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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Julian Besprozvanny

Case No. D2006-0380

 

1. The Parties

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

The Respondent is Julian Besprozvanny, Tallin, Tartumsa, Estonia.

 

2. The Domain Name and Registrar

The disputed domain name <cialisonlineshop.com> is registered with EstDomains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2006. On March 27, 2006, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On March 31, 2006, EstDomains, Inc. 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. 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 April 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2006.

The Center appointed Adam Samuel as the sole panelist in this matter on May 4, 2006. 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

The Complainant is a joint venture between ICOS Corporation and Eli Lilly and Company. The Complainant filed for the registration of the CIALIS trademark with the United States Patent and Trademark Office in 1999. The mark was registered on the principal register on June 10, 2003. The Complainant has marketed pharmaceutical products identified by the CIALIS mark since 2003.

The disputed domain name (the “domain name”) was registered on September 27, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant owns rights to the trademark CIALIS by virtue of its registration with the United States Patent and Trademark Office and 87 registrations of the same mark covering 117 countries. Its sales of CIALIS brand products exceed $1 billion. In 1999, it registered the domain name <cialis.com> to advertise and provide information on its product. It has used <cialis.com> for this purpose since 2001.

CIALIS is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use. The addition of a descriptive word to the Complainant’s CIALIS trademark does not prevent a finding of confusing similarity. The Respondent’s addition of the terms “online” and “shop” to the trademark name does not negate the distinctiveness of the Complainant’s CIALIS mark. The disputed domain name is confusingly similar to the CIALIS mark because it incorporates the mark in its entirety. With the exception of the terms “online” and “shop,” the domain name consists of the Complainant’s CIALIS mark. It is confusingly similar to the Complainant’s CIALIS trademark.

The Respondent has no rights or legitimate interests in the domain name. The Complainant has not given the Respondent permission, authorization, consent or any license to use its CIALIS mark.

The CIALIS trademark is well-known and it is highly likely that the Respondent knew of the Complainant’s CIALIS mark at the time it registered the domain name in issue. 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. The Respondent is using the Complainant’s CIALIS trademark in the domain name to attract Internet consumers to its website on which the Respondent advertises and sells “Generic” CIALIS brand product as well as medications that compete with the Complainant’s product. The Respondent’s use of the Complainant’s CIALIS trademark wrongfully implies that the Complainant is endorsing and/or supporting the website and the products advertised thereon. The website does not state that the website is not authorized or affiliated with the Complainant.

The Respondent’s use of the Complainant’s CIALIS mark in the domain name is potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold pharmaceutical products advertised on the Respondent’s website under the mistaken impression that they are dealing with the Complainant and, therefore, will be receiving safe and effective drugs approved by the U.S. Food and Drug Administration (“FDA”) or other health authorities around the world. The Complainant’s CIALIS product is only available on a physician’s prescription and is manufactured, labeled, and sold in strict compliance with the FDA and other health authority laws and regulations. The Respondent’s inclusion of a “FDA Approved” seal on its website also misleads consumers by adding an appearance of authenticity to the products that the Respondent sells on the website. The Complainant does not make its CIALIS brand product in a “soft tab” form which is marketed through the domain name. Accordingly, that product has never been approved by the FDA.

B. Respondent

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

 

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the trademark CIALIS by virtue of its registration in the USA and elsewhere. The addition of the generic words “online” and “shop” does not remove the confusing similarity between the disputed domain name and the trademark in question.

As the Panel in Deutsche Telekom AG v. Timmy Comeau, WIPO Case No. D2003-0377 said of <Tonlineship.com>:

“The Complainant has registered the trademarks “T ONLINE” and “T-ONLINE”.

The trademark registrations are international. The trademark “T-ONLINE” is also registered as Canadian and German trademarks.

The domain name consists of the trademark of the Complainant to which the general phrase “shop” is added as a suffix. The ability of this general phrase, “shop”, to distinguish the domain name from the trademark of the Complainant is limited. The phrase “shop” is a descriptive addition. The trademarks “T-ONLINE” and “T ONLINE” are distinctive, as the letter “T” does not have a meaning.

Reference is made to the following decisions, which are particularly relevant: WIPO Case No. D2000-0253 (domain name <quixtarmortage.com> is “legally identical” to QUIXTAR trademark), and WIPO Case No. D2002-0363 (domain name <dellaboutus.com> confusingly similar to DELL trademark.).

The domain name <tonlineshop.com> is thus found to be confusingly similar to the trademarks “T-ONLINE” and “T ONLINE” in which the Complainant has rights.”

For the same reasons, the Panel finds that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not called ‘Cialis’ and does not appear to trade under that name. There is no evidence that the owner of the trademark in question, the Complainant, has authorized it to use the trademark. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the case file, and in view of the absence of a Response, 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 domain name leads to a website selling CIALIS and Viagra, a product manufactured by one of the Complainant’s competitors. The website does not indicate that CIALIS has no connection with the Respondent.

It is hard to believe that the Respondent could have selected this domain name without knowing of the Complainant’s product, ‘Cialis’, since the word has no independent meaning in any language. At best, the Respondent must have suspected that the Complainant would have registered trademark rights in the name. Nevertheless, the Respondent used that name to attract visitors to its site knowing that the Complainant had not authorized it to do so. This provides clear evidence of bad faith registration of the domain name.

Currently, the Respondent is using and knowingly infringing the Complainant’s trademark in order to attract visitors to a website to purchase drugs from it, rather than the Complainant. It is irrelevant to the question of bad faith as to whether this is likely to be successful. The drugs that can be bought through the domain name include those of the Complainant’s competitors. This just makes the absence of good faith even more apparent.

For these reasons, the Panel concludes that the domain name has been registered and is being used 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 <cialisonlineshop.com> be transferred to the Complainant.

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Adam Samuel
Sole Panelist

Dated: May 17, 2006