The Disputed Domain Name incorporates the Trademark in its entirety to which the descriptive word “drugstore” has been added. As decided in a similar case involving the Complainant, the addition of this descriptive word does not avoid confusion but rather increases the risk of confusion. See Forest Laboratories, Inc. v. Awad Kajouk, WIPO Case No. D2007-1650 (relating to the domain name <pharmacy-online-lexapro.com>).
The Panel, therefore, finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent ever had any legitimate right or interest in the Disputed Domain Name.
The Complainant states without contradiction that it has never authorized the Respondent to use the Trademark. There is no indication that the Respondent was known by the Disputed Domain Name or associated with a business entity known by that name. Its use of the Disputed Domain Name was clearly commercial and not for a legitimate noncommercial purpose.
The Complainant’s Trademark is distinctive, and it is incorporated in its entirety in the Disputed Domain Name. It has further been established by the Complainant that the Respondent used the Disputed Domain Name incorporating the Complainant’s Trademark purportedly to sell the Complainant’s products (by redirecting to another commercial website).
These facts indicate that the Respondent used the Disputed Domain Name to mislead Internet users for commercial gain, which cannot be deemed a bona fide offering of goods or services. The Respondent has not come forward with any another explanation for its conduct, and the Panel draws the adverse inference from its silence that it has no rights or legitimate interests in the Disputed Domain Name.
On this basis, the Panels finds that the Complainant has made a prima facie showing that the Respondent has no right or legitimate interest in the Disputed Domain Name and that the Respondent has not shown any legitimate interest in the Disputed Domain Name. The Complainant has consequently satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent was well aware of the Complainant’s LEXAPRO product and of the Trademark when it registered the Disputed Domain Name. On the evidence produced, the word “Lexapro” has no meaning except as a reference to the Complainant’s LEXAPRO pharmaceutical product and to the Trademark. Anyone coming across the Disputed Domain Name would reasonably assume that it would resolve to a website owned or operated by the Complainant (or by an affiliate or an authorized representative of the Complainant).
The purported sale of the Complainant’s products on the webpage made available at the Disputed Domain Name confirms that the Respondent has used that Trademark to attract visitors to the Disputed Domain Name for commercial gain.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
In this case, it is clear that the Respondent registered and has been using the Disputed Domain Name with the intention of attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trademark (as to the source, sponsorship, affiliation, or endorsement of the website connected to the Disputed Domain Name).
In addition, the Complainant has established two additional factors supporting the conclusion that the Respondent registered and used the Domain Name in bad faith. First, the Respondent does not have a license under a United States patent (of which the Complainant is an exclusive licensee) to market escitalopram oxalate (which is contained in the LEXAPRO product) in the United States of America. Thus, the offer for sale of this substance by the Respondent constitutes patent infringement. Secondly, the Respondent has not been authorized by the United States of America Food and Drug Administration to sell the pharmaceutical products on the website to which the Disputed Domain Name resolved which constitutes a violation of United States of America drug safety regulations, and also creates the risk that unsafe pharmaceutical products are sold to the public. These factors have been held as evidence of bad faith by previous panels. See Forest Laboratories, Inc. v. Awad Kajouk, WIPO Case No. D2007-1650 (referring to Lilly ICOS LLC v. Cialis Pillz, WIPO Case No. D2005-0063).
For all these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
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-drugstore.biz> be transferred to the Complainant.
Jacques de Werra
Dated: April 21, 2008
1 In the view of the Panel, there does not appear to be doubt as to the identity of the registrant of the Disputed Domain Name based on the record of the file, which refer to “A. Delsey” as registrant, and to “Pharmacy Network”, as “registrant’s organization” so that “A. Delsey” shall be held as the respondent in these proceedings.
2 The Panel thus admits that there is a validly registered domain name in dispute about which a decision can be made in the course of these proceedings. See Sanofi-Aventis v. Abadada S.A., WIPO Case No. D2006-1611 (stating a contrario that if the domain name which is the object of the UDRP proceedings has been deleted by the registrar upon expiration of the registration period of the domain name at issue, the complaint should be dismissed because of the lack of registered domain name).