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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Kevin Adelman

Case No. D2006-0305

 

1. The Parties

Complainant is Lilly ICOS LLC, (“Complainant”), a limited liability company organized under the laws of the State of Delaware with a principal place of business in Wilmington, Delaware, represented by Baker & Daniels, United States of America. Complainant is a joint venture between ICOS Corporation and Eli Lilly and Company.

Respondent is Kevin Adelman (“Respondent”), Orlando, Florida, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <generic-cialis-prescription.com> (the “Domain Name”). The registrar is Tucows, Inc. (the “Registrar”), located in Toronto, Ontario, Canada.

 

3. Procedural History

On March 10, 2006, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint via email. On March 13, 2006 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On March 14, 2006, the Center received the hardcopies of the Complaint. Complainant paid the required fee.

On March 13, 2006, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in Respondent’s name.

The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On March 20, 2006, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On April 10, 2006, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On April 19, 2006 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.

 

4. Factual Background

On June 17, 1999, Complainant filed for registration of the CIALIS trademark (the “Mark”) with the United States Patent and Trademark Office. On June 10, 2003, the CIALIS Mark was registered on the principal register (No. 2,274,589). Complainant’s decision to use the CIALIS Mark to identify its pharmaceutical product was made public in July 2001. 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. In total, Complainant has obtained more the eighty-seven (87) registrations for the CIALIS Mark covering more than 117 countries and the CIALIS Mark is the subject of pending registration applications filed by Complainant in twenty-four (24) countries. Additionally, in the year 2004, Complainant spent approximately $39 million to market and to sell its CIALIS brand product worldwide. United States sales of the CIALIS brand product totaled more than $206 million and worldwide sales of CIALIS brand product were in excess of $550 million.

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.

Respondent registered the Domain Name on November 23, 2004.

 

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has registrations of the CIALIS Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the CIALIS Mark. 15 U.S.C. § 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the CIALIS Mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

ii. Complainant argues that the Domain Name is confusingly similar to the CIALIS Mark, pursuant to paragraph 4(a)(i) of the Policy, because it wholly incorporates the CIALIS Mark with the addition of the descriptive terms “generic” and “prescription.”

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Domain Name under paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that the only apparent purpose for Respondent’s use of the Domain Name is to drive Internet users to a website offering generic Cialis or competing products. Complainant further alleges that Respondent is receiving a fee for his click-through traffic.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) because it is not known by the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the CIALIS Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii).

Complainant alleges that the facts stated satisfy the elements of bad faith as stated in paragraph 4(b)(iv) of the Policy by using the domain name, to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s CIALIS Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

B. Respondent’s contentions

Respondent has failed to respond to Complainant’s allegations.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772.

Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and respondent would be subject to the inferences that flow naturally from the information provided by complainant: See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

ii) that Respondent has no legitimate interests in respect of the Domain Name; and,

iii) that the Domain Name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has registrations of the CIALIS Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the CIALIS Mark. 15 U.S.C. § 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the CIALIS Mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested the assertions by Complainant that it has valid registrations of the CIALIS Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the CIALIS Mark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy, paragraph 4(a)(i).

Respondent has not contested the assertions by Complainant that the Domain Name is confusingly similar to the CIALIS Mark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other descriptive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel notes that the entirety of the CIALIS Mark is included in the Domain Name. The only additional words are “generic” and “prescription” which are both descriptive in the drug industry.

Therefore, the Panel finds that the Domain Name is confusingly similar to the CIALIS Mark pursuant to the Policy, paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy, paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Domain Name. Once Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

Complainant alleges that Respondent cannot demonstrate rights or legitimate interest in the Domain Name (1) because Respondent’s driving Internet users to his website with a Domain Name confusingly similar to the CIALIS Mark and receiving a click-through fee is not a bona fide offering of goods or services, (2) Respondent is not known by the Domain Name, and (3) Respondent is not making a legitimate noncommercial or fair use of the Domain Name without the intent to derive commercial gain.

The Policy, paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:

“(i) before any notice to you [Respondent] of the dispute, your use of, or 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Complainant has sustained its burden of coming forward with evidence that Respondent lacks rights to or legitimate interests in the Domain Name.

Respondent has failed to respond to Complainant’s allegations, and the file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy, paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy, paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).

The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

“(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 web site 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 web site or location or of a product.”

Complainant alleges that the facts stated satisfy the elements of bad faith as stated in paragraph 4(b)(iv) of the Policy by Respondent using the Domain Name, to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s CIALIS Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

The Panel found above that the Domain Name is confusingly similar to the CIALIS Mark pursuant to the Policy, paragraph 4(a)(i). Respondent has not denied the allegations that he registered and is using the Domain Name for commercial purposes. Additionally, the circumstances of this file support the conclusion that Respondent is engaged in commercial activity.

The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy, paragraph 4(b)(iv).

 

7. Decision

The Panelist concludes (a) that the Domain Name <generic-cialis-prescription.com> is confusingly similar to Complainant’s registered CIALIS Mark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.