WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Brian Turner
Case No. D2012-1349
1. The Parties
The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America, represented by Faegre Baker Daniels LLP, United States of America.
The Respondent is Brian Turner of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <strattera.org> (the “Domain Name”) is registered with Center of Ukrainian Internet Names (UKRNAMES) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2012. On July 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 9, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Russian. On July 10, 2012, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on July 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2012.
The Center appointed Olga Zalomiy as the sole panelist in this matter on August 20, 2012. 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 US pharmaceutical company that holds rights, since 2001, in the distinctive trademark STRATTERA used in connection with an attention deficit hyperactivity disorder medication. With 2011 worldwide sales of STRATTERA equal to USD 620,1 million, widespread advertising and a wide variety of trademark registrations for STRATTERA around the world, the STRATTERA trademark is well-known. The Complainant also owns the domain name <strattera.com> which directs to a website advertising and providing information about the STRATTERA medication.
The Respondent, seemingly a resident of the United States of America, registered the Domain Name on May 20, 2010. The Domain Name is used to direct to a website offering information about the STRATTERA medication and suggesting the possibility of purchasing “Generic Strattera and Brand Strattera at the low price” from the Respondent.
5. Parties’ Contentions
The Complainant claims that its rights in the STRATTERA mark date back to August 29, 2001. It further claims that it owns eighty four trademark registrations in the STRATTERA mark in eighty three countries. The Complainant further alleges that its worldwide sales of STRATTERA products reached USD 620.1 million in 2011. The Complainant claims that its trademark is well-known. According to the Complainant, its trademark registrations predate the Respondent’s 2010 Domain Name registration, so the Complainant has senior and exclusive rights in the STRATTERA mark.
The Complainant alleges that the Domain Name is confusingly similar to its distinctive STRATTERA mark because the Domain Name incorporates the mark in its entirety. The Complainant claims that the generic top-level domain (“gTLD”) appearing in the Domain Name should be disregarded for the purpose of determining similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant alleges that that the Respondent has not been commonly known by the Domain Name. The Complainant claims that the Respondent is using the Domain Name for commercial gain by operating a website allowing Internet users to contact the Respondent in order to purchase brand and generic STRATTERA products. The Complainant further claims that the Respondent is not a legitimate reseller of the STRATTERA products because it fails to meet the reseller’s test stated in the Oki Data case.1 Finally, the Complainant alleges that it has not given the Respondent permission, authorization or consent to use its STRATTERA mark in the Domain Name.
The Complainant asserts that the Domain Name was registered and is being used in bad faith. The Complainant claims that it is likely that the Respondent knew about the well-known STRATTERA mark at the time of the registration of the confusingly similar Domain Name. The Complainant also claims that the Respondent is using the Domain Name to attract Internet users to the Respondent’s website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The Panel finds English to be an appropriate language for this proceeding based on the Respondent’s apparent ability to understand the English language, the absence of any prejudice to the Respondent or any objection from the Respondent to the use of English as the language of the proceeding.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed to by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. Because the language of the registration agreement in this case is Russian, and because there is no agreement between the parties as to the use of a different language, the language of the proceeding would typically be Russian. However, the Complainant submitted its Complaint in English and requested that English be the language of the proceeding. The Respondent did not object to, or comment on that request.
In exercising its discretion to use a language other than that of the registration agreement, the Panel must act in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.2
The record of this case shows that the Respondent would not be prejudiced if this proceeding is conducted in English. First, according to the Respondent’s registration information provided with Registrar, the Respondent is a national of the United States of America where English is the official language. Second, the content of the Respondent’s website is entirely in English, which shows that the Respondent is conversant and proficient in English. Finally, the Center notified the Respondent about the Complaint and communicated all other case-related matters to the Respondent in both Russian and English languages. The Center advised the Respondent about the Complainant’s request for use of English as the official language of the proceeding and invited the Respondent to challenge the Complainant’s request if the Respondent objects to the use of English. The Respondent submitted no objections. Under these circumstances, forcing the US-based Complainant to incur significant expense in translating the documents into Russian, whereas the Respondent will not be prejudiced by conducting the proceeding in English, would contradict the spirit of fairness and justice to both parties.
Therefore, taking into account the circumstances of this case, the Panel determines that English will be used as the language of the proceeding.
6.2. Analysis of the Complaint
According to 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.” In case of a respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”3 The complainant must establish “each of the three elements required by paragraph 4(a) of the Policy.”4 Thus, to succeed in its claim, the Complainant must prove that: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (3) the Domain Name has been registered and is being used in bad faith.5
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trademark STRATTERA.
The Complainant submitted copies of trademark registration certificates No. 2,727,937 registered on June 17, 2003 in the United States of America; No. 1,942,057 registered on December 3, 2003 in Argentina; No. 777,279 registered on November 3, 1998 in Australia; No. 824,402,340 registered on July 10, 2007 in Brazil; No. TMA651,256 registered on October 24, 2005 in Canada among other countries. The Panel, therefore, finds that the Complainant established that it has rights to the trademark STRATTERA.
