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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Anwarul Alam / “- -”

Case No. D2004-0793

 

1. The Parties

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

The Respondent is Anwarul Alam “- -”, C/O Alam, Anwarul, Toronto, Ontario, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <cialiscity.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2004. On October 1, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 1, 2005, Tucows transmitted by email to the Center its verification response informing that the Respondent was not listed as the registrant and providing the contact details for the administrative, billing, and technical contact of the Registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 20, 2004. The Center verified that the Complaint together with the amendment to 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 October 14, 2004. In accordance with the Rules, paragraph 5(a), the deadline to respond was November 3, 2004. The Response was filed with the Center on November 3, 2004.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on November 15, 2004. 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.

A supplemental submission was received by the Center the same time that the decision was rendered and forwarded to the Center for formatting; therefore it was unnecessary to review it.

 

4. Factual Background

The Complainant, a limited liability company registered under the laws of the State of Delaware is a joint venture between ICOS Corporation and Eli Lilly and Company, which owns the trademark CIALIS for a pharmaceutical preparation intended for the treatment of erectile dysfunction. Complainant’s rights in the CIALIS mark goes back as early as June 17, 1999, when it registered its trademark in the US and the Complainant is now the owner of more than 87 registrations of the CIALIS mark not less than 117 countries. Furthermore, applications for registration are pending in approximately 24 more countries. The Complainant also registered the domain name <cialis.com> on August 10, 1999, and is using it to advertise and to provide information regarding the pharmaceutical product CIALIS.

Respondent registered the disputed domain name <cialiscity.com> on February 4, 2004.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that its use of the CIALIS trademark pre-dates Respondent’s registration of the disputed domain names. Besides, Complainant’s decision to use the mark to identify its pharmaceutical product was made public around July 2001, as shown by media coverage of the CIALIS product and therefore well before the registrations of the contested domain name.

The Complainant contends that CIALIS is an invented word and that therefore the mark has a high degree of individuality and inherent distinctiveness.

The Complainant contends that the domain name is confusingly similar to the CIALIS mark because the disputed domain name incorporates entirely Complainant’s distinctive mark. According to the Complainant, Respondent’s addition of the descriptive word “city” to the <cialiscity.com> domain name does not prevent a finding of confusing similarity.

The Complainant contends that the disputed domain name is similar to the mark CIALIS because it incorporates the mark in its entirety, with the exception of the descriptive term ‘city’. Complainant is of the opinion that Respondent should not be permitted to use its mark in the domain name in a manner that misleads unsophisticated Internet users into believing that Respondent is an authorized distributor or reseller of Complainant’s product.

Rights or Legitimate Interests

The Complainant contends that Respondent has no legitimate rights or interests in the disputed domain name. Respondent is trading on the valuable reputation and goodwill of the mark by using it to solicit orders for counterfeit goods passed off as Complainant’s product.

The Complainant contends that Respondent’s use of a domain name that is confusingly similar to the mark is not a bona fide offering of goods or services. The domain name <cialiscity.com>, resolves to the Respondent’s website which provides links to several websites where products passed off as Complainant’s CIALIS product may be purchased. Furthermore, Respondent’s website contains numerous uses of Complainant’s CIALIS trademark. At the top of the web page associated with the <cialiscity.com> domain name, Respondent uses Complainant’s CIALIS mark both in bold print and in a font bigger than the font used for the remaining text on the web page. Such prominent use of Complainant’s trademark confuses and misleads visitors as to Complainant’s affiliation with or sponsorship of the website and the products advertised thereon. The Respondent use of Complainant’s trademark on its website, proves the Respondent knowingly registered the domain name with the intent for commercial gain by misleading and diverting Internet users to Respondent’s website and trading on the goodwill established by Complainant in its CIALIS mark.

Complainant also submits that Respondent’s website contains several hyperlinks (e.g., “Buy Generic Cialis” and “Order Cialis”) that connect the website’s viewer to a website, “www.rx-mex.com”, wherein a product being passed off as Complainant’s CIALIS brand pharmaceutical product may be purchased. According to the “www.rx-mex.com” website, RX-MEX has an affiliate program that enables an affiliate party to send Internet traffic to the “www.rx-mex.com” website and split the profit of each generated RX-MEX sale. Respondent’s provision of hyperlinks on the website associated with the <cialiscity.com> domain name that directs the website viewer to the “www.rx-mex.com” website is indicative of Respondent’s intention to commercially take advantage by using Complainant’s CIALIS mark in the domain name.

The Complainant contends that it has not given Respondent permission, authorization, consent or license to use the mark. By using Complainant’s CIALIS trademark in the domain name, as well as on the websites, Respondent is attempting to confuse consumers as to the source, sponsorship, affiliation and endorsement of the pharmaceutical products advertised on Respondent’s website.

