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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Eli Lilly and Company v. Texas International Property Associates-NA NA

Case No. D2008-0584

 

1. The Parties

The Complainant is Eli Lilly and Company, Indianapolis, Indiana, United States of America, represented by Baker & Daniels, United States of America.

The Respondent is Texas International Property Associates- NA NA, Dallas, Texas, United States of America, represented by Gary Wayne Tucker, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lilliy.com> is registered with Compana LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2008. On April 16, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On April 17, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 April 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2008. The Response was filed with the Center on May 15, 2008.

On May 19, 2008, the Complainant submitted an unsolicited additional submission. On May 29, 2008, the Respondent submitted an Objection and Reply to the Complainant’s Additional Submission. The Panel held that the Complaint and the Response provided sufficient information to decide the case, so it did not consider these additional documents.

The Center appointed Richard Hill as the sole panelist in this matter on May 26, 2008. 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 is a well-known pharmaceutical company owning various trademarks for the string LILLY.

The Respondent registered the disputed domain name in February 2005.

The website at the disputed domain name prominently uses the registered marks for several of the Complainant’s products.

The website at the disputed domain name contains sponsored links to various websites offering products that compete with the Complainant’s products.

 

5. Parties’ Contentions

A. Complainant

According to the Complainant, it has been in the pharmaceutical business for over 120 years. Over the years the Complainant has been at the forefront of various significant medical breakthroughs, including introduction of the drugs Zyprexa, Prozac, and Cialis (each a registered trademark).

The Complainant states that its US rights in the LILLY mark date back to as early as February 1, 1895, when the Complainant began using the LILLY trademark in commerce. The Complainant filed for registration of the LILLY mark with the United States Patent and Trademark Office on December 7, 1981. The LILLY mark was registered on the principal register on February 8, 1983. The Complainant also has an Internet presence, primarily through the web site accessed by the domain name <lilly.com>, that it uses to advertise and provide information regarding its pharmaceutical products. The <lilly.com> domain name was registered on May 10, 1991.

According to the Complainant, the Respondent registered the disputed domain name on February 19, 2005. The disputed domain name is confusingly similar to the Complainant’s mark LILLY because it differs from the mark by only one letter: this constitutes “typosquatting” which has been found impermissible under the Policy by numerous panels. The Complainant cites numerous UDRP cases to this effect.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because the domain name is used to point to a search page containing the names of the Complainant’s trademarked products (such as Zyprexa) and links to generic competitors of those products and to competitors of the Complainant.

Thus, says the Complainant, the Respondent is attempting to capitalize on the valuable reputation and goodwill of the LILLY mark to direct Internet users to web sites advertising and selling “generic” and competing brand name pharmaceutical products. By using the mark LILLY in the disputed domain name, the Respondent is luring consumers in search of LILLY-brand products to its web site. The Respondent likely receives a payment each time it links a consumer to one of the web pages it is advertising at the disputed domain name.

According to the Complainant, this use of the disputed domain name constitutes evidence of bad faith registration and use under Policy paragraph 4(b)(iv) of the Policy, since the disputed domain name is used in order to utilize the Complainant’s well-known trademark by attracting Internet users to a web site for commercial gain. The Complainant cites UDRP cases to support this position.

Further, says the Complainant, “typosquatting” can, in and of itself, constitute bad faith registration and use. The Complainant cites UDRP cases to support this position.

Finally, alleges the Complainant, the Respondent’s use of the Complainant’s LILLY mark in the disputed domain is potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold pharmaceutical products through web sites advertised on the Respondent’s web site 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 and Zyprexa products are only available on a physician’s prescription and are manufactured, labeled, and sold in strict compliance with the FDA and other health authority laws and regulations.

B. Respondent

The Respondent does not deny that the Complainant has been in business for a long period and that is has certain registered marks. The Respondent, however, does dispute that any of the Complainant’s registered trademarks give it the exclusive rights to claim the disputed domain name.

