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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

LILLY ICOS LLC v. Bell Trans Investments

Case No. D2006-1034

 

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 Bell Trans Investments, Limassol, Cyprus.

 

2. The Domain Names and Registrar

The disputed domain names <nationalcialis.com>, <netcialis.com>, <quickcialis.com>, <worldcialis.com> are registered with TierraNet d/b/a DomainDiscover.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2006. On August 15, 2006, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain names at issue. On August 16, 2006, TierraNet d/b/a DomainDiscover 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 August 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2006.

The Center appointed Teruo Doi as the sole panelist in this matter on September 21, 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 facts stated in the Complaint are as follows:

1) The Complainant is the owner of the CIALIS trademark since June 17, 1999, when it filed an application for its registration with the United States Patent and Trademark Office. The CIALIS trademark was registered in the principal register (Registration No. 2,724,589) on June 10, 2003. The Complainant began selling pharmaceutical products under the CIALIS mark on January 22, 2003, in the European Union, and then in Australia and New Zealand, and began sales in the United States in November 2003. The Complainant obtained more than 87 registrations for the CIALIS mark covering more than 117 countries, and the Complainant’s applications for registration of this mark have been pending in 24 countries. Detailed information of the Complainant’s registrations and applications for the CIALIS mark is set forth in Annex 6 to the Complaint, and copies of the certifications of registration of the CIALIS mark are attached to the Complaint as Annex 7.

2) In 2004, the Complainant spent approximately 39 million dollars to market its CIALIS brand products worldwide, and the sale of CIALIS brand products in the United States totaled more than 206 million dollars, and worldwide sale of this product exceeded 550 million dollars (Annex 8). In 2005, the sales of CIALIS brand products in the United States and worldwide increased 32% and 35% respectively (Annex 9). To date, the Complainant’s sale of CIALIS products exceeds 1 billion dollars.

3) The Complainant began filing trademark applications for the CIALIS mark approximately three and one-half (3 1/2) years prior to the first public sale of products bearing the CIALIS mark. This necessary delay between trademark selection and commercialization of the product identified by that trademark is due to the nature of the Complainant’s business of selling pharmaceutical products that are subject to regulation which often takes a lengthy period of time before the products can be sold to the public and, hence, such a delay does not lessen the Complainant’s rights in its CIALIS trademark.

4) The Respondent registered the Domain Names at issue on January 11, 2006, and, hence, the Complainant’s rights in the CIALIS trademark predate the Respondent’s registration date, and the Complainant has both senior and exclusive rights in the CIALIS mark. The 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 products. The <cialis.com> domain name was registered by Eli Lilly and Company on August 10, 1999 (Annex 11). The Complainant has used this domain name to identify a website since at least June, 2001, and printed representative portion of this website is attached as Annex 12.

 

5. Parties’ Contentions

A. Complainant

On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Names <natuionalcialis.com>, <netcialis.com>, <quickcialis.com> and <worldcialis.com> be transferred to the Complainant, in accordance with Paragraph 4 of the Policy, on the following grounds:

(1) The Domain Names registered and used by the Respondent are confusingly similar to the Complainant’s CIALIS mark: The Complainant’s CIALIS mark is an invented word having a high degree of individuality, inherent distinctiveness and no common colloquial use. With the exception of the terms “national”, “net”, “quick” and “world”, the Domain Names at issue consist of the Complainant’s CIALIS mark in its entirety. The addition of a descriptive word to the Complainant’s CIALIS mark does not prevent the finding of confusing similarity. See, Lilly ICOS LIC v. John Hopking/Neo net Ltd, WIPO Case No. D2005-0694 (Annex 10, C); and other WIPO Domain Name cases (Annex 10, D, E, F, G, and H). The Respondent’s addition of the terms “national”, “net”, “quick” and “world” to the Domain Names does not negate the distinctiveness of the Complainant’s CIALIS mark. 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 Parats, WIPO Case No. D2000-0047 (Annex 10, I). In the case at hand, the Domain Names are confusingly similar to the CIALIS mark because they incorporate the mark in its entirety. With the exception of the terms “national”, “net”, “quick” and “world,” the Domain Names consist of Complainant’s CIALIS mark. Thus, the Respondent’s Domain Names are confusingly similar to the Complainant’s CIALIS trademark.

