WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. Fra Zero Tech, Alexey Gavrilo
Case No. D2008-0716
1. The Parties
The Complainant is Forest Laboratories, Inc., New York, New York, United States of America, represented by Eric M. Agovino, Esq., New York, United States of America.
The Respondent is Fra Zero Tech, Alexey Gavrilo, Saratov, Russian Federation.
2. The Domain Name and Registrar
The Disputed Domain Name <buylexapro.com> is registered with Direct Information PVT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2008. On May 8, 2008, the Center transmitted by email to Direct Information PVT Ltd. a request for registrar verification in connection with the domain name at issue. On May 9, 2008, Direct Information PVT Ltd. transmitted by email to the Center its verification stating the registrant was the Respondent. On May 14, 2008, 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 Complaint, and the proceedings commenced on May 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified The Respondent’s default on June 9, 2008.
The Center appointed Alistair Payne in this matter on June 25, 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 Complainant is Forest Laboratories Inc. The Complainant is a well known pharmaceutical company whose stock is publicly traded on the New York Stock exchange. The Complainant sells pharmaceutical products, including antidepressant preparations containing escitalopram oxalate that are marketed in the United States of America (“United States”) under the brand name LEXAPRO.
On December 22, 2000, the Complainant filed an intent-to-use trademark application for the mark LEXAPRO for pharmaceutical preparations, namely antidepressants. On February 4, 2003, the Complainant received a federal trademark registration for the mark LEXAPRO. Upon registration, the Complainant’s rights to the mark became retroactive to December 22, 2000, the date the intent-to-use application was filed.
The Complainant asserts that LEXAPRO is the Complainant’s flagship product, with prescriptions to over 15 million people in the United States and annual sales exceeding US $2 billion a year.
According to the Registrar, the Disputed Domain Name was registered on December 5, 2007.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
A. The Complainant
The Complainant states that the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered LEXAPRO trademark. The Complainant contends that other than as a means to identify the Complainant’s products, the term has no other meaning in any language. Furthermore the Complainant’s states that the addition of the descriptive word “buy” is legally insignificant.
The Complainant argues that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant states that it has not agreed or consented to the Respondent’s use or registration of the Disputed Domain Name. In addition the Complainant argues that the Respondent is not commonly known by the domain name at issue. Furthermore, the Complainant asserts that although the Disputed Domain Name resolves to a website on which the Complainant’s LEXAPRO brand medications are offered for sale to the general public at discount prices, the sale is not authorised. Therefore the Complainant further asserts that the Respondent’s use of the Domain Name cannot constitute a bona fide offering of goods and services as it results in the promotion and sale of competing products.
The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. In particular, the Complainant notes that it filed an intent-to-use trademark application on December 22, 2000 and began using the LEXAPRO mark from as early as September 22, 2003. The Respondent registered the Disputed Domain Name on December 5, 2007. The Complainant argues that it is not conceivable that the Respondent was not aware of such a mark when they registered the Disputed Domain Name. Furthermore, they argue that the Respondent registered the Disputed Domain Name with the intent to trade on the well-known LEXAPRO mark with an intent to make commercial gain.
In addition, the Complainant asserts that escitalopram oxalate, the active ingredient of LEXAPRO, is protected by United States patent laws. The Complainant is the sole licensee of this patent (patent re 34,712) and therefore the Respondent’s offer to sell escitalopram oxalate in the United States is a patent infringement and subsequently demonstrates bad faith. As further evidence of bad faith, the Respondent does not have authorization from the U.S. Food and Drug Administration to sell its products and the Respondent’s sale or importation into the United States of unapproved drugs violates the Federal Food, Drug and Cosmetic Act.
Finally, the Complainant states that a cease and desist letter was sent to the Respondent on April 15, 2008 to which the Respondent did not respond, further evidencing their bad faith.
B. The Respondents
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. UDRP Elements
The Respondent has not filed a Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent.
Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainant, if it is to succeed in this administrative Proceeding, to prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy. The Panel also notes that pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a Response from the Respondent.
