WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. Jeff Brown
Case No. D2008-0412
1. The Parties
The Complainant is Forest Laboratories, Inc., New York, New York, United States of America, internally represented.
The Respondent is Jeff Brown, Playa Del Rey, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lexaproalternative.com> is registered with GoDaddy.com, Inc.
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 GoDaddy.com, Inc. a request for registrar verification in connection with the domain name(s) at issue. On March 19, 2008, 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. In response to a complaint deficiency notice, Complainant filed an Amendment to Complaint on March 26, 2008. The Center verified that the Complaint, together with the Amendment, 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 April 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2008.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on April 29, 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
Complainant is a well-known pharmaceutical company which markets a popular drug under the mark LEXAPRO. Complainant holds a U. S. Trademark Registration for the mark issued on February 4, 2003. Respondent registered the <lexaproalternative.com> domain name on July 16, 2004. The disputed domain name resolves to a website that displays keyword advertisements and links to domains that feature competing products.
5. Parties’ Contentions
1. Respondent’s <lexaproalternative.com> domain name is confusingly similar to Complainant’s LEXAPRO mark.
2. Respondent does not have any rights or legitimate interests in the <lexaproalternative.com> domain name.
3. Respondent registered and used the <lexaproalternative.com> domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) he domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the LEXAPRO mark for purposes of Policy 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum November 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”); see also Smart Design LLC v. Hughes, WIPO Case No. D2000-0993 (October 18, 2000) (holding that ICANN Policy 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place).
Respondent’s <lexaproalternative.com> domain name is confusingly similar to Complainant’s LEXAPRO mark. The <lexaproalternative.com> domain name differs from Complainant’s mark in two ways: (1) the generic term “alternative” has been added to the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that these changes do not minimize or eliminate the likelihood of confusion, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (March 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Complainant contends that Respondent lacks all rights and legitimate interests in the <lexaproalternative.com> domain name. Under Policy 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum, October 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant asserts that Respondent has never been authorized to use the LEXAPRO mark, and that Respondent is not and has never been commonly known by the disputed domain name. Further, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the domain name <lexaproalternative.com> pursuant to Policy 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum January 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent is using the <lexaproalternative.com> domain name to advertise links to competing third-party websites. The Panel presumes that Respondent is earning click-through fees from this practice. Therefore, the Panel finds that such use is not a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum September 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds that Policy 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Respondent is using the <lexaproalternative.com> domain name to advertise competing websites, receiving profit by redirecting Internet users to these competing websites. Respondent’s use of the disputed domain name is capable of creating confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name. The panel in G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum November 21, 2002) found that the respondent registered and used the domain name in bad faith pursuant to Policy 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website. The Panel here also finds that the use of the disputed domain name to attract Internet users to its website is evidence of registration and use in bad faith under Policy 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum August 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Previous panels have found evidence of registration and use in bad faith under Policy 4(b)(iii) when competing products or services are advertised on the website that resolves from the disputed domain name. Therefore, the Panel finds Respondent’s use of the disputed domain name to display links to competing websites further demonstrates registration and use in bad faith under Policy 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum November 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy 4(b)(iii) [and] (iv)”).
The Panel finds that Policy 4(a)(iii) has been satisfied.
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 <lexaproalternative.com> be transferred to the Complainant.
Sandra J. Franklin
Dated: May 7, 2008