WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Forest Laboratories Inc. v. Abadaba S.A., Domain Admin

Case No. D2008-0413

 

1. The Parties

Complainant is Forest Laboratories Inc., New York, New York, United States of America, represented internally.

Respondent is Abadaba S.A., Domain Admin, Panama city, of Panama.

 

2. The Domain Name and Registrar

The disputed domain name <lexapro-information.com> is registered with Fabulous.com Pty Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2008. On March 19, 2008, the Center transmitted by email to Fabulous.com Pty Ltd a request for registrar verification in connection with the domain name at issue. On March 19, 2008, Fabulous.com Pty Ltd 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 Respondent of the Complaint, and the proceedings commenced on March 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2008.

The Center appointed Felipe Claro as the sole panelist in this matter on April 30, 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

The domain name <lexapro-information.com> was registered on May 31, 2006.

The registrar is Fabulous.com Pty Ltd. from Australia.

Complainant is a well-known pharmaceutical company with headquarters in New York City.

Among other products, Complainant markets and sells pharmaceutical products containing escitalopram oxalate in the United States under the brand name LEXAPRO.

Complainant owns the mark LEXAPRO (Reg. No. 2,684,432) registered on February 4, 2003.

LEXAPRO is Complainant’s flagship product, with prescriptions to over 15 million people in the United States and sales exceeding US$2 billion a year.

Complainant also owns the domain name <lexapro.com>, which was registered on January 22, 2001.

 

5. Parties’ Contentions

A. Complainant

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

Complainant is a well-known pharmaceutical company with headquarters in New York City. Among other products, Complainant markets and sells pharmaceutical products containing escitalopram oxalate in the United States under the brand name LEXAPRO, a mark that is arbitrary, coined, and fanciful. Other than as a means to identify Complainant’s products, the term has no meaning in any language.

Complainant filed a U.S. intent-to-use application under 15 U.S.C. 1051(b) on December 22, 2000 for the mark LEXAPRO for “pharmaceutical preparations, namely antidepressants.” (Exhibit C) LEXAPRO brand escitalopram oxalate products were approved by the U.S. Food and Drug Administration for the treatment of depression on August 14, 2002 and for the treatment of general anxiety disorder on December 18, 2003. Complainant has made uninterrupted and continuous use of the mark LEXAPRO since September 5, 2002 and received a federal trademark registration for the mark LEXAPRO (Reg. No. 2,684,432) on February 4, 2003. (Id.) Upon registration, Complainant’s rights in the LEXAPRO mark became retroactive to December 22, 2000, the date the intent-to-use application was filed. 15 U.S.C. 1057(c). LEXAPRO is Complainant’s flagship product, with prescriptions to over 15 million people in the United States and sales exceeding US$2 billion a year. Complainant’s rights to the LEXAPRO mark are longstanding and strong (Complainant also owns the domain name <lexapro.com>, which was registered on January 22, 2001).

Respondent’s domain name <lexapro-information.com> is identical and/or confusingly similar to Complainant’s LEXAPRO mark because it incorporates the mark in its entirety. Forest Laboratories, Inc. v. Awad Kajouk, WIPO Case No. D2007-1650 (Exhibit D). Adding the descriptive word “information” is legally insignificant. Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661 (Exhibit E).

2. The Respondent has no rights or legitimate interests in respect of the domain name.

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

Multiple facts demonstrate that Respondent has no rights or legitimate interests in the <lexapro-information.com> domain name. First, Complainant has not agreed or consented to Respondent’s use or registration of a domain name comprising its unique, well-known, and federally-registered LEXAPRO mark. Forest Laboratories, Inc. v. Kajouk, WIPO Case No. D2007-1650 (Exhibit D).

Second, Respondent is not commonly known by the domain name at issue. (See id.)

Third, Respondent’s use of the domain name at issue cannot constitute a bona fide offering of goods and services. The disputed domain name resolves to a website that displays keyword advertisements and links to other domains that are related to LEXAPRO, but that are not affiliated with or sponsored by the Complainant (Exhibit F). For example, clicking on the “Lexapro” link on “www.lexapro-information.com” directs consumers to a site that contains a link to “www.canadageneric.com”, which purports to sell generic versions of LEXAPRO (Exhibits F-H).

Further, some of the links on <lexapro-information.com> resolve to web pages that contain information on competitive products. For example, clicking on the “Lexapro” link on <lexapro-information.com> (Exhibit F) directs consumers to a web page with a link to “Buy Xanax – Low Prices” (Exhibit G). Clicking on that link directs consumers to “www.rxpop.com”, a website that purports to sell XANAX, an anti-anxiety drug that competes with LEXAPRO (Exhibit I). Most likely, Respondent is paid whenever an internet user clicks on one of these links. Therefore, Respondent’s use of its confusingly similar domain name to (1) attract Internet users with the hope of obtaining advertising revenue and (2) advertise and sell competing pharmaceutical products cannot constitute a bona fide offering of goods and services. Pfizer Inc. v. Kent Gormant, WIPO Case No. D2004-0591 (Exhibit J).

