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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. WhoisGuard Protected

Case No. D2005-0478

 

1. The Parties

The Complainant is Lilly ICOS LLC, Indianapolis, Indiana, United States of America, represented by Baker & Daniels, United States of America.

The Respondent is WhoisGuard Protected, Westchester, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <buycheapcialis.biz> (hereinafter the “Domain Name”), is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2005. On May 3, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 4, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center on May 10, 2005 that the Complaint was administratively deficient, the Complainant filed an amendment to Complaint on May 11, 2005.

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 May 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2005.

The Center appointed Terrell C. Birch as the sole panelist in this matter on June 23, 2005. 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

Complainant’s rights in the CIALIS mark date back to as early as June 17, 1999, when it filed for registration of the CIALIS trademark with the United States Patent and Trademark Office. The CIALIS mark was registered on the principal register (Registration No. 2,724,589) on June 10, 2003, giving Complainant a constructive use date of June 17, 1999, and priority over those with competing claims to the CIALIS mark based upon later use. 15 U.S.C. § 1057(c).

Complainant’s decision to use the CIALIS trademark to identify its pharmaceutical product was made public in July 2001. Substantial early media coverage ensued. Complainant began selling pharmaceutical products identified by the CIALIS mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand. Complainant began sales in the United States in November, 2003. Media coverage of Complainant’s launch of its product in various markets has been substantial. In total, Complainant has obtained more than eighty-seven (87) registrations for the CIALIS mark covering more than 117 countries, and the CIALIS trademark is the subject of pending registration applications filed by Complainant in twenty-four (24) countries. Additionally, in 2004, Complainant spent approximately 39 million dollars to market and sell its CIALIS brand product worldwide, U.S. sales of the CIALIS brand product totaled more than $206 million dollars, and worldwide sales of CIALIS brand product were in excess of $550 million dollars. For these reasons, it is reasonable to infer that the CIALIS trademark is well-known.

Complainant began filing trademark applications for the CIALIS mark approximately three (3) and one-half (1/2) years prior to the first public sale of product bearing the CIALIS mark. This necessary delay between trademark selection and commercialization of the product identified by that trademark does not lessen Complainant’s rights in its CIALIS trademark. See, Eli Lilly and Company v. Xigris Internet Services, WIPO Case No. D2001-1086 (November 22, 2001).

 

5. Parties’ Contentions

A. Complainant

The following factual and legal contentions have been presented by Complainant.

A. The Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

(1) Complainant’s use and registration of the CIALIS trademark pre-dates Respondent’s registration of the Domain Name

Because Respondent registered the Domain Name on November 26, 2004, Complainant’s rights in the CIALIS trademark predate Respondent’s registration date, and Complainant has both senior and exclusive rights in the CIALIS mark. Complainant also has an Internet presence, primarily through the website accessed by the domain name <cialis.com>, that it uses to advertise and provide information regarding its pharmaceutical product. The <cialis.com> domain name was registered by Eli Lilly and Company on August 10, 1999. Complainant has used this domain name to identify a website since at least June, 2001.

(2) The CIALIS mark is distinctive

The CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use. The CIALIS mark is a distinctive identifier of the source of Complainant’s pharmaceutical product, and Respondent’s addition of the term “buycheap” to the Domain Name does not negate the distinctiveness of Complainant’s CIALIS mark. Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004).

(3) The Domain Name is confusingly similar to the CIALIS Mark

The addition of a term or terms to Complainant’s CIALIS trademark does not prevent a finding of confusing similarity. See Lilly ICOS LLC v. Dan Eccles, D2004-0750 (WIPO, November 8, 2004) (determining that the addition of the words “drug”, “online”, “buying” and “guide” to Complainant’s registered CIALIS trademark did not eliminate the confusing similarity between the CIALIS mark and the <cialis-drug-online-buying-guide.com> domain name because the additional words did not distinguish the owner of the disputed name from Complainant); Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891 (January 28, 2005) (finding the addition of the generic word “generic” and the generic letter “a” to Complainant’s CIALIS mark did not prevent the domain name from being confusingly similar to the Mark); Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794 (December 20, 2004) (determining that the respondent’s addition of the words “apcalis” or “viagra” to the disputed domain names <cialisapcalis.com> and <cialis-viagra.info> did not eliminate the confusing similarity, and that the additional words referred back to the CIALIS mark by suggesting an association with Complainant, thereby reinforcing the disputed domain names’ confusing similarity to the CIALIS mark); Lilly ICOS LLC v. Anwarul Alam/”- -”, WIPO Case No. D2004-0793 (November 26, 2004) (determining that the addition of the descriptive word “city” to the disputed domain name <cialiscity.com> did not eliminate the confusing similarity).

Further, when a domain name incorporates a distinctive mark in its entirety, that creates sufficient similarity between a mark and a domain name to render the domain name confusingly similar. EAuto v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (March 24, 2000).

