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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Clarkepharma Co.
Case No. D2007-0447
1. The Parties
Complainant is Lilly ICOS LLC, Indianapolis, Indiana, United States of America, represented by Baker & Daniels, United States of America.
Respondent is Clarkepharma Co., Villars Les Bois, Charente-Maritime, France.
2. The Domain Name and Registrar
The disputed domain name <cialis-clarkepharmacies.com> (herein, “Disputed Domain Name”) is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2007. On March 26, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2007.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on May 11, 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
Complainant has more than one hundred and thirty (130) registrations for the CIALIS trademark covering more than one hundred and seventeen (117) countries, and the CIALIS trademark is the subject of pending registration applications filed by Complainant in fourteen (14) countries. Among them are two trademark registrations for CIALIS: (1) in France, registered on November 22, 1999 and bearing Registration No. 99824332; and (2) in the United States of America, registered on June 10, 2004 and bearing Registration No. 2,724,589. Herein, these trademark applications and registrations, are referred to collectively as “Trademarks”.
Respondent registered the Disputed Domain Name on July 28, 2005.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is confusingly similar with the Trademarks in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name and that Respondent registered and uses the Disputed Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, this Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for this Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that a “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate”. Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.
In accordance with paragraph 4(a) of the Policy, to succeed in this UDRP proceeding, Complainant must meet three requirements that will be considered in turn below.
A. Identical or Confusingly Similar
Complainant contends that it has rights in its Trademarks. Complainant contends (and the Panel accepts as uncontroverted) the following (as summarized from the Complaint): (1) its Trademarks (see Factual Background above); and (2) Complainant's sales of CIALIS brand product exceed $1 billion dollars worldwide, to date.
Complainant contends (and the Panel accepts as uncontroverted) that the CIALIS trademark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use, and as such, is entitled to be considered to be a highly distinctive mark.
In the present case, Respondent added the term “clarkepharmacies” to CIALSIS to form the Disputed Domain Name. Complainant contends (and the Panel accepts as uncontroverted) that Respondent's addition of the term “clarkepharmacies” does not negate the high distinctiveness of Complainant's CIALIS mark. Accordingly, Complainant contends (and the Panel accepts as uncontroverted), that a domain name that incorporates a very distinctive trademark (CIALIS, in this case) in its entirety, creates sufficient similarity between it and that trademark to render the Disputed Domain Name confusingly similar.
Thus the Panel accepts Complainant’s contentions that it has rights in the Trademarks and that the Disputed Domain Name is confusingly similar to the Trademarks.
The Panel concludes that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, Complainant contends that it has not licensed or otherwise permitted Respondent to use any marks or words that incorporate or are confusingly similar with its Trademarks.
Complainant contends that Respondent’s use of the Disputed 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. According to Oki Data Americas, Inc v. ASD, Inc,
WIPO Case No. D2001-0903, and subsequent cases (e.g. Deutsche Telekom AG v. Mighty LLC/Domain Admin,
WIPO Case No. D2005-0027), this principle can only be invoked under the Policy if (i) Respondent is actually offering the goods or services at issue; (ii) Respondent uses its website to sell only the trademarked goods or services; and (iii) Respondent’s website accurately discloses its relationship (or otherwise) with the trademark owner. The Panel accepts Complainant’s contentions: in respect of factor (ii), that Respondent, in addition to directly selling "Generic" CIALIS brand product, has its website prominently display links to purchase "Generic" versions of products that are directly competitive with Complainant's product, such as VIAGRA®; and in respect of factor (iii), Complainant’s denial of any business relationship with Respondent, and the absence of any disclosure on Respondent’s website about its relationship with Complainant.
Respondent has provided no arguments or evidence of legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal status of the Trademarks, many of which are registered, and Complainant's contentions about its efforts in promoting the Trademarks and the size and success of its business worldwide with CIALIS brand products, and by Complainant's contention that there is no business relationship with Respondent, Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any response from the Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of legitimate interest by Respondent in the Disputed Domain Name, likely do not exist.
The Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and uses the Disputed Domain Name in bad faith.
In particular, Complainant contends that Respondent knew of Complainant's Trademarks and the reputation of its CIALIS brand products at the time of registering the Disputed Domain Name. The Panel accepts this contention, noting (as set out in Factual Background above) that Complainant’s trademark registrations for CIALIS in France (where Respondent is domiciled) and the United States of America (the world’s largest economy) predate the registration by Respondent of the Disputed Domain Name.
Complainant further contends that Respondent is using the Disputed Domain Name in bad faith to misleadingly divert Internet traffic, away from Complainant’s website, to its website, where it sells, amongst other things, products competitive with Complainant’s CIALIS brand products. The Panel accepts Complainant’s contentions, especially in the absence of any counter-arguments or evidence to the contrary from Respondent.
The Panel concludes that the third requirement of the Policy is met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <cialis-clarkepharmacies.com> be transferred to the Complainant.
Mark Ming-Jen Yang
Dated: May 25, 2007