Domain name – Domain name dispute resolution policy – No formal response except for that by correspondence – Respondent claimed that others besides himself were using the domain name at issue without impunity – Domain name is generic – Respondent deliberately chose domain name with intent to attract viewers to his web site - Panelist’s discretion as to weight of evidence – Famous and distinguishable trademark - Confusingly similar - Complainant has substantial reputation in its famous trademark – Respondent tarnishing Complainant’s reputation – Creating injurious association between famous trademark and distasteful contents of web site – Non-profit web site irrelevant – Respondent not licensee of Complainant – Use of trademark as distinctive part of domain name is misleading – Likelihood of confusion – Idea of pharmaceutical preparation is suggested by domain name without Complainant’s authorization or consent.

Complainant is the registered owner of the Prozac trademark and has used the trademark in connection with pharmaceutical preparations since 1984.  Respondent registered the domain name prozacpages.com.  However, the Prozac trademark has acquired a substantial reputation and has become well known to the public as a famous trademark, denoting the products of the Complainant alone.

Held, Name Transferred to Complainant.

Respondent did not formally participate in the dispute resolution process, except by way of correspondence.  In his correspondence, Respondent admitted that he deliberately chose to include the trademark Prozac in his domain name.  The domain name is identical to Complainant’s registered trademarks except for the descriptive addition “pages.com.”  This domain name is confusingly similar to Complainant’s Prozac trademark, registered since 1984, in at least 70 countries. 

Respondent is not associated with, affiliated with nor licensed by Complainant to use its registered trademark for pharmaceutical preparations.  Furthermore, Respondent is not authorized by Complainant to use its trademark in connection with a web site that contains information relating to severe depression. 

By Respondent’s own admission, domain name prozacpages.com was registered with the intent that the famous trademark would attract more visitors to Respondent’s web site than would a domain name without the famous trademark.  This is bad faith use and registration.

Policies referred to:

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.

Panel Decision referred to
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Carson, Panelist:
 

1. The Parties:

Complainant is Eli Lilly and Company, a corporation incorporated under the laws of the State of Indiana, with a place of business at Lilly Corporate Center, Indianapolis, Indiana 46285, U.S.A.  Respondent is Matt Brown, whose full post office address is Flat 1, 96 Palace Road, Tulse Hill, London, SW2 3JZ, United Kingdom.

2. The Domain Name(s) and Registrar(s):

The domain name at issue is prozacpages.com.  The disputed domain name is registered with CORE Internet Council of Registrars, World Trade Center II, 29 route de Pre-Bois, CH-1215 Geneva, Switzerland.

3. Procedural History:

Complaint was filed on April 28, 2000.  The Center acknowledged receipt of the complaint on May 3, 2000. A request for Registrar verification was forwarded to CORE Internet Council of Registrars on May 3, 2000.  On May 9, 2000, CORE Internet Council of Registrars confirmed by e-mail that Matt Brown, Flat 1, 96 Palace Road, (Palace Road), SW2 3JZ United Kingdom is the current registrant of the domain name at issue. 

On May 8, 2000, Respondent sent a letter by e-mail to the Center in response to the complaint.  On May 12, 2000, the Center forwarded notification of complaint and commencement of administrative proceeding to Respondent by e-mail and Post/Courier. The Center advised Respondent that a response was due within twenty (20) calendar days from the day of receipt of the notification. The Respondent was advised that the last day for sending the response to the Complainant and the Center is May 31, 2000. The Center also acknowledged Respondent’s communication of May 8, 2000 and requested Respondent to indicate whether the letter of May 8th, should be regarded as the response in the administrative proceeding.

On May 18, 2000, Respondent sent an e-mail to the Center advising that the earlier letter (dated May 8, 2000) was his Response to the Complaint.  Respondent also raised one other point to its response, namely, that others were using domain names including "prozac".

On May 19, 2000, the Center forwarded a Response Deficiency Notification by e-mail to Respondent stating that Respondent’s letter did not satisfy the requirements set out in Paragraph 5 of the Rules for Uniform Domain Name Resolution Policy and advising that Respondent is requested to remedy the deficiencies by May 31, 2000. The Center also responded to Respondent’s e-mail dated May 18, 2000 and advised that the determination on the substantive facts of the case will be in the sole discretion of the administrative panel. 

On June 5, 2000 the Center sent an e-mail to Respondent advising that having failed to receive a communication from Respondent subsequent to the Center’s response deficiency notification by the deadline of May 31, 2000, the Center will proceed to appoint the administrative panel.