Also, the Panel finds that the Complainant has proven that the Domain Name is identical to the STRATTERA trademark in which the Complainant has rights. The Domain Name consists of the Complainant’s trademark STRATTERA and the gTLD suffix “.org.” As such, the Domain Name is identical to the Complainant’s trademark, because the Domain Name incorporates the STRATTERA trademark in its entirety. The addition of a gTLD suffix such as “.org” may be disregarded under the confusing similarity test, as it is a technical requirement of registration.6
Therefore, the Panel finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
To establish the second element required by paragraph 4(a) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.7 “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”8 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.9 If such prima facie case is not rebutted by the Respondent, the Complainant will be deemed to have satisfied paragraph 4(a) (ii) of the Policy.
The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks any rights or legitimate interests in the Domain Name. First, the Respondent did not use the Domain Name in connection with a bona fide offering of goods or services. Second, the Respondent used the Domain Name for commercial gain and to misleadingly divert Internet users to his website. Third, it appears that the Respondent has not been commonly known by the Domain Name.
The evidence submitted by the Complainant shows that the Respondent used the Domain Name in connection with the “www.strattera.org” website which advertises and presumably sells the Complainant’s product and a so-called “Generic Strattera” product. The submitted screenshot of the Respondent’s website reveals no disclaimers concerning the relationship, if any, between the parties that could show any legitimate reseller rights of the Respondent in the STRATTERA products.10
It is likely that the Respondent attempted to confuse the public into believing that his website is associated with the Complainant’s business, and that Respondent attempted to benefit from that consumer confusion. The evidence shows that layout of the Respondent’s website incorporates a picture from the Complainant’s official website and displays a notice that “Stratteratm is a registered trademark of Eli Lilly.” Coupled with the fact that the Respondent’s website contains no information about the Respondent, it is likely that the Respondent tried to make his website look as if it belongs to the Complainant. The Respondent is, however, neither a licensee of the Complainant, nor has he obtained any authorization to use the Complainant’s trademarks or sell the Complainant’s goods. The Panel also notes that the Respondent advertises and presumably sells a so called “Generic Strattera” product.
The Panel finds it unlikely that the Respondent is commonly known by the Domain Name. The Respondent’s name – Brian Turner - has nothing in common with the STRATTERA mark, which is a made-up word. Moreover, because the “www.strattera.org” website contains no information about the Respondent, and because the Respondent’s contact information provided to the Registrar appears to be false, he cannot be “commonly known” by the Domain Name.
Therefore, the Complaint satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires “a positive finding that both the registration and use were in bad faith.”11
The record of this case demonstrates the existence of the Respondent's bad faith pursuant to paragraph 4(b)(iv) of the Policy. Paragraph 4(b) of the Policy provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” Among others, these include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [respondent's] website or location or of a product or service on [respondent’s] website or location.”12
The Panel finds that the Respondent knew about the Complainant’s STRATTERA trademark at the time of the registration of the Domain Name and registered the Domain Name in bad faith. The Respondent’s “www.strattera.org” website unequivocally states that “Stratteratm is a registered trademark of Eli Lilly.” Because the Respondent’s website contains no information about its owner, and attempts to create an impression of the association with the Complainant by displaying the same graphics as the Complainant’s website; and because the Respondent appears to have provided a false address and telephone number at the time he registered the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.
The Panel finds that it is likely that the Respondent is using the Domain Name in bad faith. It is plausible that Internet users may be diverted to the Respondent’s website instead of reaching the Complainant’s legitimate website because the Domain Name is identical to the Complainant’s trademark. Because the Domain Name incorporates the Complainant’s well-known mark in its entirety; and because the “www.strattera.org” website displays the same graphics as the Complainant’s “www.strattera.com” website and provides information about the STRATTERA medication, it is likely that Internet users may be confused into believing that the Respondent is affiliated with, or endorsed by, the Complainant.
Furthermore, it is possible that the Respondent derives commercial gain from the operation of the “www.strattera.org” website. For instance, the top part of the Respondent website’s home page displays the following statement: “this website containing information on subjects from Strattera information. Where to buy Strattera (Atomoxetine) Online.” While the “www.strattera.org” website does not actually offer any specific information on where to buy STRATTERA medication, its content implies that customers may order STATTERA medication from it. Statements like “We accept orders for Strattera delivery 24 hours a day from any country in the world,” “You can buy Strattera online at the low price at our online pharmacy,” “You can buy Brand Strattera and Generic Strattera online at the low price at our online pharmacy,” “Low price and online order without prescription makes our offer beneficial and efficient” seem to invite Internet users to contact the Respondent to purchase STRATTERA medication and a so called “Generic Strattera” product. The bottom of the same page also includes a “Leave a Reply” section which allows Internet users to contact the Respondent to conduct a purchase. Therefore, the circumstances of this case indicate that by using the Domain name, the Respondent has intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s STRATTERA mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Because the Panel finds that the Complainant has proved that the Respondent registered and used the Domain Name in bad faith, the Complainant has proved the third element of paragraph 4(a) of the Policy.
The Complainant, therefore, has proved all three elements of the paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <strattera.org> be transferred to the Complainant.
Dated: August 22, 2012
5 See, Paragraph 4(a) of the UDRP.
7 Paragraph 4(a)(ii) of the Policy.
12 Paragraph 4(b)(ii) and (iv) of the UDRP.