{
    "case_number": "CAC-UDRP-100544",
    "time_of_filling": "2012-12-02 16:25:54",
    "domain_names": [
        "ordergenericlexapro.com"
    ],
    "case_administrator": "Lada Válková (Case admin)",
    "complainant": [
        "H. Lundbeck A\/S"
    ],
    "complainant_representative": null,
    "respondent": [
        "Domain Name Privacy Protection"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nFactual Background\r\n\r\nThe Complainant H. Lundbeck A\/S is an international pharmaceutical company engaged in the research, development, production, marketing and sale of pharmaceuticals across the world. The company's products are targeted at disorders such as depression and anxiety, psychotic disorders, epilepsy and Huntington's, Alzheimer's and Parkinson's diseases.\r\nLundbeck was founded in 1915 by Hans Lundbeck in Copenhagen, Denmark. Today Lundbeck employs approximately 6,000 people worldwide.\r\n\r\nLundbeck is one of the world's leading pharmaceutical companies working with brain disorders. In 2011, the company's revenue was DKK 16.0 billion (approximately EUR 2.2 billion or USD 3.0 billion).\r\n\r\nFor more information, reference is made to the official website www.lundbeck.com.\r\n\r\nLundbeck markets a number of different pharmaceuticals for the treatment of brain disorders. The most recently launched compounds include: Cipralex\/Lexapro® (depression), Ebixa® (Alzheimer’s disease), Azilect® (Parkinson’s disease), Xenazine® (chorea associated with Huntington's disease), Sabril® (epilepsy), Sycrest® (bipolar disorder) and Onfi® (Lennox-Gastaut syndrome). \r\n\r\nThe trademark Lexapro® is registered in more than 100 countries around the world.\r\n\r\nA. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;\r\n\r\n(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))\r\n\r\nThe contested domain name is confusingly similar to the trade mark Lexapro®, in which the complainant holds rights. The domain name incorporates the complainants registered trademark combined with the generic and descriptive terms “order generic” as prefix. The Complainant claims that for the purpose of a UDRP proceeding, when a well-known and invented mark is combined with a common noun or adjective, that combination constitutes a domain name which is confusingly similar to an invented and well known mark.\r\n\r\nAlso, the Complainant asserts that it is an established and recognized principle under the UDRP that the presence of the .com top level domain designation is irrelevant in the comparison of a domain name to a trademark.\r\n\r\nB. The Respondent has no rights or legitimate interests in respect of the domain name;\r\n(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))\r\n\r\nThe Respondent has not received any license or consent, express or implied, to use the complainant´s trademark Lexapro®, in a domain name or in any other manner from the Complainant, nor has the Complainant acquiesced in any way to such use or application by the Respondent. At no time did the Respondent have authorization from the Complainant to register the disputed domain name.\r\n\r\nFurther, to the best knowledge of the Complainant, the Respondent has no legitimate right in the contested domain name. The Respondent did thus not use the domain name as a trademark, company name, business or trade name prior to the registration of the disputed domain name, nor is the Respondent otherwise commonly known in reference to the name.\r\n\r\nOn the contrary it is evident from the content of the Respondents website that the inclusion of the Complainants trademark Lexapro® in the domain name is done deliberately and with specific reference to this mark.\r\n\r\nBy doing this the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.\r\n\r\nAlso, to the best knowledge of the Complainant, the Respondent has no legitimate interest in the contested domain name. As mentioned it is evident from the wording of the website that the inclusion of the Complainants trademark Lexapro® in the domain name is done deliberately and with specific reference to this mark, and that the inclusion of the terms “order” and “generic” indicates that you can order “generic” versions of the Complainants´ product Lexapro® on the website. The Respondent does however not use the domain name in connection with a bona fide offering of goods and services. Complainant emphasize that Lexapro® is a controlled substance and, as such, under the laws of all countries  may not be sold online without a prescription from an authorized person (doctor). The Complainant asserts that the activity conducted at the disputed site may well be illegal as to the controlled substance Lexapro®. See, e.g., American Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000 1374 and Roche Products Inc. and Genentech, Inc. v. Vincent Holman and Whois Privacy Services Pty. Wipo Case No. D2010-1951. \r\n\r\nSee also CAC Case No. 100447 BUYONLINELEXAPRO.NET in which the Panels stated\r\n\r\n“The fact that a product is available only on prescription, when the Respondent is promoting it for sale online and, by necessary implication, without a prescription, is a relevant consideration. It is particularly relevant as it shows an intention to deceive, which is the essence of bad faith and destructive of any notion that the Respondent has the right to act as it has done. Panelists under the UDRP have a wide discretion to admit evidence and to consider submissions made by the parties and in the opinion of this panelist the issue presently under discussion is relevant. In the opinion of this panelist, the issue is not outside the ambit of the UDRP as suggested in Sanofi-aventis v. Rx World, Nils Bor (supra).”\r\n\r\nFinally, it is evident that the Respondent does not “make 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” as stated in § 4 c of the UDRP.\r\n\r\n\r\nC. The domain name was registered and is being used in bad faith.\r\n(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))\r\n\r\nThe Complainant´s trademark Lexapro® is registered in the recorded country of residence of the Respondent.\r\n\r\nThe Complainant claims that because of the distinctive nature and intensive use of the Complainant´s trademark Lexapro®, and because of the specific content of the web site, the Respondent had positive knowledge as to the existence of the Complainant’s trademark at the time the Respondent registered the domain name.\r\n\r\nFurther, as mentioned above the Respondent uses the domain name to divert Internet traffic to a site that claims to offer online sale of Complainants product Lexapro® without the mandatory prescription. By doing this the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.\r\n",
    "other_legal_proceedings": "The Panel is not aware of other pending or decided legal proceedings.",
    "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).",
    "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).",
    "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).",
    "procedural_factors": "The registrar, Dattatec.com, has not responded to CAC´s request for verification despite multiple reminders. \r\n\r\nNeither the written notice of the Complaint nor the advice of delivery thereof was returned to the CAC by the Respondent. The  CAC is therefore unaware if the written notice was received by the Respondent or not. As far as the eMail notice is concerned the CAC received a confirmation that the eMail sent to ordergenereclexapro.com@traxhost.com - specified in the whois-database - was relayed. The eMail sent to postmaster@ordergenereiclexapro.com was returned back undelivered. The CAC did not find any further eMail address on the website published under the disputed domain name.",
    "decision": "Accepted",
    "panelists": [
        "Prof. Dr. Lambert Grosskopf, LL.M.Eur."
    ],
    "date_of_panel_decision": "2013-01-13 00:00:00",
    "informal_english_translation": "Complainant has a registered trademark in the word Lexapro in more than 100 countries around the world, inter alia the following trademark registered in Argentina, the Respondent’s country of residence:\r\n\r\nWord trademark registered in Argentina, reg. No. 1.909.748, for the term LEXAPRO, registered on January 1,  2003.",
    "decision_domains": {
        "ORDERGENERICLEXAPRO.COM": "TRANSFERRED"
    }
}