The Domain Name, <buycheapcialis.biz> is confusingly similar to the CIALIS mark because it incorporates the term CIALIS in its entirety. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004) (finding that the disputed domain name <cialis-drug-online-buying-guide.com> was confusingly similar to the CIALIS trademark because it incorporated the distinctive CIALIS mark in its entirety). Other than the descriptive term “buycheap” the Domain Name consists of Complainant’s CIALIS mark. Thus, Respondent’s Domain Name is confusingly similar to Complainant’s CIALIS trademark.

B. The Respondent has no rights or legitimate interests in the Domain Name

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

(1) Respondent is using the Domain Name for improper commercial gain

It is obvious from a superficial review of Respondent’s website that the site is entirely devoted to offering generic versions of branded pharmaceutical products. One’s eye is immediately drawn to a large box that reads:

Generic Cialis

(Tadalafil 20mg)

Save 80%

Retail Price $19.95

$2.49

Immediately below this bold reference to generic cialis is a generic cialis order form offering various quantities of generic cialis. Respondent also offers a product called “Generic Cialis Soft Tabs”. One can purchase generic cialis soft tabs in either mint or lemon flavor. Any form of generic cialis is illegal in the United States. And any offering of cialis soft tabs is illegal by definition since Complainant does not offer its product in such a form. Respondent is directly profiting from the sale of illegitimate versions of Complainant’s CIALIS brand product.

(2) Respondent is not authorized by Complainant to use the CIALIS trademark

In the present case, Complainant has not given Respondent permission, authorization, consent or license to use its CIALIS mark in the Domain Name. Despite this fact, Respondent is using the Domain Name to profit from the strength of Complainant’s CIALIS brand and the reputation of the pharmaceutical products with which it is associated.

(3) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services

When the holder of a domain name that is confusingly similar to an established mark uses the domain name to divert Internet users to another’s competing illegitimate website for commercial gain, such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Paragraphs 4(c)(i) and (iii) of the Policy. See G. D. Searle & Co. v. James Mahoney, Case Number FA 112559 (National Arbitration Forum, June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy Paragraph 4(c)(i)); See also G.D. Searle & Co. v. Fred Pelham, Case Number FA 117911 (National Arbitration Forum, September 19, 2002) (finding that because the respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the respondent was opportunistically using complainant’s mark in order to attract Internet users to its website).

Respondent’s use of a confusingly similar Domain Name to link consumers to a site that offers “generic cialis” or “generic cialis soft tabs” does not amount to a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy. Additionally, the safety of a “generic” version of Complainant’s CIALIS brand product is suspect and is also evidence that Respondent’s use of the Domain Name is not a bona fide offering of goods. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004).

Because Complainant has U.S. patent rights in the CIALIS brand pharmaceutical product, the sale of any “generic” version of Complainant’s pharmaceutical product in the U.S. is unlawful. Therefore, because Respondent is using a confusingly similar Domain Name to attract Internet consumers to its website to sell them unlawful generic cialis products, comprising untested chemical compositions, Respondent’s use of the Domain Name is not a bona fide offering of goods.

C. The Domain Name was registered and is being used in bad faith

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

Complainant has a June 17, 1999, constructive use date of the CIALIS trademark, and media coverage of the CIALIS brand product is dated as early as 2001. Complainant has extensively marketed and advertised its pharmaceutical product using the CIALIS trademark. In fact, in 2004, the year that Respondent registered the Domain Name, Complainant spent $39 million dollars to market and sell its CIALIS brand product, U.S. sales totaled $206.6 million dollars, and worldwide sales of CIALIS brand product were in excess of $550 million dollars. Therefore, because it is reasonable to infer that the CIALIS trademark is well-known, it is highly likely that Respondent knew of Complainant’s CIALIS mark at the time of registering the confusingly similar Domain Name.

According to Policy Paragraph 4(b)(iv), evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (National Arbitration Forum, March 21, 2000) (finding bad faith where the respondent registered and used the disputed domain name to attract users to a website sponsored by the respondent). As described above, Respondent is using Complainant’s CIALIS trademark in combination with the powerful phrase buy cheap in the Domain Name in to convert consumers otherwise interested in Complainant’s product to its “www.buycheapcialis.biz” website. At this site, consumers are directly offered generic cialis in two different forms.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel adopts the factual and legal contentions set forth by the Complainant in Section 4 and Paragraphs A.(1)-(3) under Section 5.A above, respectively.

Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s CIALIS trademark or service mark and that Complainant has superior rights in such mark(s) to Respondent.

B. Rights or Legitimate Interests

The Panel adopts the factual and legal contentions set forth by the Complainant in Section 4 and Paragraphs B.(1)-(3) under Section 5.A. above, respectively.

There is no evidence in the case file that Respondent has any rights or legitimate interests in the Domain Name. The Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel adopts the factual and legal contentions set forth by the Complainant in Section 4 and Paragraph C under Section 5.A above, respectively.

It is very likely that the Respondent had prior knowledge of the Complainant and its trademark when it registered the Domain Name.

Accordingly, the Panel finds that Respondent has registered and used the Domain Name 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, <buycheapcialis.biz>, be transferred to the Complainant.


Terrell C. Birch
Sole Panelist

Dated: July 7, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0478.html

 

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