WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. Natural Products Solutions LLC
Case No. D2011-1032
Forest Laboratories, Inc. v. Clark Grace
Case No. D2011-1006
1. The Parties
The Complainant is Forest Laboratories, Inc. of New York, New York, United States of America, represented internally.
The Respondent in Case No. D2011-1032 is Natural Products Solutions LLC, in Case No. 2011-1006 Clark Grace. Both Respondents reside at the same address in St. Petersburg, Florida, United States of America, and both are represented by The Internet-Lawyers.com, P.C., United States of America.
2. The Domain Names and Registrar
The disputed domain names in D2011-1032 are <flexapro.info> and <flexapro.net>; in Case No. D2011-1006 it is <flexapro.com>. All are registered with GoDaddy.com, Inc.
3. Procedural History
A. The Pleadings
The Complaint in Case No. D2011-1032 was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2011. On June 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 19, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names <flexapro.info>and <flexapro.net>.
The Complaint in Case No. D2011-1006 was filed with the Center on June 14, 2011. On June 15, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 16, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name <flexapro.com>.
The Center verified that each Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaints, and the proceedings in each case commenced on June 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for a Response in each case was July 14, 2011. Responses were filed with the Center on July 15, 2011 for both domain name disputes1.
B. The Panel
The Center appointed Richard G. Lyon as the sole panelist in each proceeding on July 21, 2011 in Case No. D2011-1006 and on July 22, 2011 in Case No. D2011-1032. As to each proceeding the Panel finds that it was properly constituted and has jurisdiction to decide the administrative proceeding. In each case the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Except for two particulars, these proceedings are identical in all substantive respects.
The named Respondents in the two cases differ, as the Complainant has properly named as the Respondent in each case the registrant of the disputed domain names as shown on the registrar’s WhoIs database. From the record in the two cases, however, it appears that “Clark Grace”, the Respondent in Case No. D2011-1006, is an owner or principal of “Natural Products Solutions LLC”, the Respondent in Case No. D2011-1032. Indeed the Complainant alleges this; Complaint in Case No. D2011-1006, paragraph 12.B. Thus the Panel finds that the real party in interest is the same in both proceedings. 2
The disputed domain name in Case No. D2011-1006, <flexapro.com>, resolves to a page illustrating the Respondent’s pain relief products, while each of the two disputed domain names in Case No. D2011-1032 resolves to a registrar-generated pay-per-click page with hyperlinks to companies and products, none of which is related to either party. These links capitalize upon the word or shorthand expression “flex” for example, flexible financing, fitness (muscle flexing), and a computer product called “flex circuits.” As explained in the Panel’s discussion of the issues, this is a difference of no consequence in the Panel’s analysis.
Given the fact that the Panel has found the Respondent in both cases to be the same entity and the similarity of the operative facts in both matters, the Panel has determined on its own initiative to consolidate these cases as a matter of efficiency. See Rules, paragraph 10(e).3
4. Factual Background
The Complainant is an international pharmaceutical company. Among its products is an antidepressant marketed as a prescription drug under the name LEXAPRO. In 2002 this product was approved by the United States Food and Drug Administration (FDA) for treatment of depression in adults in the United States. The Complainant filed an intent-to-use application for LEXAPRO with the United States in 2000; this trademark issued as a registered trademark on the primary register of the United States Patent and Trademark Office (“USPTO”) in 2003. Last year’s sales of LEXAPRO exceeded USD 2 billion. The Complainant has since 2001 maintained an informational website about LEXAPRO at <lexapro.com>.
The Respondent is in the process of developing and marketing a product that “enhances flexibility of joints and the reduction of the pain associated with the flexing of muscles and joints.” This product will be sold under the name FLEXAPRO. On April 26, 2011, the Respondent filed an application with the USPTO for FLEXAPRO in “International Class 005: Herbal topical creams, gels, salves, sprays, powder, balms, liniment and ointments for the relief of aches and pain.” The Respondent registered <flexapro.com> in 2006 and the other two disputed domain names in 2010. As noted the Respondent’s website at <flexapro.com> identifies and provides information about the FLEXAPRO product and the other two disputed domain names resolve to registrar-generated pay-per-click page with hyperlinks to companies and products, none of them related to either party, that capitalize upon the word or shorthand expression “flex.”
The Complainant sent cease-and-desist letters to the Respondent on May 13 and May 18, 2011, receiving no substantive reply.
5. Parties’ Contentions
The Complainant contends as follows:
1. The Complainant has incontestable rights to LEXAPRO by virtue of its USPTO-registered trademark. The operative portion of each disputed domain name differs from this mark only by addition of a single letter at the beginning, which is “legally insignificant” under the Policy.
