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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forest Laboratories, Inc. v. candrug
Case No. D2008-0382
1. The Parties
The Complainant is Forest Laboratories, Inc., New York, New York, United States of America.
The Respondent is candrug, Delta, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <lexapro-side-effects.net> is registered with DomainPeople.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2008. On March 11, 2008, the Center transmitted by email to DomainPeople a request for registrar verification in connection with the domain name at issue. On March 11, 2008, DomainPeople 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 March 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2008.
The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on April 10, 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 following facts are not contested.
The Respondent registered <lexapro-side-effects.net> (the “disputed domain name) on February 28, 2004, using DomainPeople.
The Complainant is a pharmaceutical company with headquarters in New York city, United States of America, owner of a United States registration for LEXAPRO, Registration No. 2,684,432, granted on February 4, 2003, having filed an intent-to-use application on December 22, 2000.
The Complainant’s trademark rights predate Respondent’s <lexapro-side-effects.net> disputed domain name registration.
5. Parties’ Contentions
The Complainant contests that:
It is a pharmaceutical company with headquarters in New York City, owner of a United States of America registration for LEXAPRO, Registration No. 2,684,432, granted on February 4, 2003, having filed an intent-to-use application on December 22, 2000.
The Respondent’s domain name <lexapro-side-effects.net> is identical and/or confusingly similar to Complaint’s LEXAPRO mark as it incorporates the mark in its entirety.
The Complainant has not agreed or consented the Respondent’s use or registration of a domain name comprising its well known LEXAPRO mark. Moreover, the Respondent is not commonly known by the disputed domain name.
The disputed domain name resolves to websites that contain keyword advertisements and links to other websites that are related to LEXAPRO, but that are not affiliated with or sponsored by the Complainant. Some of these websites correspond to online pharmacies that sell unauthorized versions of LEXAPRO. Additionally, some of the websites contain information and links related to competitive products.
Most likely, the Respondent is being paid whenever an Internet user clicks on one of the referred links.
For the above reasons, the Complainant contests that the Respondent’s use of the disputed domain name cannot constitute a bona fide offering of good and services.
The Respondent has registered and is using the disputed domain name in bad faith. There is no doubt that at the time the Respondent registered the disputed domain name, it was aware of the LEXAPRO mark.
The Respondent registered the disputed domain name with the intent to trade on the well-known LEXAPRO mark, and to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In previous UDRP cases in which the responding party failed to file its response, the panels’ decisions were based upon the complainants’ assertions, evidence and inferences drawn from the respondents’ failure to reply. The Vanguard Group, Inc. v. Lorna Kang,
WIPO Case No. D2002-1064 and Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp,
WIPO Case No. D2001-0936.
Notwithstanding the above, the Panel must not decide in the Complainant’s favor solely given the Respondent’s default. Cortefiel S.A. v. Miguel Garcнa Quintas,
WIPO Case No. D2000-0140.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has proved to have trademark rights in the mark LEXAPRO, which was registered in the United States of America in 2002.
In line with UDRP precedent, when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark. Bayer Aktiengesellschaft v. Henrik Monseen,
WIPO Case No. D2003-0275; Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life,
WIPO Case No. D2002-0363; Quixtar Investments Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253.
In that connection, the Panel finds that the mere addition of the generic words “side” and “effects”, in the disputed domain name <lexapro-side-effects.net>, is not sufficient to avoid the likelihood of confusion with the Complainant’s mark.
Furthermore, it is reasonable to conclude that many Internet users would suppose that the website, to which the disputed domain name resolves, has a connection with the Complainant.
Therefore, the Panel finds that the Complainant succeeds on the first element under the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you (Respondent) 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 (Respondent) are making a legitimate non-commercial 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.”
Although the Policy states that a complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interest in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has proven prima facie that the Respondent has no rights or legitimate interests in respect of the domain name <lexapro-side-effects.net>.
The Respondent did not reply to the Complainant’s contentions and therefore has not refuted the prima facie case.
Notwithstanding the above-said, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services, and neither is a reseller nor licensee of the Complainant’s products and services, nor is it authorized by the Complainant to use the LEXAPRO mark.
In fact, the website “www.lexapro-side-effects.net” to which the disputed domain name resolves is used, among other things, to transfer visitors to other online locations.
Additionally, there is no evidence that the Respondent is commonly known as or identified by LEXAPRO. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization, nor does it offer any goods or services under the LEXAPRO mark. Thus, the Respondent’s use of the disputed domain name cannot be considered bona fide use, or fair or non-commercial use.
Consequently, based on the record and in the absence of a rebuttal by the Respondent, the Panel holds that, as required in paragraph 4(a)(ii) of the Policy, the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is persuaded that the disputed domain name has been registered and is being used in bad faith.
The Complainant has proved to have rights in the trademark LEXAPRO, registered in the United States of America in 2003, and that the Respondent registered the disputed domain name <lexapro-side-effects.net> in February 28, 2004.
The Complainant has also proved that in the website “www.lexapro-side-effects.net” the Respondent refers to the LEXAPRO product.
Therefore, and in the absence of a rebuttal from the Respondent, the Panel concludes that the Respondent knew or should have known the Complainant’s LEXAPRO mark at the time of registration of the disputed domain name and therefore, the registration has been made in bad faith.
Moreover, and as contested by the Complainant, the Panel finds that by using the domain name <lexapro-side-effects.net> the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
This is evidenced by the fact that the Respondent’s website “www.lexapro-side-effects.net” has sponsored links that transfer visitors to other online locations, which offer products, which are competing or related to the ones offered by the Complainant.
For these reasons, the Panel finds that the Respondent both registered and uses the domain name in bad faith, and that the Complainant has therefore made out the third element of its case.
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 <lexapro-side-effects.net> be transferred to the Complainant.
Gustavo Patricio Giay
Dated: April 24, 2008