Respondent has also included a link to Complainant’s website at the bottom of its “www.cialiscity.com” website. By using Complainant’s CIALIS trademark in the domain name and on the website, as well as providing a link to Complainant’s website, Respondent is attempting to confuse consumers as to the source, sponsorship, affiliation and endorsement of the pharmaceutical products advertised on Respondent’s website. Respondent has no legitimate interests in the domain name.

Registered and Used in Bad Faith

The Complainant contends that it has marketed and advertised its CIALIS pharmaceutical product under the CIALIS mark which a well-known trademark is. Respondent has attempted to unfairly capitalize on Complainant’s mark and goodwill. Respondent’s trading on Complainant’s goodwill in the mark, for commercial gain, is evidence of bad faith and leads the consumer into believing that Respondent is endorsed by Complainant. Therefore, Respondent registered the domain name with knowledge of Complainant’s mark and its associated pharmaceutical product.

The Complainant contends that the domain name gives the appearance that Respondent is endorsed by Complainant and that the products provided on the website associated with the domain name are connected with the genuine products provided by Complainant. Therefore, Respondent did not register the domain name without knowledge of Complainant’s CIALIS mark and its associated pharmaceutical product.

The Complainant contends that Respondent’s website includes the disclaimer that “Cialis® is a registered trademark of Eli Lilly and Company and ICOS” at the bottom of its website’s home page.

Complainant also contends that Respondent made all effort to make the Internet users believe that the website is sponsored by and or affiliated with Complainant. In addition to displaying its logo, Respondent’s website looks very similar to Complainant’s CIALIS product design, which is registered with the United States Patent and Trademark Office. Respondent also uses both green and gold colored font on the “www.cialiscity.com” website, and these are two of the dominant colors used by Complainant on its “www.cialis.com” website. Therefore, Respondent is using the website associated with the <cialiscity.com> domain name to confuse Internet users as to the source of the pharmaceutical products sold thereon.

Finally, the Complainant contends that bad faith is evidenced by Respondent’s use of the disputed domain name in a manner that is potentially harmful to the health of many unsuspecting consumers. Respondent’s website creates the false impression that those who purchase pharmaceutical products from Respondent’s website are buying safe and effective products from Complainant that have been approved by the U.S. Food and Drug Administration (“FDA”) and many other health authorities around the world. Complainant’s CIALIS product is available only on a physician’s prescription, and is manufactured, labeled, and sold in strict compliance with FDA and other health authority laws and regulations. No other product containing tadalafil, the active ingredient in CIALIS, has been approved by the FDA or any other health authority in the world. Respondent’s products available on the website have not been approved by the FDA or, to Complainant’s knowledge, any other health authority in the world. The products sold on Respondent’s website are therefore illegal and potentially dangerous.

B. Respondent

Identical or Confusingly Similar

The Respondent contends that an Internet search for the term “cialis” results over 3.2 million results in Google with complainant’s official site being at the top. Any user searching for the term “cialis” therefore will have to visit the official site before proceeding to any other. By visiting the official site, a user will be familiarized not only with the site itself but also with the logo and if later using the Respondent’s site, will not be confused with the official site since Respondent’s site lacks the official logo. Besides, the disclaimer is effective in informing users that “www.cialiscity.com” is not an official site and not endorsed or affiliated with the Complainant. A site with poor design with no banner and logo cannot be confused with an official site to any Internet user. Internet users know about the Complainant’s logo as well as the address to the official site which appears on its advertising campaign and therefore cannot confuse the Respondent’s site with the Complainant’s one.

Rights or Legitimate Interests

The Respondent contends that the disputed domain name was primarily developed based on specific interest by the site owner in the subject area. It states in the disclaimer that the site is for educational and information use only. It is the site owner’s freedom of expression and free speech exercise to develop a site related to a publicly known and widely used product.

Registered and Used in Bad Faith

The Respondent contends that the disputed domain name is not registered or used in bad faith owing to the disclaimer. By registering the disputed domain name, Respondent does not deprive the Complainant from its right to own the official site “www.cialis.com”. Besides, the linking to the official website is another element of good faith.

The Respondent requests that the Panel finds an attempt of reverse domain name hijacking in this case.

6. Discussion and Findings

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate right or interest in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The Respondent may demonstrate that it has rights or legitimate interests in respect of the domain name by proving those circumstances identified in Paragraph 4(c) of the Policy.

Evidence of bad faith registration and use of a domain name may be proven by, among other things, the circumstances identified in Paragraph 4(b) of the Policy.

Paragraph 15(a) of the Rules states that the Panel is to:

“decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant is, according to the registration certificates, the owner of numerous CIALIS marks throughout the world, and especially in the United States and Canada and has established rights in the CIALIS mark. At a minimum, that mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). As a result, the Complainant has provided sufficient evidence of its rights in the mark CIALIS.

