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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Levan Odilavadze

Case No. D2005-1140

 

1. The Parties

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

The Respondent is Levan Odilavadze of Tbilisi, Georgia.

 

2. The Domain Name and Registrar

The disputed domain name <about-cialis.net> (the “Domain Name”) is registered with Go Daddy Software (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 2, 2005, and in hard copy on November 8, 2005. The Center transmitted its request for registrar verification to the Registrar by email on November 4, 2005. The Registrar responded by email the same day, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction at the location of the principal office of the Registrar; and providing the contact details in respect of the registration on its Whois database; but stating that it had not received a copy of the Complaint.

On November 9, 2005, the Center notified the Complainant by email that the Complaint was deficient in that it incorrectly identified the registrar of the Domain Name. The Complainant filed an amendment to the Complaint correctly identifying the registrar by email on the same day and in hard copy on November 15, 2005.

The Center verified on November 16, 2005, that the Complaint as amended satisfied the formal requirements of 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 November 16, 2005. The respective tracking records confirm that the notifications were delivered to the sole postal and sole email addresses in the contact details on the Registrar’s Whois database, as well as to “postmaster@about-cialis.net”. The notification was also sent to the Registrar.

In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2005.

The Center appointed Jonathan Turner as the sole panelist in this matter on December 16, 2005. 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.

It seems likely that the Complainant failed to send the Complaint to the Registrar as required by the Supplemental Rules, paragraph 4(b), since the identification of the registrar in the Complaint was incorrect. However, any deficiency in this regard was cured by the Center sending a copy of the Complaint to the Registrar when it formally notified it to the Respondent.

Having reviewed the file, the Panel is satisfied that the Complaint as amended complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant supplies a pharmaceutical product for the treatment of erectile dysfunction under the trademark CIALIS. The generic name of the product is Tadalafil.

The Complainant applied for registration of the mark CIALIS in the United States on June 17, 1999, and now has registrations for this mark in respect of over 117 countries, including the Unites States.

The Complainant announced its intention to sell the product under this mark in July 2001, and its first sales were made under it in the European Union on January 22, 2003. The domain name <cialis.com> has been used for a website promoting the product since June 2001. There has been extensive worldwide publicity relating to the Complainant’s launch and sales of the product under the mark. In 2004, the Complainant spent in excess of US $39 million on marketing the product under the mark and its worldwide sales of the product under the mark exceeded US $550 million.

The Respondent registered the Domain Name on October 9, 2004, and is using it for a website which contains sets of links to four online pharmacies. The first set on the Respondent’s homepage, under the heading “Generic Cialis (Tadalafil) Drugstore”, provides links to an online pharmacy called “BudgetMedecines” at “www.budgetmedicines.com”. This purports to provide generic equivalents to the Complainant’s CIALIS product. The prices of these products are emphasized in red on the Respondent’s website as being “The Cheapest Online”.

The other sets of links, under the headings “Cialis Drugstore”, lower down the page, resolve to three online pharmacies which purport to supply the product placed on the market by the Complainant under the mark CIALIS.

“BudgetMedecines” and two of the other online pharmacies to which links are provided on the Respondent’s website operate affiliate programs under which website owners who provide such links are paid commissions on sales to Internet users who access the pharmacies’ websites via these links.

The homepage of the Respondent’s website displays, at the top, an image of the Complainant’s packaging together with the words “About-Cialis.net / Buy Cheap Cialis Online”; and, at the bottom, the words “Copyright © 2004-2005 About-Cialis.net All rights reserved / Designated trademarks and brands are the property of their respective owners.”

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its well-known and distinctive mark CIALIS, in which it has rights antedating the Respondent’s registration of the Domain Name. The Complainant submits that the addition of the generic word “about” to its mark in the Domain Name does not avert confusion.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not authorized the Respondent to use the CIALIS trademark. The Complainant alleges that the Respondent is using the Domain Name to promote competing goods, and that this does not constitute a bona fide offering of goods or services or legitimate or fair use within the meaning of paragraphs 4(c)(i) or 4(c)(iii) of the Policy.

The Complainant further contends that the Domain Name was registered and is being used in bad faith. It alleges that the Respondent is obtaining a commercial gain in the form of click-through commissions through diverting Internet users attracted to the Respondent’s website by the use of the Complainant’s mark in the Domain Name to the website of a supplier of competing generic products. The Complainant also asserts that the Respondent’s use of the Domain Name is potentially harmful to the health of unsuspecting consumers, who may purchase the generic products advertised on the Respondent’s website in the mistaken belief that they are dealing with the Complainant and will receive products approved by regulatory authorities in the United States and other countries.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

As mentioned above, the Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove that the Domain Name is identical or confusingly similar to a mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith. Each of these requirements will be considered in turn:

A. Identical or Confusingly Similar

It is clear that the Complainant has registered rights in the mark CIALIS in numerous countries.

The Panel is satisfied that the Domain Name is confusingly similar to this mark. The addition of the generic word “about” and the generic top level domain suffix “.net” do not avoid confusion, since at least some Internet users are liable to assume that the Domain Name identifies a website of or approved by the Complainant providing information about the Complainant’s product sold under the mark CIALIS.

The Panel accordingly concludes that the first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel considers that the use made of the Domain Name by the Respondent has not been in connection with a bona fide offering of goods or services so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy.

The Respondent’s use of the Domain Name is not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods or services placed on the market by its owner (as to which, see Koninklijke Philips Electronics N.V. v. Cun Siang Wang, WIPO Case No. D2000-1778). In accordance with the propositions laid down in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903, and followed in many subsequent cases (see particularly Deutsche Telekom AG v. Mighty LLC/Domain Admin, WIPO Case No. D2005-0027), this principle can only be invoked under the Policy if (i) the Respondent is actually offering the goods or services at issue; (ii) the Respondent uses the website to sell only the trademarked goods or services; and (iii) the website accurately discloses the Respondent’s relationship (or otherwise) with the trademark owner.

In this case, (i) the Respondent is not itself a supplier of the Complainant’s product; (ii) the Respondent’s website promotes an online pharmacy which supplies products of the Complainant’s competitors as well as (and more prominently than) online pharmacies supplying products of the Complainant; and (iii) the Respondent’s website does not contain any clear indication that it is not authorised by the Complainant. Indeed, the Respondent’s website exacerbates confusion by its use of an image of the Complainant’s product, the phrase “Buy Cheap Cialis Online”, and the term “Generic Cialis” for products which have not been sold or approved by the Complainant. The Panel also considers that the trademark and copyright notices in the footer are more likely to reinforce the impression that it is a website of the Complainant than to dispel such confusion.

The Panel is satisfied that the Respondent has not been commonly known by the Domain Name and that he is not making legitimate non-commercial or fair use of it. On the contrary, the Panel finds that the Respondent is using the Domain Name to obtain commercial gain by misleadingly diverting consumers seeking the Complainant’s website or product to his website which promotes a supplier of competing products.

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel is satisfied by the undisputed evidence that the Respondent is using the Domain Name to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark in order to obtain commercial gain in the form of click-through commissions.

The Panel considers that Internet users are liable to assume that the Domain Name indicates a website authorized by the Complainant, and to be diverted through the sponsored links on that website to a supplier selling products which have not been sold or approved by the Complainant.

This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy. This evidence stands unrebutted.

The Panel concludes that the third requirement of the Policy is satisfied.

 

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 <about-cialis.net> be transferred to the Complainant.


Jonathan Turner
Sole Panelist

Dated: December 24, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1140.html

 

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