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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Anton Berezin
Case No. D2007-0281
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 Anton Berezin, Portal, Sim, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <drugcialis.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2007. On February 27, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On February 28, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com 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, 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 March 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2007.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 13, 2007. 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 filed for registration of the CIALIS trademark with the United States Patent and Trademark Office in June 1997 and the mark was registered on the principal register on June 10, 2003. The Complainant announced its decision to use the CIALIS mark in July 2001 and began selling pharmaceutical products identified by the CIALIS trademark in January 2003. The mark is now registered in more than 117 countries worldwide.
The Complainant spends several million USD a year promoting the CIALIS brand and worldwide sales exceed 550 million USD.
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 product.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
The Complainant contends that 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 submits that the CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use.
The Complainant contends that the case at hand, the disputed domain name is confusingly similar to the CIALIS mark because it incorporates the mark in its entirety. The addition of a descriptive word “drug” to the Complainant’s CIALIS trademark does not prevent a finding of confusing similarity, which has been clearly stated in several proceedings under the UDRP many of which concerned domain names that included the CIALIS trademark.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends it is apparent from the website associated with the Domain Name that the Respondent is attempting to capitalize on the valuable reputation and goodwill of the CIALIS mark to direct Internet users to a website advertising and selling “generic” CIALIS product.
When a consumer clicks on this link, the consumer is directed to another website, “www.pharmamedics.com”. This webpage describes an affiliate program to which the Respondent likely belongs. By linking consumers to this site, the Respondent is likely recognizing a financial gain by “click-through” revenues. Accordingly, the Respondent likely receives a payment each time it links a consumer to the “www.drugcialis.com” page and the consumer purchases a product there from. By using the mark CIALIS in the Domain Name, the Respondent is luring consumers in search of CIALIS brand product to its website which advertises and sells “generic” CIALIS product.
The Respondent’s use of the Domain Name 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 (see particularly Deutsche Telekom AG v. Mighty LLC/Domain Admin,
WIPO Case No. D2005-0027), 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.
In addition, the Complainant contends that it has not given the Respondent permission, authorization, consent or license to use its CIALIS mark. Despite this fact, however, the Domain Name resolves to a website 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 mark is associated.
The Complainant contends that the Domain Name was registered and is being used in bad faith.
The Complainant has extensively marketed and advertised its pharmaceutical product using the CIALIS trademark before the date of registration of the contested domain name. Therefore, because it is reasonable to infer that the CIALIS trademark is well-known, it is highly likely that the Respondent knew of the Complainant’s CIALIS mark at the time of registering the confusingly similar Domain Name.
The Respondent is using the Complainant’s CIALIS trademark in the domain name to attract Internet consumers to its “www.drugcialis.com” website on which the Respondent advertises and sells “generic” CIALIS brand product. The Respondent’s use of the Complainant’s CIALIS trademark also wrongfully implies that the Complainant is endorsing and/or supporting the website and the products advertised thereon.
Lastly, the Complainant contends that 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 did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) the domain name 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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The contested domain name contains the Complainant’s distinctive and widely known trademark CIALIS in its entirety. Neither the addition of the descriptive word “drug” as prefix nor the inclusion of the gTLD denomination “.com” alters the fact that the domain name is confusingly similar to the Complainant’s trademark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant’s trademark.
The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and, based on the record of this case, it is unlikely that any such rights or interests exist.
In this context the Panel notes that “Cialis” is an invented word that has no specific meaning. It can therefore be ruled out that the Respondent could plausibly claim to use the disputed domain name for any purpose unrelated to the Complainant or its products.
Even if the Respondent was authorized by the Complainant to sell pharmaceutical products bearing the Complainant’s mark CIALIS, this would not necessarily give the Respondent the right to incorporate this trademark into its domain name. See inter alia Hoffmann-La Roche Inc. v. # 1 Viagra Propecia Xenial & more Online Pharmacy,
WIPO Case No. D2003-0793. This is particularly so when the contested domain name is also de facto being used for the sale of other competing products (“generic CIALIS” as well as other pharmaceuticals), as is the case here.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.
Given the notoriety of the Complainant’s trademark, the coined nature of the word Cialis, and the extensive promotion of the trademark CIALIS, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark. The Panel notes in this regard that the Complainant’s trademark is registered in the country of residence of the Respondent, the Russian Federation.
As described above, the disputed domain name is used to promote “generic” versions of Complainant’s goods just as it contains information on competing products (pharmaceuticals) and links to competing websites. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. See, inter alia, Pfizer Inc. v. jg a/k/a Josh Green,
WIPO Case No. D2004-0784, LґOrйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc,
WIPO Case No. D2005-0623 and Hoffmann-La Roche Inc. v. Online Pharma
WIPO Case No. D2006-0628.
Therefore, the Panel finds that the domain name was registered and is being used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this case.
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, <drugcialis.com> be transferred to the Complainant.
Date: April 27, 2007