3. The domain names were registered and are being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

Without a doubt, Complainant’s submits, Respondent registered and is using the domain name in bad faith. As noted above, Complainant filed an intent-to-use trademark application on December 22, 2000, began using the LEXAPRO mark in commerce at least as early as September 22, 2002, and received a U.S. registration on February 4, 2003 (Exhibit C). Respondent registered the domain name at issue on May 31, 2006 (Exhibit A). It is inconceivable that Respondent was not aware of Complainant’s coined and fanciful mark when it registered its domain name, which incorporates Complainant’s mark in its entirety. Unquestionably, Respondent registered the domain name at issue with the intent to trade on the well-known LEXAPRO mark, and to attract internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website. Glaxo Group Ltd. v. Michale Kelly, WIPO Case No. D2004-0262 (Exhibit K); F. Hoffman-La Roche AG v. Gustavo Guardo, WIPO Case No. D2007-1550 (Exhibit L) (“registration of a domain name that is confusingly similar or identical to a famous trademark by an entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use”).

Moreover, Respondent has displayed a pattern of infringing the rights of others. In particular, Respondent has been involved in three other WIPO UDRP disputes, all of which found bad faith use and registration. Banco do Brasil S.A. v. Abadaba S.A. Domain Admin, WIPO Case No. D2007-1657 (Exhibit M); Eldorado Stone Operations, LLC v. Abadaba S.A., Domain Admin, WIPO Case No. D2007-1580 (Exhibit N); Sanofi-Aventis v. Abadaba S.A., WIPO Case No. D2006-1611 (Exhibit O).

In conclusion, there can be no question that Respondent registered and has been using the domain name <lexapro-information.com> in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

In view of the lack of a response filed by Respondent in line with paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of Complainants’ undisputed representations. In that regard and apart from judging this proceeding through mere default of Respondent, the Panel makes the following specific findings.

A. Identical or Confusingly Similar

Complainant is a well-known pharmaceutical company with headquarters in New York City.

Complainant markets and sells pharmaceutical products containing escitalopram oxalate in the United States under the brand name LEXAPRO.

Complainant filed a U.S. intent-to-use application on December 22, 2000 for the mark LEXAPRO for “pharmaceutical preparations, namely antidepressants.”

LEXAPRO brand escitalopram oxalate products were approved by the U.S. Food and Drug Administration for the treatment of depression on August 14, 2002 and for the treatment of general anxiety disorder on December 18, 2003.

Complainant has made uninterrupted and continuous use of the mark LEXAPRO since September 5, 2002 and received a federal trademark registration for the mark LEXAPRO (Reg. No. 2,684,432) on February 4, 2003.

Upon registration, Complainant’s rights in the LEXAPRO mark became retroactive to December 22, 2000, the date the intent-to-use application was filed.

LEXAPRO is Complainant’s flagship product, with prescriptions to over 15 million people in the United States and sales exceeding US$2 billion a year.

Complainant’s rights to the LEXAPRO mark are longstanding and strong. Complainant also owns the domain name <lexapro.com>, which was registered on January 22, 2001.

Respondent’s domain name <lexapro-information.com> is identical and/or confusingly similar to Complainant’s LEXAPRO mark because it incorporates the mark in its entirety. See e.g.: Forest Laboratories, Inc. v. Awad Kajouk, WIPO Case No. D2007-1650. Adding the descriptive word “information” is insignificant for the purposes of para. 4(a)(i) of the Policy. Sanofi-Aventis v.Direct Response Marketing aka DRM, WIPO Case No. D2005-0661.

B. Rights or Legitimate Interests

Complainant has not agreed or consented to Respondent’s use or registration of a domain name comprising its registered LEXAPRO mark. See e.g.: Forest Laboratories, Inc. v. Awad Kajouk, WIPO Case No. D2007-1650.

Respondent is not commonly known by the domain name at issue.

Respondent’s use of the domain name at issue does not constitute a bona fide offering of goods and services.

The disputed domain name resolves to a website that displays keyword advertisements and links to other domains that are related to LEXAPRO, but that are not affiliated with or sponsored by Complainant.

Some of the links on <lexapro-information.com> resolve to web pages that contain information on competitive products.

Respondent is paid whenever an internet user clicks on one of these links. Therefore, Respondent’s use of its confusingly similar domain name to (1) attract Internet users with the hope of obtaining advertising revenue and (2) advertise and sell competing pharmaceutical products does not constitute a bona fide offering of goods and services. Pfizer Inc. v. Kent Gormant, WIPO Case No. D2004-0591 (Exhibit J).

C. Registered and Used in Bad Faith

Respondent registered the domain name at issue on May 31, 2006.

It is unlikely that Respondent was not aware of Complainant’s mark when it registered its domain name, which incorporates Complainant’s mark in its entirety.

Respondent registered the domain name at issue with the intent to trade on the LEXAPRO mark, and to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website. See e.g.: Glaxo Group Ltd. v. Michale Kelly, WIPO Case No. D2004-0262; F. Hoffman-La Roche AG v. Gustavo Guardo, WIPO Case No. D2007-1550 (“registration of a domain name that is confusingly similar or identical to a famous trademark by an entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use”).

Respondent has displayed a pattern of infringing the rights of others. In particular, Respondent has been involved in three other WIPO UDRP disputes, all of which found bad faith use and registration. See e.g.: Banco do Brasil S.A. v. Abadaba S.A. Domain Admin, WIPO Case No. D2007-1657; Eldorado Stone Operations, LLC v. Abadaba S.A., Domain Admin, WIPO Case No. D2007-1580; Sanofi-Aventis v. Abadaba S.A., WIPO Case No. D2006-1611.

Respondent registered and has been using the domain name

<lexapro-information.com> in bad faith.

 

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 <lexapro-information.com> be transferred to the Complainant.


Felipe Claro
Sole Panelist

Dated: May 9, 2008