WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Forest Laboratories, Inc. v. Private Whois Service

Case No. D2011-1207

1. The Parties

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

Respondent is Private Whois Service of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <buybystolic.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2011. On July 15, 2011, the Center transmitted by email to Internet, bs Corp. a request for registrar verification in connection with the disputed domain name. On July 18, 2011 Internet.bs Corp. 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 July 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 15, 2011.

The Center appointed Ross Carson as the sole panelist in this matter on August 24, 2011. 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 well-known pharmaceutical company in the United States. One of Complainant’s key products is Bystolic (nebivolol hydrochloride), which is an FDA-approved pharmaceutical for the treatment of hypertension. Complainant’s BYSTOLIC trademark has been in use in association with its pharmaceutical preparation in the United States since January 2008. In the fiscal year 2011, Bystolic brand tablets achieved sales of USD 264 million.

Complainant is the registered owner of United States Trademark Registration No.3, 412, 780 for the trademark BYSTOLIC registered in relation to “pharmaceutical preparations for the treatment of hypertension,” filed on March 30, 2005 and registered on April 15, 2008.

Complainant is also the registered owner of United States Trademark Registration No. 3, 609, 703 for the trademark BYSTOLIC and Design registered in relation to “pharmaceutical preparations for the treatment of hypertension,” filed on January 3, 2008 and registered on September 27, 2009.

Complainant also operates a website about Bystolic medical preparations at “www.bystolic.com”. Complainant registered the domain name <bystalic.com> on September 27, 2007.

Respondent registered the disputed domain name <buybystolic.com> on August 1, 2010.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant states that it’s registered trademarks for and including BYSTOLIC, referred to in section 4 above, have been in use in the United States since at least as early as 2008, and are well-known in the United States in association with pharmaceutical preparations for the treatment of hypertension for which they are registered.

Complainant states that the disputed domain name <buybystolic.com> is confusingly similar to the Complainant’s registered trademarks for, or including BYSTOLIC as the disputed domain name wholly includes Complainant’s registered trade mark BYSTOLIC. Complainant further states that adding the descriptive word “buy” in the disputed domain name is legally insignificant. See Forest Laboratories, Inc. v. Fra Zero Tech, WIPO Case No. D2008-0716.

A.2. No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that several facts demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <buybystolic.com>. Complainant has not agreed or consented to Respondent’s use or registration of a domain name comprising its unique and well-known BYSTOLIC trademark.

Complainant further submits that Respondent is not commonly known by the disputed domain name.

Complainant further submits that that Respondent’s use of the disputed domain name cannot constitute a bona fide offering of goods or services. The disputed domain name resolves to a website that contains information on the pharmaceutical BYSTOLIC and directs consumers to purchase the pharmaceutical from an online Canadian pharmacy. The landing page includes the statement: “If you are in need of this medication and would like to save time and money, buy cheap Bystolic online from a Canadian pharmacy.” The link provided resolves to <northwestpharmacy.com>, an online pharmacy that offers what it purports to be Bystolic tablets and generic versions of Bystolic tablets at discount prices.

Complainant states that it has not authorized Respondent to sell these products which compete with Complainant’s Bystolic products. Respondent’s use of the disputed domain name which is confusingly similar to complainant’s BYSTOLC trademark in association with the promotion and sale of competing pharmaceuticals is not a bona fide use of the disputed domain name. See Pfizer Inc. v. Kent Gormat, WIPO Case No. D2004-0591.

A.3. Registration in Bad Faith

Complainant states that it owns two registered trademarks in the United States for or including BYSTOLIC which were registered before Respondent registered the disputed domain name on August 1, 2010. Respondent states that the trademark BYSTOLIC is a coined and fanciful word which must have been adopted by Respondent with knowledge of Complainant’s goods and trademark as the distinctive portion of the disputed domain name is Complainant’s registered trademark.