(2) The Respondent has no rights or legitimate interests in respect of the Domain Names:

(i) Respondent is using the Domain Names for commercial gain: It is apparent from the websites associated with the domains <nationalcialis.com> and <netcialis.com> that the Respondent is attempting to capitalize on the valuable reputation and goodwill of the CIALIS mark to direct Internet users to websites advertising both “Generic” CIALIS product and competitive products to the Complainant’s product, such as Viagra and Levitra (Annex 13) The Respondent’s homepage for the domain <nationalcialis.com> serves as a jump-link to <bestnum1.com> which prominently displays a link to “Generic Cialis” (Annex 13). When a consumer clicks on the “Generic Cialis” link, the consumer is directed to a webpage that advertises “Generic Cialis” (Annex 14) The “Click Here to Order” link on this webpage serves as a jump-link to a third party website, “www.generic-pharmacy.net” which sells “Generic Cialis” (Annex 15).

The Respondent is using the CIALIS mark in the domain <nationalcialis.com> to draw consumers to the website and then direct them to another website, “www.generic-pharmacy.net” (Annex 15). <generic-pharmacy.net> describes an affiliate program (Annex 16) to which the Respondent likely belongs. See, Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042 (Annex 10, E). Accordingly, the Respondent likely receives a payment each time it links a consumer to the “www.generic-pharmacy.net” page and the consumer purchases a product therefrom.

With respect to the domain <netcialis.com>, the homepage contains a link entitled “More Links” (Annex 17). When a consumer clicks on “More Links,” he is taken to a webpage that contains numerous links (Annex 18). When a consumer clicks on the link entitled “Link Resources 1,” he is directed to another page which includes additional links such as “Cheap Cialis” (Annex 19). When this particular link is clicked, a consumer is automatically redirected to the website “www.bestnum1.com” (Annex 20). As noted above, the website at “www.bestnum1.com” advertises and sells “Generic Cialis” by auto-redirecting consumers to “www.generic-pharmacy.net” (Annex 15). Because “www.generic-pharmacy.net” advertises an affiliate program (Annex 16), the Respondent likely receives compensation each time it links a consumer to this website and the consumer purchases product. By using the mark CIALIS in the domains <nationalcialis.com> and <netcialis.com>, the Respondent is luring consumers in search of CIALIS brand product to websites which advertise and sell “Generic” CIALIS product.

While the websites for “quickcialis.com” (Annex 21) and “worldcialis.com” (Annex 22) are currently inaccessible, the Respondent does not appear to have any legitimate interest in these particular domains either, especially in light of the Respondent’s activities noted above with respect to the domains <nationalcialis.com> and <netcialis.com>.

The Respondent’s use of the Domain Names 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. 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, 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. None of these factors are applicable in this case.

(ii) Respondent is not authorized by Complainant to use the CIALIS trademark: The Complainant has not given the Respondent permission, authorization, consent or license to use its CIALIS mark (Annex 23). Despite this fact, however, currently two of the Domain Names resolve to websites enabling the Respondent to cash in on the strength of the Complainant’s CIALIS mark and the reputation of the pharmaceutical product with which the CIALIS is associated. In addition, without authorization, the Respondent registered all four of the Domain Names which incorporate the Complainant’s CIALIS mark in its entirety.

(3.) The Domain Names at issue were registered and are being used in bad faith: The Respondent simultaneously registered four (4) different domain names that incorporate the Complainant’s well-known CIALIS mark in its entirety. Moreover, two of these domains are currently actively being used to attract Internet traffic to the Respondent’s websites. While the other two domains <quickcialis.com> and <worldcialis.com> are currently inaccessible, an inference may be drawn that the Respondent’s activities evidence the Respondent’s hope to capitalize on the reputation of the Complainant’s CIALIS mark by registering all four Domain Names. In light of this, the Respondent’s registration of the Domain Names constitutes a pattern of conduct directed against the Complainant, stopping it from reflecting its well-known CIALIS mark in corresponding domain names. Such activity amounts to bad faith. Additionally, even though the domains <quickcialis.com> and <worldcialis.com> are currently inaccessible, inactivity does not necessarily negate bad faith on the part of the Respondent with respect to those particular domains.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4 (a) of the Policy requires the Complainant to prove that each of following elements is present:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant 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.

