Lexapro v. Flexapro: typosquatting or product name?
The makers of the drug and owners of the trademark LEXAPRO filed UDRPs against the owner(s) of three domains: flexapro.com, flexapro.net, and flexapro.info. The cases were semi-consolidated by a WIPO panel into two identical decisions, available here (.net and .info) and here (.com).
The Complainant argued that the flexapro domain names were typosquatting on its registered mark. Typosquatting is the practice of adding, subtracting, or rearranging letters from a domain name with high traffic numbers. A great example of this is the recent Facebook lawsuit against lots of defendants over various misspellings of its “Facebook” trademark. (I’d love to comment about that case further because there’s some interesting theories involved, but I’m involved in it as legal counsel, so that’s as far as I can go right now.)
But unlike traditional typosquatting, here the Respondent actually made/sold a product by the name Flexapro, a fact that the Panel pointed out.
Here, the Respondent chose the domain names because they are (exactly) the name of his own product.
The Panel also finds some force to the Respondent’s contention that the eye- or ear-catching feature of the disputed domain names is not “lexapro” but the initial syllable “flex”, selected by the Respondent to emphasize athletes, one of his product’s target markets. The registrar [sic; they don't necessarily provide the ad links, not sure why the Panelist thought so] apparently thought so, as “flex”, and not the Complainant, the Complainant’s products, any pharmaceutical products, the Respondent’s products, or any pain relief products, is the basis for its targeted hyperlinks. A single-letter addition or substitution does not automatically mean confusing similarity; compare the disputed domain name <ispinthebottle.com> with the complainant’s mark, ESPINTHEBOTTLE, in eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, WIPO Case No. D2004-0552. One can easily imagine circumstances where the addition of a single letter would not create confusion. (footnote omitted; emphasis added)
Still, even though this plain reading argument had some obvious merit, the Panelist was able to dispose of the case on other grounds.
The Respondent’s evidence of pre-dispute demonstrable preparations to use the disputed domain names to market his pain relief products demonstrates considerable work and expenditure, over a substantial period of time, for marketing this product. The Respondent’s showing far exceeds the relatively low threshold required to come within paragraph 4(c)(i) of the Policy. See e.g. Télévision Française 1 (TF1) v. Khaled Bitat, WIPO Case No. D2007-0137 (“Even perfunctory preparations have been held to suffice for this purpose”). Unless the Panel finds that the Respondent’s entire use of the word “flexapro” is male fide, the Respondent has made out a defense.
The Panel went on to conclude that Complainant’s request to find that the Respondent had chosen the domains specifically to free-ride on its LEXAPRO product name and trademark wasn’t persuasive, because there were other possible reasons, articulated by the Respondent, for the choice of the domain names. Again, as a Respondent, it’s sort of like a criminal defense case, where you don’t need to show what happened, you just need to show reasonable doubt about the prosecution’s theory of the case. And here there was a lot of reasonable explanation for the Respondent’s acts.
Finally, the Panel apparently believed that the Complainant was really more upset about alleged trademark infringement than it was the actual domain names themselves, and noted that a UDRP is not the proper place for a trademark lawsuit.
The Complainant’s real bone of contention with the Respondent is not about entitlement to three domain names; rather it is the asserted trademark infringement based upon the two unrelated products’ similar brand names. Again quoting from the IARAS case, supra (citation omitted):
“Trademark infringement is a far more substantial and complicated cause of action than cybersquatting, with stakes far greater than entitlement to a single domain name. The national courts exist to resolve such disputes; a Policy panel lacks jurisdiction and competence to do so.”
So it is here: the USPTO or the courts are the proper place to resolve this dispute. Under the Policy the Complainant has failed to establish that the Respondent lacks rights or a legitimate interest in the disputed domain names.
And, likewise, it failed to establish the Respondent’s bad faith in registering the domain names. It must be a depressing result (#rimshot!) for the drug manufacturer…
Tagged bad faith registration and use, denied, federal law, registered trademarks, rights or legitimate interests, WIPO