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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eli Lilly and Company v. Ron Stopchycki

Case No. D2007-1885

1. The Parties

The Complainant is Eli Lilly and Company, Indianapolis, Indiana of United States of America, represented by Baker & Daniels.

The Respondent is Ron Stopchycki, Kanata, Ontario of Canada.

2. The Domain Name and Registrar

The disputed domain name <genericzyprexa.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2007. On December 21, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On December 21, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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”), 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 the Respondent of the Complaint, and the proceedings commenced on January 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2008. The Response was filed with the Center on January 23, 2008.

The Center appointed Alfred Meijboom as the sole panelist in this matter on January 31, 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

The Complainant holds many ZYPREXA trademark registrations for pharmaceutical preparations, namely anti psychotics, worldwide. The Canadian word mark ZYPREXA (no. 811,147) was applied for on April 29, 1996 and has been registered since May 11, 1998.

The Domain Name was registered on July 9, 2007.

The Domain Name leads to a website where one can buy both olanzapine, a generic for the brand product ZYPREXA, and the brand product ZYPREXA.

5. Parties’ Contentions

A. Complainant

The Complainant has contended that the Domain Name is confusingly similar to its well-known ZYPREXA trademark for two reasons. Firstly, the addition of a descriptive word, such as “generic”, to a trademark does not prevent a finding of confusing similarity. Secondly, the Domain Name is confusingly similar to the ZYPREXA mark because it incorporates the trademark in its entirety.

The Complainant has put forward that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to the Complainant by using the mark ZYPREXA in the Domain Name, the Respondent is luring consumers in search of ZYPREXA brand product to its website which advertises and sells various “generic” and brand name pharmaceutical products. The Respondent’s use of ZYPREXA also wrongfully implies that the Complainant is endorsing and/or supporting the website and the products advertised thereon. Moreover, the Complainant has stated that it has not given the Respondent permission, authorization, consent or license to use its ZYPREXA mark.

The Complainant has contended that the ZYPREXA trademark is well-known and that for that reason it is highly likely that the Respondent knew of the Complainant’s ZYPREXA mark at the time of registering the Domain Name in July 2007. According to the Complainant the Domain Name was not only registered in bad faith but is also being used in bad faith, since the Respondent is using the ZYPREXA mark in the Domain Name to attract Internet consumers to its website from which the Respondent derives a financial benefit.

The Complainant has asked for the transfer of the Domain Name.

B. Respondent

The Respondent has asked for the transfer of the Domain Name to be denied for the following reasons.

The Respondent has contested that the Domain Name is confusingly similar to the ZYPREXA trademark. When any medication is prefaced by the term generic, it is common knowledge that the particular medication associated with the term generic is not the same as or manufactured by the entity that may hold title to the original name or trademark used in the marketplace. According to the Respondent the Domain Name implies that that there is no association or confusion with the trademarked brand name ZYPREXA, but in fact by definition, infers the opposite: that there is no connection or confusion.

The Respondent has stressed that the Complainant’s references to previous cases should not be viewed as precedent setting and as a guide for this case, but that each case should be judged based on its individual merits, including this one.

The Respondent has refuted that he “is luring consumers in search of ZYPREXA brand product to its website which advertises and sells various generic and brand name pharmaceutical products”. The site sells only two types of products and specifically advertises only two: olanzapine (the generic term for the brand name ZYPREXA) and ZYPREXA. The home page of the website specifically states that the Domain Name is owned and operated by Canadian Prescription Savers, Ltd.

The Respondent has put forward that the Complainant’s suggestion that the Respondent is not authorized to use the ZYPREXA trademark, means that they do not like competition and as Olanzapine is made by their competitors, they will not endorse the Respondent selling their brand name.