The disputed domain name is confusingly similar to the distinctive mark as it incorporates the mark in its entirety. Respondent’s addition of the descriptive word “city” to the disputed domain name does not eliminate the confusing similarity, because the additional word does not distinguish the owner of the disputed domain names from the owner of the mark. To the contrary, the added word “city”, elusive of the location, refers back to CIALIS by suggesting an association with the owner of the mark, and thus reinforces the disputed domain name’s confusing similarity to the mark.

A domain name that incorporates a Complainant’s mark in its entirety may be confusingly similar to that mark despite the addition of other words. It is well acknowledged that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms. Pfizer Inc. v. Capital Market Advisors LLC, WIPO Case No. D2004-0733 quoting in particular Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>).

Respondent’s contentions regarding confusing similarity are irrelevant, as they do not argue on the similarity between the domain name and the mark but only between the websites’ contents.

The Panel finds that Policy 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c)(i) provides that a use is legitimate if, before any notice of the dispute, Respondent used, or has made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The Complainant has not authorized Respondent to use its distinctive marks CIALIS; therefore Respondent is neither an authorized distributor nor a licensee of the mark CIALIS. The absence of rights or legitimate interest is not in itself established by the resale or promotion of genuine goods by reference to the mark but without the authorisation of the marks’ owner.

The Respondent has not established circumstances or provided evidence to demonstrate that it has legitimate rights in the Disputed Domain Name under paragraph 4(c)(i) or 4(c)(ii) of the Policy.

The question is therefore under paragraph 4(c)(iii) whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers, or to tarnish the Complainant’s trademark.

The Panel does not accept Respondent’s allegation that it is using the website that the disputed domain name resolves to for mere information and according to free speech. In fact, Respondent’s website is not a truly informational, educational site or a forum for criticism site where the mark is not used as a trademark. On the contrary, Complainant has provided evidence that Respondent is using the contested domain name to direct Internet users to online pharmacies where products passed off as Complainant’s CIALIS products can be purchased. The Respondent is affiliated to a program enabling an affiliate party to direct Internet traffic to its website in order to earn a percentage of every customer order placed. As a result, Respondent is using the domain name for commercial purposes.

The Respondent could just as easily have exercised its right to freedom of expression by choosing a domain name which was not identical or confusingly similar to the Complainant’s trademark (Microfinancial, Inc. v. Glen Harrison, WIPO Case No. D2003-0396; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248; Myer Stores Limited v Mr. David John Singh, WIPO Case No. D2001-0763; The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823).

Turning to the disclaimer, the Panel finds that Respondent’s disclaimer is not sufficient to be accepted as a defence.

Although the disclaimer is placed on the bottom of the home page itself, it is still below the link where a customer would click to order Respondent’s products and cannot therefore be immediately noticed by the public. Said disclaimer is not effective (Pliva, Inc. v. Eric Kaiser, WIPO Case No. 2003-0316,). Besides, said disclaimer follows multiple appearances of the CIALIS trademark on the web page and is positioned underneath the links that allow a user to order Respondent’s pharmaceutical product.

The Panel finds that Policy 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel is of the opinion that the fact that Respondent is trading on the Complainant’s goodwill in the mark, for commercial purpose, is evidence of bad faith.

Besides, the disputed domain name is dedicated to attract Internet users to online pharmacies in the belief that it has some connection with the Complainant’s trademark as to source, affiliation or endorsement, whereas in fact there is no such connection. In fact, the Panel finds that the Respondent’s intention was to create a likelihood of confusion with the Complainant’s trademark as to source, affiliation or endorsement in order to attract customers for commercial gain (paragraph 4(b)(iv) of the Policy).

Respondent is using the contested domain name in a way that is potentially harmful to the consumers’ health. In fact, Respondent’s website creates the false impression that those who purchase pharmaceutical products from Respondent’s website are buying safe and effective products from Complainant that have been approved by health authority laws and regulations. Complainant contends and it is not contested by Respondent that Complainant’s CIALIS product is available only with a physician’s prescription, and is manufactured, labelled, and sold in strict compliance with US Food and Drug Administration (FDA) and other health authority laws and regulations. The products sold on Respondent’s website are therefore illegal and potentially dangerous.

Respondent has offered no evidence that it has been commonly known by the domain name. Besides, Respondent has no prior business association with Complainant.

The Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial purposes, consumers to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of his website. Respondent’s domain name diverts Internet users wishing to search Complainant’s well known mark to Respondent’s commercial website through the use of a domain name confusingly similar to Complainant’s marks.

Accordingly, for the reasons discussed above, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith.

The Panel finds that Policy 4(a)(iii) has been satisfied.

 

7. Decision

For all the above mentioned reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cialiscity.com> be transferred to the Complainant.

The Panel dismisses the allegation of Reverse Domain Name Hijacking as the Respondent has provided no grounds for this request. Further, as the Complainant has succeeded in this dispute, the Panel cannot find that this is a case of reverse domain name hijacking.


Nathalie Dreyfus
Sole Panelist

Date: November 26, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0793.html

 

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