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WIPO Arbitration and Mediation Center

 

EXPERT DECISION

Elli Lilly and Company v. Frank Delarue

Case No. DLI2006-0002

 

1. The Parties

The Claimant is Elli Lilly and Company, Indianapolis, Indiana, United States of America, represented by CMS Hasche Sigle, Hamburg, Germany.

The Respondent is Frank Delarue, Los Angeles, California, United States of America.

 

2. Domain Name

The dispute concerns the following domain name: <cialis.li> registered with SWITCH.

 

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2006, by email, hardcopy of which was received by the Center on October 17, 2006. On October 18, 2006, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On October 19, 2006, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of Procedure for Dispute Resolution Proceedings for .ch and .li domain names (the “Rules”), adopted by SWITCH, the .ch and .li registry, on March 1, 2004.

In accordance with Paragraph 14 of the Rules, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on October 20, 2006. In accordance with Paragraph 15(a) of the Rules, the due date for Response was November 9, 2006.

The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with Paragraph 15(d) of the Rules.

On November 10, 2006, the Center notified the Claimant accordingly, who subsequently made an application for the continuation of the Dispute resolution proceedings in accordance with specified in Paragraph 19 of the Rules and paid the required fees.

On November 21, 2006, the Center appointed Christophe Imhoos as Expert in this case. The Expert finds that it was properly constituted. In accordance with Paragraph 4 of the Rules, the above Expert has declared his independence of the parties.

 

4. Factual Background

The Claimant, Eli Lilly and Company, presents itself as a world wide operating innovator and research-based manufacturer of pharmaceutical products.

Lilly Icos LLC, a joint venture between the Claimant, Eli Lilly and Company and Icos Corporation, has developed the product Tadalafil (branded CIALIS), a pharmaceutical for the treatment of erectile dysfunction. Lilly Icos LLC is the owner of the following trademark registered in class 5 (pharmaceuticals), inter alia, in Liechtenstein:

- Trademark CIALIS, TM No. 11765, registered on July 18, 2000 (Annex 2 to the Complaint).

The Claimant registered, either in its own name or on its behalf through various affiliates, a broad array of domain incorporating its trademark CIALIS: <cialis.de> registered for Lilly Pharma Holding GmbH (the German affiliate of the Claimant), <cialis.eu> registered for Eli Lilly and Company Ltd. (the affiliate of the Claimant in the United Kingdom), <cialis.at> registered for Eli Lilly GmbH (the Austrian affiliate of the Claimant).

Lilly Icos LLC has apparently authorized the Claimant to use the trademark CIALIS and to prosecute any infringements of said (Annex 3 to the Complaint).

The disputed domain name, <cialis.li>, was registered on June 7, 2004 (Annex 1 to the Complaint).

The disputed domain name is active and used as a shopping-platform for the pharmaceutical cialis. The website is directed to French, British, Italian, Spanish, German, Swiss, Dutch, Portuguese and Belgian customers. It is available in the languages of these countries. In order to purchase cialis from the website in question, the user only has to answer a few simple questions concerning his medical history. Payment is made by credit card. The Respondent guarantees a delivery within three working days to the countries mentioned above.

 

5. Parties’ Contentions

A. Claimant

The Claimant contends that the registration and/or use of the domain name at issue infringes the Claimant’s trademark rights under the laws of Liechtenstein as well as its rights in a distinctive sign under the Liechtenstein unfair competition laws and therefore requests it be transferred to the Claimant.

In particular, the Claimant explains that the domain name <cialis.li> purports to be an official site of the Claimant or of Lilly Icos LLC, in fact, the Respondent is not in any way linked to the Claimant or to Lilly Icos LLC. While the Claimant became aware of the domain name through a person who had ordered from the website “www.cialis.li”, paid for his order and subsequently contacted the German affiliate of the Claimant to complain that his order had not been delivered.

B. Respondent

As mentioned above, the Respondent has been notified in accordance Paragraph 14 of the Rules, but has neither filed a Response nor expressed its readiness to participate in Conciliation in accordance with Paragraph 15(d) of the Rules.

 

6. Discussion and Findings

Paragraph 24 of the Rules provides that:

(a) The Expert shall decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with the Rules.

(b) The Expert may only order the deletion or transfer of the domain name, depending on the remedy requested in the request, or reject the request.

(c) The Expert shall grant the request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland or Liechtenstein.

(d) In particular, a clear infringement of an intellectual property right exists when:

(i) both the existence and the infringement of the claimed right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and

(ii) the Respondent has not conclusively pleaded and proven any relevant grounds for defence; and

(iii) the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request.

