The “Side-Effects” of Domain Name Bad-Faith

The Complainant is a New York based pharmaceutical company whose trademark rights in the LEXAPRO mark pre-date the Respondent’s registration of the disputed domain name  To wit, the Complainant was granted its trademark rights on February 4, 2003, having filed an intent-to-use application on December 22, 2000, and the disputed domain name was registered on February 28, 2004.

The disputed domain name resolves to websites that contain keyword advertisements and links to other websites that are related to the mark, but that are not affiliated with or sponsored by the Complainant, some of which even sell unauthorized versions of LEXAPRO and/or competitive products.  The Complainant contends that the disputed domain name was both registered and is being used in bad faith.   The Respondent failed to reply to the complaint and the Panel’s decision, therefore, is based on the Complainant’s assertions, evidence and inferences drawn from the Respondent’s failure to reply.  Nevertheless, the Panel noted that it “must not decide in the Complainant’s favor solely given the Respondent’s default” and, therefore, the Complainant must nonetheless prove each element proscribed by the Policy to receive transfer of the disputed domain name.

In this instance, the Panel found that the Complainant proved to have trademark rights in LEXAPRO and consequently found that the “mere addition of the generic words “side” and “effects” in the disputed domain name is insufficient to avoid the likelihood of confusion with the Complainant’s mark – specifically noting that many users are likely to suppose just the opposite.  Moreover, the Panel concluded 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 [was] made in bad faith.”   Evidenced by the fact that the disputed domain name has “sponsored links that transfer visitors to other online locations, which offer products which are competing or related to the one’s offered by the Complainant”, the Panel found that the Respondent, in fact, “attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion” and therefore, ordered the disputed domain name transferred to the Complainant. Forest Laboratories, Inc. v. candrug, WIPO Case No. D2008-0382

Domain Dysfunction. . .

In this WIPO proceeding, the Complainant is one of the world's largest pharmaceutical manufacturers and sellers, maintaining operations in more than 150 countries and owning the well-known registered trademark VIAGRA. The Respondent registered, without authorization, the domain name "viagraoysters", linking to a website inviting customers to invest in an oyster growing venture, describing the development of oysters through the provision of Viagra and containing for-profit links to other commercial goods and services.

One key message of the website appeared to have been that the combination of Viagra and oysters could increase the likelihood of a more effective remedy for erectile dysfunction. Ordering the transfer of the domain to the Complainant, the panel held that the Respondent appeared to have used a well-known name which it knew was the subject of a registered trademark to attract visitors to its site with a view to persuading them to invest in his business venture, having nothing to do with the owners of the mark. However, in choosing that mark as the key part of the domain name, the Respondent sought to make people interested in the Complainant's products look at the website to which the disputed domain name resolved, constituting both registration and use in bad faith.

Pfizer Inc. v. Noblemay, George May, WIPO Case No. D2007-1025