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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Forest Laboratories Inc. v. Andrew Miller

Case No. D2008-1722

1. The Parties

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

Respondent is Andrew Miller, of Utah, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wwwlexapro.net> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2008. On November 10, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On November 11, 2008, Fabulous.com transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on November 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 5, 2008.

The Center appointed Stefan Naumann as the sole panelist in this matter on December 18, 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 Forest Laboratories Inc. presents itself as a well-known pharmaceutical company incorporated in Delaware with headquarters in New York that markets and sells pharmaceutical products containing escitalopram oxalate under the trademark LEXAPRO.

It has submitted into evidence a federal United States trademark registration for the term LEXAPRO (number 2684432) to designate “pharmaceutical preparations, namely anti-depressants in class 5”. This trademark was registered on February 4, 2003, and indicates a first use in commerce on September 5, 2002.

Complainant states that LEXAPRO brand escitalopram oxalate products are its flagship product, with prescriptions to over 15 million people in the United States and sales exceeding USD 2 billion a year.

Complainant further states that it owns the domain name <lexapro.com> that was registered on January 22, 2001.

Respondent registered the disputed domain name <wwwlexapro.net> on September 8, 2008.

A web page print out of October 30, 2008, submitted by Complainant shows that the <wwwlexapro.net> address resolved to a web page that contains the terms “wwwlexapro.net”, “Lexapro”, and a copyright notice “© 2008 wwwlexapro.net All rights reserved”. The web page has a photograph of a pharmacist taking medication from a shelf and has links to “Zoloft”, “Paxil”, “Allegra” and “Wellbutrin”. These terms, as well as links with terms relating to medical conditions, appear at various places on the web page, which also contains the phrase “Ask our doctors! Tell us your story! DoctorsTV.com Please contact us for more information”.

Complainant has submitted into evidence administrative panel decisions Sanofi-Aventis and Aventis Inc. v. Andrew Miller, WIPO Case No. D2008-1061, and Deutsche Telekom AG v. Andrew Miller, WIPO Case No. D2008-0296, in which Respondent was a respondent. The former decision involves the use of a technique that is commonly described as typosquatting, and in particular the use of the letters “www” without dot followed by the brand name of a well-known drug. The panels ordered the transfer of the domain names to the respective complainants in those two decisions on August 29, and April 17, 2008.

5. Parties’ Contentions

A. Complainant

Complainant states that it is a well-known pharmaceutical company, that LEXAPRO is a registered United States trademark in which it has rights retroactively to December 22, 2000, that LEXAPRO brand escitalopram oxalate products are its flagship products, that it owns the domain name <lexapro.com> which was registered on January 22, 2001, and that Respondent’s domain name <wwwlexapro.net> is identical and/or confusingly similar to Complainant’s LEXAPRO trademark, which it wholly includes.

Complainant did not offer any evidence regarding its domain name, but the Panel carried out a Whois search that confirmed Complainant’s statements with respect to the domain name.

Complainant contends that Respondent has no right or legitimate interest in the disputed domain name insofar as Complainant has not agreed or consented to Respondent’s use or registration of a domain name that includes its registered LEXAPRO trademark, Respondent is not commonly known by the disputed domain name, and Respondent’s use of the disputed domain name does not constitute a good faith offering of goods and services since the domain name resolves to a website that displays keyword advertisements and links to other domains not affiliated with or sponsored by the Complainant and/or that advertise competitive products such as “Zoloft” and “Paxil”.

Complainant contends that Respondent registered and is using the disputed domain name in bad faith since it could not have been unaware of Complainant’s massive use of the LEXAPRO trademark, and since Respondent has displayed a pattern of infringing other trademarks.

Complainant last contends that Respondent’s failure to respond to Complainant’s cease and desist letter of October 23, 2008 constitutes further evidence of bad faith.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Complainant has established that it has acquired trademark rights in the terms LEXAPRO and that these rights are prior to the registration of the disputed domain name.

A. Identical or Confusingly Similar

Under UDRP principles, the addition of common or descriptive terms to a distinctive sign does not diminish the risk of confusion.

In the present matter, Respondent added the letters “www” to the term “lexapro”, which is phonetically and visually identical to Complainant’s LEXAPRO trademark.

In line with prior administrative panel decisions, the Panel considers that adding the generic acronym for World Wide Web “www” does not remove or diminish in the least the distinctiveness of the mark LEXAPRO within the disputed domain name or the risk of confusion.

The Panel therefore finds that the disputed domain name <wwwlexapro.net> is confusingly similar to Complainant’s LEXAPRO trademark.

B. Rights or Legitimate Interests

Pursuant to the Policy, paragraph 4(c), Respondent could attempt to demonstrate that it has rights or legitimate interests in the disputed domain name.

In the present matter, Respondent has not offered any explanation or observations.

The panel would not decide in the Complainant’s favor solely because of Respondent’s default (Oxygen Media Corporation v. Spiral Matrix, WIPO Case No. D2006-0521; Lamps Plus, Inc. v. Cai Yu, WIPO Case No. D2007-1061).

However, it seems to this Panel that Complainant has made a clear prima facie case that Respondent has no right or legitimate interest in the disputed domain name.

First, Complainant states that it has not authorized Respondent to make use of the LEXAPRO trademark, and there is no evidence on the record to suggest that Respondent has been commonly known by the disputed domain name.

To the contrary, the record shows that Respondent is making commercial use of the trademark on the website to which the disputed domain name resolves, and that the website provides links to competing products. For this website, Respondent created a misleading copyright notice and provided text and illustrations that clearly point to a commercial use of Complainant’s trademark using the disputed typosquatted domain name <wwwlexapro.net>.

In addition, Respondent was involved in two UDRP disputes in 2008 alone, both of which found bad faith use and registration, and at least one of which specifically found typosquatting using the letters “www” together with pharmaceutical brand names.

The Panel therefore finds that in the present matter Respondent has no right or legitimate interest in the domain name <wwwlexapro.net>.

C. Registered and Used in Bad Faith

For Complainant to prevail the Panel must be persuaded that the disputed domain name was both registered and used in bad faith.

In the present matter, Respondent registered the disputed domain name in bad faith insofar as it has not shown any right or legitimate interest in this term, and was clearly aware of Complainant’s prior rights in the term LEXAPRO, which it used on the website to which the disputed domain name resolves. In addition, Respondent has a track record of bad faith domain name registrations as shown by prior panel decisions, and has used the registration in the present matter in bad faith.

In this context, the Panel does not consider that a Respondent’s failure to reply to Complainant’s demand letter necessarily constitutes evidence of bad faith.

Based on the foregoing, the Panel finds that the disputed domain name was registered in bad faith.

Based on the text and illustrations of the website to which the disputed domain name resolves, the Panel also finds that the domain is being used in bad faith by Respondent to attract Internet users by creating a likelihood of confusion with Complainant’s trademark (UDRP paragraph 4 (b) (iv)).

This view is confirmed by the fact that Respondent has repeatedly registered third party trademarks as domain names and/or part of domain names without right or legitimate interest as set forth in prior panel decisions.

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 name <wwwlexapro.net> be transferred to the Complainant.

Stefan Naumann
Sole Panelist

Dated: January 6, 2009