2. The Respondent lacks rights or a legitimate interest in the disputed domain names. The Complainant has never licensed the Respondent to use its mark. The Respondent (under either his personal or company name) is not commonly known by “Lexapro”. Because the Respondent’s use of FLEXAPRO “infringes” the Complainant’s registered trademark, its use for the Respondent’s pain relief products cannot be bona fide or confer any right or legitimate interest in the disputed domain names. The Respondent’s application for a trademark in FLEXAPRO does not ipso facto confer any right or legitimate interest. The Complainant intends to oppose this application.
3. The Respondent’s use of two of the disputed domain names for profit-generating pay-per-click sites is clear bad faith under Policy precedent. Use of the <flexapro.com> domain name for the FLEXAPRO products is bad faith because it constitutes a “blatant trademark infringement.” As to registration in bad faith the Complainant states:
“Respondent registered the domain name at issue on June 5, 2006, at a time when it clearly had no reason to do so but for its knowledge of Complainant’s well known LEXAPRO® product. 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 and is an obvious attempt to attract internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s web site.”
The Respondent contends as follows:
1. As a preliminary matter the Respondent asserts that this is not a clear case of cybersquatting and thus not appropriate for a UDRP proceeding.
2. While the Respondent does not contest the Complainant’s trademark rights in LEXAPRO, he argues that the disputed domain names are not confusingly similar to the Complainant’s mark: “flexapro” is a term that consists of the term “flex” combined with a syllable that connotes a professional character,” and suggests the Respondent’s products. “Lex” is the Latin word for law, so LEXAPRO has an entirely different connotation. An Internet user is not likely to confuse the two.
3. The Respondent has demonstrated rights in the disputed domain names. Annexed to the Response are copies of email correspondence, invoices, marketing memoranda, drafts of logos, and similar material related to development and marketing of the FLEXAPRO product. The activities that these data evidence, and the Respondent’s filing for a trademark application in the USPTO, are “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,” all of which predate any notice of this controversy, and thus bring the Respondent within the safe harbor of paragraph 4(c)(i) of the Policy.
4. Because the Respondent has demonstrated a right or legitimate interest in the disputed domain names, the Complainant has not shown (and cannot show) either registration or use of the disputed domain names in bad faith. Further, the Complainant’s claimed bases for registration in bad faith (of which the language quoted above is typical) are nothing more than conclusionary allegations, unsupported by any evidence.
6. Discussion and Findings
A. Identical or Confusingly Similar.
“Determination of confusing similarity under paragraph 4(a)(i) of the Policy is a comparison of the letters, words, sound, and other sensate aspects of the disputed domain name to those of Complainant's marks,” MasterCard International Incorporated, MasterCard Europe SPRL v. IT Manager/ Crosspath, WIPO Case No. D2009-1714. Ordinarily a difference of a single letter does not obviate confusion, and certain single-letter variations, known as typosquatting, are virtually per se cybersquatting.
But this is not, as the Complainant would have it, a clear-cut case of typosquatting.4 Typosquatting involves the intentional rearrangement or change of one or a few letters in a mark to make a nonsensical but close imitation, deliberately intended to catch a tired or careless typist’s search for the mark owner’s website. Usually the added or substituted letter or addition involves a character immediately adjacent to the replaced one, see, e.g., Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517; always the variant makes no sense standing on its own. That is not so in these proceedings. Here, the Respondent chose the domain names because they are (exactly) the name of his own product.
The Panel also finds some force to the Respondent’s contention that the eye- or ear-catching feature of the disputed domain names is not “lexapro” but the initial syllable “flex”, selected by the Respondent to emphasize athletes, one of his product’s target markets. The registrar apparently thought so, as “flex”, and not the Complainant, the Complainant’s products, any pharmaceutical products, the Respondent’s products, or any pain relief products, is the basis for its targeted hyperlinks. A single-letter addition or substitution does not automatically mean confusing similarity; compare the disputed domain name <ispinthebottle.com> with the complainant’s mark, ESPINTHEBOTTLE, in eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, WIPO Case No. D2004-0552. One can easily imagine circumstances where the addition of a single letter would not create confusion.5
Because the Complaints fail under the other two Policy heads the Panel need not make a determination on this issue. The Panel chooses not to do so, one way or the other, as this question will be central to the Complainant’s opposition to the Respondent’s trademark application and any infringement litigation that may follow this decision.
B. Rights or Legitimate Interests.
The Respondent’s evidence of pre-dispute demonstrable preparations to use the disputed domain names to market his pain relief products demonstrates considerable work and expenditure, over a substantial period of time, for marketing this product. The Respondent’s showing far exceeds the relatively low threshold required to come within paragraph 4(c)(i) of the Policy. See e.g. Télévision Française 1 (TF1) v. Khaled Bitat, WIPO Case No. D2007-0137 ("Even perfunctory preparations have been held to suffice for this purpose”). Unless the Panel finds that the Respondent’s entire use of the word “flexapro” is male fide, the Respondent has made out a defense.
