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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Forest Laboratories Inc. v. UrProxy Domains

Case No. D2008-0564

1. The Parties

The Complainant is Forest Laboratories, Inc. of New York, New York, United States of America.

The Respondent is UrProxy Domains of Vista, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <lexapro-medication.com> and <lexapro-side-effects.info> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2008. On April 11, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On April 14, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both domain names 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 April 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2008.

The Center appointed Miriam Sapiro as the sole panelist in this matter on May 22, 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 pharmaceutical company with headquarters in New York, New York. Among other products, Complainant markets and sells products containing escitalopram oxalate in the United States under the brand name LEXAPRO to treat major depressive disorders and generalized anxiety disorders. Complainant has made use of the mark LEXAPRO since the drug was approved by the U.S. Food and Drug Administration in 2002 and received federal trademark protection on February 4, 2003 (Reg. No. 2,684,432).

The domain names <lexapro-medication.com> and <lexapro-side-effects.info> resolve to a website advertising LEXAPRO that is not affiliated with Complainant. These similar websites market and sell other anti-depressant mediations that are in competition with Complainant’s product.

5. Parties’ Contentions

A. Complainant

Complainant believes that the domain names in question are confusingly similar to the trademark LEXAPRO that it has registered. Complainant further asserts that Respondent has no rights or legitimate interests in the domain names because it has no permission to use its unique, well-known and federally registered mark LEXAPRO. In addition, Respondent is not known by the domain names, and is not using them in connection with a bona fide offering of goods or services. Finally, Complainant claims that the domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Center’s records indicate that its emails notifying Respondent of these proceeding were delivered. Efforts to reach the Respondent by surface mail, however, were unsuccessful because the delivery service found that the destination address did not exist.¹

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to prevail:

(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.

Because the Respondent has decided not to reply to the substance of the allegations in the Complaint, in accordance with paragraphs 5(e) and 14 of the Rules, the Panel will base its decision on the Complaint and draw such inferences from Respondent’s failure to reply as it considers appropriate. See, e.g., Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939.

A. Identical or Confusingly Similar

It is undisputed that Complainant is the holder of a U.S. trademark registration for LEXAPRO that was filed before Respondent registered the disputed domain names in 2004. This Panel agrees with the Complainant that the suffixes “.com” and “.info” do not resolve the confusion caused by the dominant portion of the second-level registration, which essentially is identical to Complainant’s registered trademark. In addition, adding the descriptive words “medication” and “side-effects” do not ease the confusion. See, e.g., F. Hoffman-La Roche AG v. MedCenter Canada, WIPO Case No. D2005-1291 (holding that <xeloda-side-effects.com> is confusingly similar to the trademark XELODA).

The domain names <lexapro-medication.com> and <lexapro-side-effects.info> are therefore confusingly similar and essentially identical to Complainant’s mark within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy describes three ways in which a Respondent may establish rights or legitimate interests in a disputed domain name, namely:

(i) before any notice of the dispute, [Respondent’s] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] 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.

Respondent has failed to provide any evidence that it meets any of these criteria, and no evidence in the record suggests that it might. There is no indication that Respondent used or prepared to use these domain names in connection with a bona fide offering of goods or services, or that it is known by the domain names, or that it is making noncommercial use of the domain names. As noted above, both domain names resolve to websites that use the mark LEXAPRO without authorization, advertise competing products, and feature paid links that advertise related and unrelated goods and services. This Panel therefore finds no evidence that would support a finding that Respondent has any rights to, or legitimate interests in, the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” shall constitute evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 the web site or location or of a product or service on [the] web site or location.

Complainant contends that the fourth criterion is met, and this Panel agrees. The Panel finds that Respondent is using domain names confusingly similar to Complainant’s mark in order to attract users to its websites for commercial gain. In this context, Respondent has created a “likelihood of confusion with the Complainant’s mark as to the course, sponsorship, affiliation, or endorsement of the website…or of a product…on [the] web site or location.” As the Panel found in Glaxo Group Limited, SmithKlineBeecham Corporation d/b/a GlaxoSmithKline v. Michale Kelly, WIPO Case No. D2004-0262, Respondent’s use of a trademark to trade on Complainant’s good will and reputation precludes any bona fide offering of goods or services.

The Panel therefore finds evidence of the registration and use of the domain names in bad faith under paragraph 4(b) of the Policy.

Accordingly, the Complainant has demonstrated that each of the elements of paragraph 4(a) of the Policy is satisfied.

7. Decision

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 names <lexapro-medication.com> and <lexapro-side-effects.info> be transferred to the Complainant.

Miriam Sapiro
Sole Panelist

Date: June 5, 2008