A.4. Use in Bad Faith

Complainant submits that Respondent is using the disputed domain name in bad faith. The disputed domain name entirely incorporates Complainant’s trademark BYSTOLIC as the distinctive element of the disputed domain name <buybystolic.com>. The disputed domain name resolves to a webpage offering pharmaceuticals for sale which compete with Complainant’s pharmaceuticals sold in association with Complainant’s BYSTOLIC trademark. Complainant states that Respondents use of the disputed domain name is an obvious attempt to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website. See Glaxo Group Ltd. v. Kelly,WIPO Case No. D2004-0262; F Hoffman-La Roche AG v. Guardo, WIPO Case No. D2007-1550.

Complainant further submits that Respondent’s bad faith is further shown by the fact that Complainant sent Respondent a cease and desist letter on June 15, 2011, but Respondent has not responded.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response may result in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is the owner of two United States trademark registrations for or including BYSTOLIC as described in section 4 above which were registered and used in the United States on an extensive scale before the disputed domain name <buybystolic.com> was registered on August 1, 2010.

The disputed domain name <buybystolic.com> incorporates the entirety of Complainant’s trademark BYSTOLIC as the distinguishing element. Many UDRP decisions have found that domain names are generally confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See PepsiCo.Inc. v. Pepsi, SRL (a/k/a P.E.P.S.I.) and Ems Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark”; holding <pepsiadventure.net>, <pepsitennis.com>, and other domain names confusingly similar to the complainant’s PEPSI mark); and Playboy EnterprisesInternational, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.

The disputed domain name <buybystolic.com> consists of Complainant’s distinctive trademark BYSTOLIC in combination with the descriptive term “buy” and the top level domain descriptor “.com”. Other UDRP panels have repeatedly held that the merely adding a descriptive addition or generic term to a trademark, such as “buy” does not sufficiently distinguish the domain name from the trademark. See e.g. Forest Laboratories, Inc. v. Fra Zero Tech, WIPO Case No. D2008-0716.

The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity. Other UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to the registered trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademarks or any trademarks confusingly similar thereto.

There is no evidence that Respondent used the disputed domain name before the Complainant’s notice of the dispute in connection with a bona fide offering of goods. The disputed domain name resolves to a website that contains information on the pharmaceutical Bystolic and directs consumers to purchase the pharmaceutical from an online Canadian pharmacy: “If you are in need of this medication and would like to save time and money, buy cheap Bystolic online from a Canadian pharmacy.” The link provided resolves to <northwestpharmacy.com>, an online pharmacy that offers what it purports to be Bystolic tablets and generic versions of Bystolic tablets at discount prices. Complainant has not authorized Respondent to sell these products which compete with Complainant’s Bystolic products. Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s BYSTOLC trademark in association with the promotion and sale of competing medications is not a bona fide use of the disputed domain name. See; Pfizer Inc. v. Kent Gormat, WIPO Case No. D2004-0591.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of production shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.

C.1. Registered in Bad Faith

Complainant has established that it is the owner of two registered trademarks on the principal register in the United States for or including BYSTOLIC as described in section 4 above which were registered and used in the United States on an extensive scale in the United States before the disputed domain name <buybystolic.com> was registered on August 1, 2010.

The disputed domain name incorporates Complainant’s registered trademark BYSTOLIC. The term “bystolic” appears to be a coined term and no evidence was submitted to the contrary. The disputed domain name is composed of Complainant’s trademark BYSTOLIC, the descriptive term “buy” and the top level domain “.com”. The fact that Respondent uses the disputed domain name in association with a pharmaceutical preparation competing with Complainant’s BYSTOLIC pharmaceutical preparation shows that Respondent registered the disputed domain name with knowledge of Complainant’s pharmaceutical preparations.

The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith.

C.2. Domain Name Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.

The disputed domain name entirely incorporates Complainant’s trademark BYSTOLIC as the distinctive element of the disputed domain name <buybystolic.com>. The disputed domain name resolves to a webpage offering pharmaceuticals for sale which compete with Complainant’s pharmaceuticals sold in association with Complainant’s BYSTOLIC trademark. Respondent’s use of the disputed domain name is an obvious attempt to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website. See Glaxo Group Ltd. v. Kelly, WIPO Case No. D2004-0262; F Hoffman-La Roche AG v. Guardo, WIPO Case No. D2007-1550.

The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <buybystolic.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Dated: September 7, 2011