On June 5, 2000, Complainant’s representatives sent an e-mail letter to the Center commenting on the submissions made by Respondent. On June 5, 2000, the Center acknowledged receipt of Complainant’s letter and advised that the communication would be forwarded to the panel who would decide whether to give weight to the communication.

On June 7, 2000, Respondent sent an e-mail enclosing a letter to the Center commenting on Complainant’s second submission dated June 5, 2000. On June 9, 2000, the Center acknowledged receipt of Respondent’s e-mail and letter and advised that the communication will be transferred to the panel and that it will be at the sole discretion of the panel to decide whether to give weight to the communication.

On June 13, 2000, the Center forwarded a notification of appointment of administrative panel to the parties and advised that the administrative panel is required to forward its decision to the Centre by June 26, 2000.

4. Factual Background:

The complaint is based on the ownership of the trademark PROZAC registered in over 70 countries around the world in respect of pharmaceutical preparations. The trademark PROZAC has been used by Complainant in relation to pharmaceutical preparations since at least as early as 1984. The trademark PROZAC has acquired a substantial reputation and has become well known to the public as a famous trademark, denoting the products of Complainant alone.

5. Parties’ Contentions:
a) Complainant:

(i) Complainant submits that the domain name prozacpages.com is confusingly similar to Complainant’s registered trademark PROZAC.

(ii) Complainant submits that Respondent has no legitimate interest in any domain name incorporating the PROZAC trademark. 

(iii) Complainant further submits that Respondent being aware that PROZAC is a registered trademark of Complainant has registered the trademark prozacpages.com in bad faith. Complainant further submits that Respondent has made unfair use of Complainant’s trademark PROZAC to attract visitors to his web site. 
 

(iv) Complainant also submits that after attracting visitors to his web site, Respondent has attempted to tarnish the reputation of Complainant’s trademark by creating an injurious association between the PROZAC trademark and the "distasteful contents" of the prozacpages.com web site.

With respect to the first element (i) of confusion between the domain name and the registered trademark PROZAC, Complainant attaches as Annex C copies of Complainant’s registered trademarks for PROZAC registered in Spain, Denmark, Finland, Benelux, Germany, Sweden, Italy, United Kingdom, Greece and Community Trade Mark. The trademarks are registered in relation to pharmaceutical preparations and substances. 

The domain name prozacpages.com contains the whole of Complainant’s registered trademark PROZAC. The additional element pages.com is irrelevant in trademark terms, since it is wholly descriptive and non-distinctive, merely referring to the nature of the material, that is, web pages. The additional element pages.com does nothing to distinguish Respondent’s domain name from Complainant’s registered trademark. 

Respondent’s web site features pictures of Complainant’s goods, namely the distinctive green and cream trade dress of the PROZAC capsules. The green and cream capsules are also the subject of trademark registrations owned by Complainant. Each capsule bears the PROZAC trademark. 

With respect to the second element (ii) whether Respondent has no rights or legitimate interest in respect of the disputed domain names, Complainant`s evidence is that Respondent has no rights in the trademark PROZAC and is making commercial or unfair use of the trademark PROZAC.

Respondent is not associated with, affiliated with nor licensed by Complainant to use the trademark PROZAC for the goods for which the trademark is registered.

With respect to the third element (iii), Complainant submits that Respondent was aware that PROZAC is a registered trademark for pharmaceutical preparations manufactured and sold by Complainant. 

Complainant submits that use of the registered trademark PROZAC as the distinctive part of the domain name prozacpages.com is misleading as it suggests that there is some link or connection between the site and Complainant, the owner of the registered trademark PROZAC. In his letter dated June 7, 2000, Respondent states "Yes, I have deliberately chosen to include the word prozac in the title to attract more visitors".

With respect to element (iv), as Complainant has not provided the Center with copies of text of Respondent’s web site it is not possible to decide whether the web site contains "distasteful" information.
 
 
 

b) Respondent:

No formal response with respect to the complaint was received by the Center or by the panel. However, Respondent submitted a letter on May 8, 2000 raising several points in response to the matters raised in the complaint.

The first point made by Respondent is that prozacpages.com is a non-profit site, the purpose of which is to highlight and attempt to help others to understand the mental disruption that is the nature of severe depression. The second point is that the name prozacpages.com was allegedly registered in good faith, as a clear way to highlight the fact that this web site relates to severe depression. 

The third point made by Respondent is that the domain name prozacpages.com itself was not at any time registered with any internet search engine. 