As a result of the repeated reference to “clarity” in the above mentioned provision, the right invoked by the Claimant must generally be unequivocal and the evidence of confusion or other infringement quite obvious to lead to a transfer or deletion of the disputed domain names. Doubt must benefit the Respondent I-D Media AG c. Id_Mйdia Sаrl, WIPO Case No. DCH2005-0018.

Paragraph 23 of the Rules also provides that if a party, without due cause, fails to comply with the time periods laid down in the Rules, the Expert shall decide the dispute on the basis of the case file, and that if one party, without due cause fails to comply with a provision of the said Rules, the Expert may draw such inferences therefrom as it considers appropriate.

A. The Claimant has a right in a distinctive sign

As set forth above, Lilli Icos LLC is the owner of the trademark CIALIS No. 11765 of July 18, 2000, registered in class 5 in Liechtenstein (Annex 2 to the Complaint).

The Expert finds that the Claimant has thus met its burden of proof as established by Paragraph 24(d)(i) of the Rules.

B. The registration or use of the domain name at issue constitutes a clear infringement of the Claimant’s rights in a distinctive sign

Dispute resolution practice for ccTLD’s for .ch and .li, has established that domain names identify persons, products, or services via the respective websites (see WIPO Case No. DCH2004-0017, Feldschlцsschen Getrдnke Holding AG v. Raphael Hintermann; WIPO Case No. DCH2005-0009, RE/MAX International, Inc. v. Andreas Kischka). As to the laws of Liechtenstein, the Court of Justice of Liechtenstein, in its landmark decision on the subject, has held that domain names, in principle, fall within the scope of a person’s right to bear a name (art. 42 et seq. of the Law on Individuals and Companies), and that a person may call upon the remedies provided thereunder to protect its name (decision of the Court of Justice, 25.2.00/06PH/CS). Obiter, it said that this would also apply to business names (see WIPO Case No. DCH2005-0009,above).

As to trademark and competition law, it should be noted that the relevant provisions of the laws of Liechtenstein and Switzerland are identical (see <admin.ch> for the Swiss Unfair Competition Act and the Swiss Trademark Act; <recht.li> for the Liechtenstein Unfair Competition Act, No. 240 (“UCA”), and the Liechtenstein Trademark Act, No. 232.11 (“TMA”); WIPO Case No. DCH2005-0009, above).

The Expert will therefore take guidance from precedents of the Swiss Federal Supreme Court. Because domain names can identify persons, products, or services via the respective websites, Swiss Federal Supreme Court practice recognizes that domain names are in applicable circumstances comparable to personal names, business names, and trademarks and therefore can be regarded as distinctive signs (ATF 126 III 239, 244, <berneroberland.ch>). Swiss practice further acknowledges a likelihood of confusion if the (commercial) use of a domain name similar to a name (or mark) creates the risk of a wrong association of the website (ATF 128 III 401, 402, <luzern.ch>).

Article 3 lit. d UCA prohibits measures that are likely to cause confusion with products, works, services, or the business of others (WIPO Case No. DCH2005-0009,above). In addition, under Trademark Law of Switzerland and Liechtenstein, a trademark holder may, based upon Article 13 para. 2 TMA, prohibit third parties from making commercial use of a protected sign for the same goods and services which for it is registered pursuant to Article 3 para. 1 lit. 1 a) TMA (see e.g. Solidworks Corporation v. Christoph Erni, WIPO Case No. DCH2006-0004).

The Respondent did not bring any evidence that it is a representative or a licensee of the Claimant and, furthermore, did not provide any reasonable explanation as to why he registered the disputed domain name at stake.

The Panel finds that, by registering the domain name <cialis.li>, which is identical to the Claimant’s trademark CIALIS, the Respondent has created a likelihood of confusion in so far as an Internet user is likely to assume that there is a connection between the Respondent’s website and the Claimant. The Panel finds in the circumstances that the Claimant has established that the Respondent is trying to take advantage of the Claimant’s goodwill and brand recognition. Hence, the Panel finds that the Respondent’s behaviour violates the Claimant’s right in a distinctive sign under pursuant to Articles 3 lit. d UCA and 13 para. 2 TMA.

The Panel notes Respondent’s apparent infringements of the Claimant’s trademark rights under both Articles 3 lit. d UCA and 13 para. 2 TMA and finds that the transfer of the domain name in dispute to the Claimant is justified in the circumstances. The Claimant has thus met its burden of proof under Paragraph 24(d)(ii) and (iii) of the Rules.

 

7. Expert Decision

For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name <cialis.li> be transferred to the Claimant.

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Christophe Imhoos
Expert

Dated: December 4, 2006