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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Jason Kleiner

Case No. D2006-0563

 

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 Jason Kleiner, Weston, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <cialies.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2006. On May 4, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name(s) at issue. On May 5, 2006, Go Daddy Software 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 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 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2006.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on June 15, 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

Complainant Lilly ICOS LLC is a joint venture between ICOS Corp. and Eli Lilly and Co. Complainant owns a United States Trademark Registration (No. 2,724,589) for the mark CIALIS, as used on a pharmaceutical product. The mark was registered in the United States on June 10, 2003, based on an application filed on June 17, 1999.

Complainant began selling pharmaceutical products under the CIALIS mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand. Complainant began sales of the drug CIALIS in the United States in November 2003. To date, the CIALIS mark is the subject of more than 87 registrations covering more than 117 countries. In 2004, Complainant spent approximately $39 million to market and sell its CIALIS brand product worldwide and worldwide sales in 2004 totaled about $750 million. Worldwide sales in 2005 exceeded $1 billion. The CIALIS brand drug also has been the subject of extensive media coverage. See Exhibits 4-9 to the Complaint. Eli Lilly is the owner of the domain name <cialis.com> that it uses to advertise and provide information regarding its pharmaceutical product.

Respondent registered the disputed domain name, <cialies.com> on August 17, 2003. Respondent’s website advertises both generic CIALIS product and products that are competitive with CIALIS, including VIAGRA and LEVITRA. The website expressly states, “Ciales- the latest erectile dysfunction medication from Eli Lilly (see Exhibit 13 to Complaint) and “Refill- Order Ciales Eli Lilly (see Exhibit 14 to Complaint).

 

5. Parties’ Contentions

A. Complainant

Complainant maintains that the disputed domain name is confusingly similar to the CIALIS mark. It notes that Respondent has merely added the letter “e” to the mark CIALIS and contends that the deletion or addition of one letter is an insignificant change for the purposes of paragraph 4(a)(1) of the Policy. Complainant asserts that this is a case of “typo-squatting” and that such practice is intended to be confusing so that consumers, who unwittingly make common typing or spelling errors, will enter the domain name instead of the mark.

Complainant argues that Respondent has no rights or legitimate interests in the domain name. It points out that it has not given Respondent permission, authorization, consent or license to use the CIALIS mark. According to Complainant, “[d]espite this fact, … the Domain Name resolves to a website enabling Respondent to cash in on the strength of Complainant’s CIALIS mark and the reputation of the pharmaceutical product with which the CIALIS mark is associated.”

Finally, Complainant asserts that the domain name was registered and is being used in bad faith. It contends that the mere act of typo-squatting a famous mark presents ample evidence of bad faith. Complainant also maintains that the requisite “bad faith” is established by evidence that Respondent is using the CIALIS mark to attract internet users to the <cialies.com> website for commercial gain, pursuant to paragraph 4(b)(iv) of the Policy.

Complainant also emphasizes that the Respondent’s use of the CIALIS mark is potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold drugs advertised on Respondent’s website under the mistaken impression they are dealing with Complainant and are receiving sale and effective drugs approved by relevant health authorities. CIALIS, Complainant observes, is only available on a physician’s prescription and is made, labeled and sold in strict compliance with the relevant health authority laws and regulations.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant, through its ownership of registrations for the CIALIS mark and its extensive advertising and sales of the CIALIS product, has rights in the mark. As noted by Complainant, the disputed domain name merely adds the letter “e” to the CIALIS mark. Such an act of typo-squatting does not prevent a finding of confusing similarity. See Staples, Inc. Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc. v. John Sansone, WIPO Case No. D2004-0018. The mark and domain name still look and sound alike. See, e.g., National Baseball Association of Professional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (domain name <minorleaugebaseball.com> confusingly similar to mark MINOR LEAGUE BASEBALL); Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161 (domain name <hoildayinn.com> confusingly similar to mark HOLIDAY INN).

The Panel finds that the domain name <cialies.com> is confusingly similar to the mark CIALIS.

B. Rights or Legitimate Interests

The evidence establishes that Complainant has not authorized Respondent to use the mark CIALIS, or any variation thereof, as part of its domain name, or on Respondent’s website. Having regard to the Complainant’s contentions, the Panel finds that the Complainant has presented prima facie evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name. The Respondent has not submitted any Response. There is no evidence in the record that any of the circumstances set forth in paragraph 4(c) of the Policy is applicable. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The evidence supports a determination that the domain name <cialies.com> was registered and is being used in bad faith. The Panel determines that Respondent, by using the domain name <cialies.com>, is intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion as to the source of such website, and of the products offered for sale at such website, within the meaning of paragraph 4(b)(iv) of the Policy. Such a likelihood of confusion is the result not only of Respondent’s act of typo-squatting (adding the letter “e” to CIALIS) but also of Respondent’s use of the CIALIS mark and reference to the Eli Lilly name on the website itself. The potential health hazards to the general public from the use of products found on Respondent’s website is especially worrisome to the Panel. Accordingly, the Panel finds that the disputed domain name was 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 <cialies.com> be transferred to the Complainant.

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Jeffrey M. Samuels
Sole Panelist

Dated: June 20, 2006