The Complainant asks the Panel so to find because, in its view, the Respondent’s choice of product name is an intentional infringement of the Complainant’s “famous” LEXAPRO mark. For two fundamental reasons the Panel declines to do so.
First, infringement,6 or even a free ride on the goodwill attached to LEXAPRO, is by no means the only plausible reason why the Respondent selected the disputed domain names. As explained in Section 6.A above, the Panel thinks it much more likely that the Respondent opted to make use of his product’s name. LEXAPRO (a prescription antidepressant) and FLEXAPRO (a pain reliving ointment) are not competing products; a consumer seeking LEXAPRO is not likely to buy FLEXAPRO instead or vice versa.7 In the Panel’s view confusing similarity between the products is not obvious. Nor is confusing similarity of the brands themselves, again as explained in Section 6.A. This is not a clear case of cybersquatting.
It is entirely possible that the Respondent chose his brand name principally to ride free upon the renown of the Complainant’s long-established and well-known brand. But as this Panel stated in The Institute of Electrical and Electronics Engineers, Incorporated v. IARAS / Administration IARAS, WIPO Case No. DAM2010-0001 – a case analytically identical to this one on this specific issue:
“But this is neither obvious nor the only reasonable conclusion from the record before the Panel. Without lengthy investigation and the development of a full factual record the Panel cannot with any confidence accept it to be true or indeed even more likely than [a legitimate alternative]. “
This fact leads the Panel to the second and more important reason for denying the Complaint. The Complainant’s real bone of contention with the Respondent is not about entitlement to three domain names; rather it is the asserted trademark infringement based upon the two unrelated products’ similar brand names. Again quoting from the IARAS case, supra (citation omitted):
“Trademark infringement is a far more substantial and complicated cause of action than cybersquatting, with stakes far greater than entitlement to a single domain name. The national courts exist to resolve such disputes; a Policy panel lacks jurisdiction and competence to do so.”
So it is here: the USPTO or the courts are the proper place to resolve this dispute. Under the Policy the Complainant has failed to establish that the Respondent lacks rights or a legitimate interest in the disputed domain names.
C. Registered and Used in Bad Faith.
While the Panel need not decide this Policy element the Panel considers it appropriate to note that, as the Respondent asserts, there is no evidence at all that the Respondent selected the disputed domain names with knowledge of the Complainant’s mark or that he intentionally targeted the Complainant or its LEXAPRO product. Even the pay-per-click links bear no relation to the Complainant or its products, as the Complainant acknowledges. What we have in the record are unsupported allegations of conscious mimicry and the Respondent’s evidence (all pre-Complaint) of active and substantial preparations to launch a genuine non-competing product.
Of course none of this Panel’s observations are binding upon either party or the court should infringement or other litigation between the parties ensue, or upon the USPTO should the Complainant oppose the Respondent’s pending trademark application. And the legal standards in either such forum will differ as well.
For all the foregoing reasons, both Complaints are denied.
Richard G. Lyon
Dated: July 29, 2011
1 Strictly speaking, the Responses in both cases were filed one day late. However the transmittal email with that Response was sent on the due date in the time zone in which the Respondent’s representative maintains his office, but received and acknowledged by the Center the following day in Geneva. Following his customary practice (e.g., Credit Europe Bank N.V. v. Peter Yu, WIPO Case No. D2010-0737), the Panel in his discretion will deem the Responses timely filed and will consider them in deciding the cases.
2 For simplicity and to distinguish the parties, the Panel will refer to the Respondent in the singular and use the possessive pronoun his to refer to both the Respondents.
3 Rule 10(e) provides: “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” This Panel determines that it has the authority to order consolidation on his own initiative.
4 All the Complainant’s citations in support of its argument on this issue are to typosquatting cases – cases in which the domain name at issue met the definition of typosquatting set forth in the next sentence of text above.
5 Would <pride.com> or <bride.net> be confusingly similar to RIDE, a popular brand of snowboard? The English language has many words that when a single letter is added at the beginning yield words of an entirely different meaning: heat and cheat, race and grace, hew and phew, to name but a few. The point is that a difference of one letter does not automatically result in confusion.
6 Trademark infringement, a strict liability tort, does not always make out cybersquatting under the Policy, which requires a showing of bad faith that entails some element of intent. For the avoidance of doubt, given the likelihood of further proceedings between the parties, the Panel emphasizes that he expresses no opinion, either way, on whether FLEXAPRO for pain relief infringes on the LEXAPRO mark for antidepressants.
7 Indeed the Complainant does not allege that they are, only that both are often sold in pharmacies and apothecaries.