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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. Awad Kajouk
Case No. D2007-1650
1. The Parties
The Complainant is Forest Laboratories, Inc., of New York City, United States of America, represented by its internal counsel.
The Respondent is Awad Kajouk, of Manama, Bahrain.
2. The Domain Name and Registrar
The disputed Domain Name <pharmacy-online-lexapro.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2007. On November 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2007, 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. 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 the Complaint, and the proceedings commenced on November 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 13, 2007. 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 Delaware corporation headquartered in New York City. Its 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 under the brand name LEXAPRO.
The Complainant filed an intent-to-use trademark application for this mark with the United States Patent and Trademark Office on December 22, 2000, immediately following the publication of clinical trial results on December 13, 2000. United States Trademark Registration Number 2,684,432 was issued to the Complainant on February 4, 2003, showing first use in commerce on September 5, 2002.
The Complainant operates a website about Lexapro at “www.lexapro.com,” a domain name that it registered on January 22, 2001.
The Complainant reports that over 15 million patients have obtained Lexapro prescriptions since the United States Food and Drug Administration (FDA) approved the drug for sale on December 18, 2003. Annual sales reportedly exceed US$2 billion. The Complainant asserts, without contradiction, that it is the exclusive licensee marketing the patented escitalopram oxalate preparation in the United States of America.
According to the Registrar, the Domain Name was registered on January 2, 2005.
The Complainant furnished printouts of pages on the website to which the Domain Name resolved on November 6, 2007. The home page was headed, “Lexapro Online Pharmacy”, with the tag line, “your favorite online pills store.” The lengthy “Products List” included Lexapro and also competing products from other pharmaceutical companies, such as the antidepressant drug Paxil. The website advertised competitive prices, a prescription based simply on a review of an online medical questionnaire by “our U.S. Licensed Physicians”, and overnight delivery.
The Respondent did not reply to communications from the Complainant and the Center in connection with this Complaint, but the Domain Name no longer resolves to a website.
5. Parties’ Contentions
The Complainant notes that the Domain Name incorporates its coined, registered LEXAPRO trademark in its entirety. The Complainant contends that the Respondent is not authorized to use the LEXAPRO trademark and has done so in a bad-faith attempt to mislead Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under 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.”
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the registered LEXAPRO trademark, which is a coined name and not a dictionary word or phrase. The Domain Name incorporates the mark in its entirety, adding the words “pharmacy” and “online.” Lexapro is in fact a pharmaceutical product that is advertised and discussed online. Therefore, these additional, apparently relevant words do not avoid confusion as to source but rather heighten the possibility of confusion.
The Panel concludes that the Domain Name is confusingly similar to the Complainant’s mark for purposes of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant states without contradiction that it has never authorized the Respondent to use its LEXAPRO mark. There is no indication from a perusal of the website printouts that the Respondent was known by the Domain Name or associated with a business entity known by that name. His use of the Domain Name was clearly commercial and not for a legitimate noncommercial purpose.
The Complainant’s mark is distinctive, and it is incorporated in its entirety in the Domain Name. It is undisputed that the Respondent used the Domain Name incorporating the Complainant’s mark to sell Lexapro, competing medications, and other pharmaceutical products on the Respondent’s website.
These facts indicate that the Respondent used the Domain Name to mislead Internet users for commercial gain, which cannot be deemed a bona fide offering of goods or services. The Respondent has not come forward with another explanation for his conduct, and the Panel draws the adverse inference from his silence that he has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:
“(iv) 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.”
This description fits the circumstances of the current proceeding. Because the Complainant’s mark is a coined name for a pharmaceutical product, and the Respondent used the mark in a Domain Name for a website selling a wide variety of pharmaceutical products, some of them offered by the Complainant’s direct competitors, it is hard to imagine a good-faith reason for appropriating the trademark in the Domain Name. The Respondent has certainly not offered one.
The Complainant adduces additional support for the conclusion that the Respondent registered and used the Domain Name in bad faith. The Respondent does not have a license under the relevant patent to market escitalopram oxalate in the United States of America: thus, his activities may constitute patent as well as trademark infringement. Moreover, there is no indication that the Respondent was authorized by the United States Food and Drug Administration or any relevant state agency to dispense the pharmaceutical products sold through the Respondent’s website, and thus there is no assurance that the products were genuine and safe. See Lilly ICOS LLC v. Cialis Pillz,
WIPO Case No. D2005-0063, citing such reckless and possibly unlawful conduct as evidence of bad faith.
Finally, as the Complainant observes, the Respondent has a history of bad-faith registration of domain names similarly incorporating pharmaceutical trademarks with the addition of the words “pharmacy” and “online”. See Merrell Pharmaceuticals Inc. v. Awad Kajouk,
WIPO Case No. D2005-0401 and Aventis Pharma SA. v. Awad Kajouk,
WIPO Case No. D2005-0716.
All of these facts lead to the conclusion that the Respondent, who has not offered an alternative explanation, more likely than not registered and used the Domain Name in bad faith.
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 <pharmacy-online-lexapro.com> be transferred to the Complainant.
W. Scott Blackmer
Date: December 27, 2007