The Panel notes that the Respondent has failed to respond to the Complaint within the

stipulated time and, as such, does not contest the facts asserted by the Complainant in

the Complaint.

A. Identical or Confusingly Similar

Each of the Domain Names at issue, <nationalcialis.com>, <netcialis.com>, <quickcialis.com> and <worldcialis.com> registered and used by the Respondent is identical or confusingly similar to the Complainant’s “CIALIS” mark registered worldwide and used for its pharmaceutical products.

The Complainant’s trademark “CIALIS” is a coined word adopted by the Complainant to identify the Complainant’s pharmaceutical products. The Complainant’s “CIALIS” mark is registered in the Principal Register (Registration No. 2,724,589) of the United States Patent and Trademark Office on June 10, 2003, based on an application filed on June 17, 1999. The Complainant successively registered the “CIALIS” mark in more than 117 countries (Annex 6). In 2004, the Complainant spent a large sum of money to market and sell its CIALIS brand product worldwide (Annex 7). In 2005, the sale of CIALIS brand products increased dramatically (Annex 9). In addition, the Complainant used the domain name <cialis.com> to advertise and provide information on its pharmaceutical products since at least June, 2001. (Annex 11 and 12).

The Domain Names at issue all consist of the word “cialis” combined with a descriptive or less-distinctive word such as “national”, “net”, “quick” or “world”. The Respondent registered the Domain Names at issue in January 2006.

Based on these facts, the Panel finds that the Domain Names at issue registered by the Respondent are confusingly similar to the Complainant’s trademark “CIALIS.” In addition, if the descriptive or less-distinctive prefix “national”, “net”, “quick” or “world” is disregarded from each of the Respondent’s Domain Names, the Panel finds that each of the Domain Names at issue is substantially identical to the Complainant’s trademark “CIALIS.”

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Names at issue on the following grounds: It is clearly established that the Respondent is using the CIALIS mark in the domains <nationalcialis.com> and <netcialis.com> to capitalize on the valuable reputation and goodwill of the CIALIS mark to direct Internet users to websites advertising both “generic” CIALIS product and competitive products to the Complainant’s products. The websites for <quickcialis.com> and <worldcialis.com> are currently inaccessible, but this fact does not lead to the finding that the Respondent have any legitimate interest in these particular domains. The Complainant has never given the Respondent permission, authorization, consent or license to use its CIALIS mark for the Domain Names at issue. None of the circumstances enumerated in paragraph 4 (c) of the Policy seem to be present. Based on the record and in the absence of a rebuttal by the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names at issue.

C. Registered and Used in Bad Faith

The Domain Names at issue have been registered and are being used in bad faith by the Respondent on the following grounds: The Complainant adopted the trademark CIALIS in 1999 and secured trademark registrations in major countries of the world by the end of 2003 or the beginning of 2004 (Annex 6). The Complainant spent a large sum of money to promote the sale of its pharmaceutical products (Appendix 8 and 9). The Complainant’s trademark “CIALIS” is a coined word having an inherent distinctive quality and, due to the Complainant’s promotional efforts, it became widely known in the world market of pharmaceutical products when the Respondent registered the Domain Names at issue in January 2006. Each of the Domain Names incorporates the “CIALIS” mark in its entirety, and this mark is the dominant part in each of the Domain Names at issue. As for the Domain Names <nationalcialis.com> and <netcialis.com>, it is clearly established that confusion has been created over the Internet falling under Paragraph 4(b)(iv) of the Policy. As to the Domain Names <quickcialis.com> and <worldcialis.com>, the possibility of confusion over the Internet is eminent. Accordingly, in view of the particular circumstances of this case the Panel finds that all of the Domain Names at issue have been registered and are 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 names,<nationalcialis.com>, <netcialis.com>, <quickcialis.com> and <worldcialis.com> be transferred to the Complainant.


Teruo Doi
Sole Panelist

Date: October 3, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1034.html

 

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