The fourth point is that the trademark PROZAC registered for pharmaceutical preparations has gone beyond merely being a trademark distinguishing a pharmaceutical preparation manufactured and sold by Complainant. 

Respondent further alleged improper trademark and copyright marking by third parties and use of prozac as part of titles and domain names operated by third parties.  In Respondent’s second letter, dated May 18, 2000, Respondent referred again to working sites of third parties that  included the trademark PROZAC as part of their domain names.

By letter of June 5, 2000, Complainant denied that the trademark PROZAC registered in relation to pharmaceutical substances had become a generic term available for all to use and countered that PROZAC was a famous trademark distinguishing pharmaceutical preparations manufactured and sold by Complainant. 

Complainant also contested the point that the contested domain name is not registered with any internet search engine. A printout of a search on the ALTA VISTA search engine was attached.

Respondent e-mailed a third letter dated June 7, 2000 to the Center contesting portions of Complainant’s letter of June 5, 2000.  Respondent objected to the weight which should be given to the listing on ALTA VISTA search engine and submitted that the disputed domain name was not listed on YAHOO search engine.  In the second last paragraph of his letter dated June 7, 2000, Respondent states: "I want to reach as many people who suffer from depression, and who are lonely and do not know who to turn to or talk to as possible. Yes, I have deliberately chosen to include the word prozac in the title to attract more visitors. But the audience is specifically targeted through depression news groups and [the site] is extremely unlikely to be viewed casually."

6. Discussion and Findings:

The first element which Complainant must prove is that the domain name is identical or confusingly similar to Complainant’s trademark. The domain name is identical to Complainant’s registered trademark except for the descriptive addition pages.com.  Complainant has proved that the disputed domain name is confusingly similar to Complainant’s trademark PROZAC registered in association with pharmaceutical preparations since at least as early as 1984 and currently registered in at least 70 countries.

The trademark PROZAC that is the subject of numerous registrations registered in Complainant’s name for pharmaceutical preparations is an inherently distinctive word as applied to pharmaceutical preparations for which the mark is registered.

The domain name in dispute prozacpages.com is comprised of the two words PROZAC and pages.com. The idea suggested by the disputed domain name and the registered trademark is the pharmaceutical PROZAC and a web site relating to the pharmaceutical PROZAC. The domain name prozacpages.com registered by Respondent is confusingly similar to Complainant’s registered trademark PROZAC.

The second element, which Complainant is required to prove, is that Respondent has no rights or legitimate interest in respect of the domain name in dispute. Respondent submits that the registered trademark is generic and that others use the registered trademark as part of their domain names. 

Respondent also submits that the domain name prozacpages.com was registered in good faith as a clear way to highlight that the web site contains information relating to severe depression.  In a letter dated June 7, 2000, Respondent stated: "Yes, I have deliberately chosen to including the word prozac in the title to attract more visitors."  The issue as to the validity of Complainant’s registered trademarks is not within the jurisdiction of the panel.

Respondent is not associated with, affiliated with or licensed by Complainant to use the registered trademark PROZAC for the wares for which the trademark is registered. Complainant has established that Respondent has no right or legitimate interest in respect of the domain name in dispute.

The third element, which Complainant is required to prove, is that the disputed domain name prozacpages.com has been registered and is being used in bad faith. The domain name prozacpages.com was registered by Respondent because the famous trademark PROZAC for pharmaceutical preparations will attract more visitors to Respondent’s web site than would a domain name not including the famous trademark. The domain name prozacpages.com is being used in bad faith to continue to attract visitors to a site that many visitors are likely to believe is designed and operated by Complainant or has received approval of Complainant.

As part of the dispute relating to the third element, both Complainant and Respondent made submissions concerning the content of the web site and alleged injurious and distasteful contents of the prozacpages.com web site.  As a copy of the material on the web site was not submitted as an annex to the submissions of either party I have not reached any conclusions with respect to this allegation. As Complainant has established that the domain name prozacpages.com was registered and is being used in bad faith it is unnecessary to make any finding with respect to the contents of Respondent’s web site.

7. Decision:

In the complaint, Complainant requested that in accordance with paragraph 4(c)(i) of the Uniform Domain Name Dispute Resolution Policy, the administrative panel issue a decision that the disputed domain name be cancelled or transferred to Complainant. 

Complainant having proved each of the three elements set out in paragraphs 4(a)(i)(ii) and (iii) of the Uniform Domain Name Dispute Resolution Policy is entitled to a decision in favour of Complainant. The panel requires that the domain name prozacpages.com be transferred to Complainant, Eli Lilly and Company.

Dated:  June 26, 2000