B. Identical or Confusingly Similar
The Complainant has undisputed rights in the registered trademark LEXAPRO. The Panel fully accepts the Complainant’s assertions that the term LEXAPRO is a coined phrase and that apart from a means of identification for the Complainant’s products it has no other meaning. The Disputed Domain Name contains the trademark LEXAPRO in its entirety along with the generic word “buy”. In the Panel’s opinion the addition of the word “buy”, rather than lessen the chances of confusion actually heightens them. As stated in Aventis, Aventis Pharma SA. v. VASHA Dukes, WIPO Case No. D2004-0276:
“the inclusion of the term "buy" has a clear promotional effect, consisting of (i) describing the purpose of the Respondent's website to potential consumers and (ii) inducing them, moreover, to enter the website in order to perform their purchases of "aventis" goods or services which, considering the goodwill of the Complainants' trademarks, may be inevitably taken to be the drugs commercialized under the trademarks “AVENTIS”. Therefore, the disputed domain name clearly induces consumers to rely on the existence of a relationship between it and the Complainants' trademarks.”
Therefore, in the Panel’s view, the Disputed Domain Name is confusingly similar to the Complainant’s mark for purposes of paragraph 4(a)(i) of the Policy.
The Panel accepts the Complainant’s assertions that it has not agreed or consented to the Respondent’s use or registration of a domain name comprising its registered LEXAPRO trademark. In view of the originality and uniqueness of the Complainant’s mark in particular, the Panel considers that the Complainant has demonstrated the required prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent has provided no evidence that it has any rights or legitimate interests in the Disputed Domain Name. Its does not appear to be commonly known by any mark or name similar to the Disputed Domain Name. It does appear to be re-selling the Complainant’s product, but has not been allowed to do so by the Complainant.
It is clear that the Respondent registered the Disputed Domain Name with the intent to make commercial gain and that its use of the Disputed Domain Name is neither fair nor bona fide for the purposes of the Policy. As stated in F. Hoffmann-La Roche AG v. Brave, WIPO Case No. D2006-1603;
“There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another’s trademark in one’s domain name and the commercial use of the corresponding website do not confer rights or legitimate interests upon the owner of such a domain name.”
Past cases have held that unauthorized use of a trademark in a domain name to sell products that compete with the product associated with the trademark is not a bona fide use. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (“a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”).
In the Panel’s opinion the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name which the Respondent has failed to rebut in any way.
Therefore, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant’s trademark application for LEXAPRO was made approximately 7 years before the Respondent registered the Disputed Domain Name. It appears to the Panel extremely unlikely that the Respondent could have been unaware of the Complainant’s mark when it was registered the Disputed Domain Name. In any event, paragraph 4(b)(iv) of the Policy provides a non-exhaustive list of circumstances that if found are indicative of bad faith, including the following:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Disputed Domain Name is identical to the Complainant’s fanciful trademark with the exception of the generic word “buy”. In the Panel’s opinion the generic word “buy” encourages internet users to visit the Disputed Domain Name as it gives the impression that this website is the official site to purchase the LEXAPRO product. The use of the word “buy” is clearly a ploy by the Respondent to direct consumers in search of the genuine LEXAPRO website towards the Disputed Domain Name.
Upon visiting the Complainant’s website, it looks like an authentic LEXAPRO information center which contains links to pharmaceutical websites where it is alleged you can buy LEXAPRO. The Panel believes that this creates the required confusion in the mind of a genuine consumer as to the source, sponsorship, affiliation or endorsement of the Respondent’s website by the Complainant.
The Panel further notes that the Complainant is the exclusive licensee of the patent for the active ingredient in the LEXAPRO product and that the Respondent does not appear to have U.S. Food and Drug Administration approval to use this product. All of which is indicative of the Respondent’s use of the Disputed Domain Name in bad faith.
For the above reasons the Panel finds that Paragraph 4(b)(iv) of the Policy is 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 Disputed Domain Name <buylexapro.com> be transferred to the Complainant.
Dated: July 9, 2008