The Respondent further contended that the Domain Name was registered and is used in good faith. Indeed the Respondent sells the brand name ZYPREXA and its generic counterpart olanzapine and obviously for commercial gain. The Respondent is of the opinion that it is in the consumers’ best interest to inform them of all available products for their particular health condition and allow them to make a choice, if it is not already made by their health care practitioner. The Respondent has asserted that it would be considered bad faith only to advertise ZYPREXA.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the requested remedy can be granted if Complainant asserts and proves each of the following:

A. the domain name is identical or confusingly similar to a trademark or a service mark in which complainant has rights; and

B. the respondent has no rights or legitimate interests in respect of the domain name; and

C. the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant holds several ZYPREXA trademark registrations, including a Canadian registration (no. 811,147). The Panelist finds that the Complainant has rights in the ZYPREXA trademark.

For the purpose of assessing whether the Domain Name is identical or confusingly similar to the ZYPREXA trademark in which the Complainant has rights, the “.com” suffix is disregarded, it being a necessary component of a domain name. The difference between the ZYPREXA trademark and the Domain Name is that it is prefaced by the word “generic”.

It has been well-established by panels in previous WIPO UDRP decisions that the mere addition of a common or descriptive word, such as “generic”, to a trademark is not sufficient to avoid a finding of confusing similarity with that trademark.

The Respondent has, however, put forward that this should not be the case in this particular situation since Respondent claims it is common knowledge that, when a particular medication brand is used in combination with the term “generic”, the medication is expressly not manufactured by the trademark holder. Therefore, the Respondent has argued that the Domain Name is not confusingly similar to the Complainant’s ZYPREXA trademark.

The Panelist disagrees with the Respondent. ZYPREXA is the distinctive element in the Domain Name and fixes the (primary) attention. Furthermore, the mere fact that trademark is used in a domain name in its entirety, could very well give the impression that there is a (direct or indirect) connection with the trademark holder. The argument that the website which is linked to the Domain Name clearly mentions that Canadian Prescription Savers, Ltd is the owner is insufficient to avoid confusion at the initial interest stage before the user opens the website and reads that statement. Moreover, the statement is not prominently displayed on the website, as the Panelist observed when he examined the website under the Domain Name, so that a user can easily fail to notice the statement.

For these reasons the Panel considers the Domain Name <genericzyprexa.com> to be confusingly similar to the Complainant’s ZYPREXA trademark.

B. Rights or Legitimate Interests

The Panelist stresses that there is a difference between rights or legitimate interests to sell ZYPREXA branded drugs and its generic active ingredient olanzapine, and rights or legitimate interests to include a trademark in one’s domain name. The Panelist will examine the latter, the first is not at issue in these proceedings.

The Complainant has undisputedly stated that it has not authorized the Respondent to use its ZYPREXA trademark. The Respondent appears to be of the opinion that he has a right or interest to use the term “generic” in combination with the trademark ZYPREXA in the Domain Name, because he offers olanzapine, which is the generic drug of the ZYPREXA branded drug.

The Panelist cannot agree. It is not necessary to use the ZYPREXA trademark in the Domain Name to refer to olanzapine and it can even be considered to be harmful to the ZYPREXA mark because it leads to a website where a competitive product is sold. By using the ZYPREXA trademark in the Domain Name, the Respondent takes advantage from the reputation of the trademark ZYPREXA which was acquired by investments of the Complainant, in order to attract visitors to his website. Therefore, the Panelist does not consider the Respondent’s use of the Domain Name to be use in connection with the bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. Nor has the Panelist found any other evidence in support of the position that the Respondent has rights or legitimate interests in the Domain Name. Consequently, the Panelist concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where Respondent has “intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service offered on Respondent’s website or location”. The evidence supports a conclusion of bad faith here.

The Panelist already concluded that there is confusing similarity between the ZYPREXA trademark and the Domain Name. Moreover, it is not refuted by the Respondent that he was not familiar with the Complainant’s ZYPREXA trademark and that he did not register the Domain Name with this trademark in mind, nor that he is using the website linked to the Domain Name for non commercial purposes.

Accordingly, the Panelist concludes that the Respondent registered and is using the Domain Names in bad faith.

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 <genericzyprexa.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist

Dated: February 14, 2008