The Respondent proceeds to produce evidence that numerous other companies or individuals have registered or common law marks for the string LILLY. Thus, says the Respondent, it is clear that the term LILLY is in wide use by a number of parties and no one party could claim the exclusive right to forbid all others from using that term in commerce.

Further, says the Respondent, the disputed domain name has an extra “i” in it, and the word “lilliy” is also a surname. The Respondent cites various UDRP cases in support of the proposition that this distinction is relevant for the present case.

According to the Respondent, it has rights and legitimate interests in the disputed domain name because it has used the domain name to provide a web portal which provides users with a search function as well as advertisements provided through the Google Adsense program. The Respondent states:

Complainants were, like all others in the United States and around the world, free to purchase advertisements through Google had they so chosen. As one Panel has held “The Panel considers that the use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy”.

According to the Respondent, the Complainant’s registered marks for specific products appear on the web site at the disputed domain name because the Complainant has contracted with Google or Yahoo for its ads to appear on domains which, apparently, contain some form of the dictionary word and typos thereof.

Further, says the Respondent, the web site contains numerous links to products or services that are unrelated to pharmaceuticals, but are related to the word “lilly’, for example, links to lily flowers.

The Respondent states that it is free to use the term “lilly” to provide a portal with links to the numerous and various uses of “lilly” as, for example, a surname and a flower. The Respondent may fairly use descriptive or generic terms as well as surnames as a commercial domain name, regardless of whether they are federally registered. Indeed, common acronyms and generic terms are legitimately subject to registration as domain names on a “first-come, first-served basis”. The Respondent cites numerous UDRP cases to support this position.

According to the Respondent, the fact that advertising revenues may be generated by its activity demonstrates a legitimate interest. The Respondent cites numerous UDRP cases to support this position. One such case states “Respondent is accused of using what amounts to a generic phrase to connect these generic concepts with search keywords in order to provide advertisers with targeted customer traffic. This is a legitimate business”.

The Respondent alleges that the Complainant has failed to prove bad faith registration and use because it has not proved that the Respondent was aware of its registered mark when it registered the disputed domain name. The Respondent states that it had no knowledge of the Complainant and could not have guessed that a company known primarily as ELI LILLY would lay claim to the surname “lilliy” as the latter is a word which the average Internet user, as evidenced by the Google results, does not associate with the Complainant.

The Respondent states:

A recent decision by a three-member WIPO Panel might help shed some light on the issue of bad faith as regards this dispute. In McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc., WIPO Case No. D2007-0676 (WIPO July 24, 2007), the Panel was faced with a dispute involving the domain, <europeancar.com>. In finding against bad faith registration the Panel noted that “pay-per-click websites are not in and of themselves unlawful or illegitimate” and that the Complainant “has provided little evidence (as opposed to allegations of counsel) that Respondent selected the disputed domain name for a free ride upon Complainant’s mark”. The same holds true here. The Panel in McMullen noted “Complainant has made no showing that consumers and Internet users have been or are likely to be confused or to associate Respondent’s services with Complainant’s”. Nor has there been such a showing here, not one single instance of customer confusion.

A previous decision cited by the McMullen Panel discussed this very issue and noted that unless a trademark is targeted by a domain, pay-per-click revenue does “not constitute evidence of bad faith registration or use”. Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489 (WIPO June 7, 2007). The Terana Panel went on to state that “An inference of targeting may be drawn from the inherent distinctiveness of the mark in question or from the circumstance that the mark is famous or well-known”. There is no proof of such fame here, certainly not at the time the disputed domains were registered as discussed above.

Further, says the Respondent, a complainant must proffer evidence that demonstrates that the respondent has specifically intended to confuse consumers seeking out the complainant. There is no such proof here. The Respondent cites various UDRP cases to support the relevance of this assertion.

 

6. Discussion and Findings

As noted above, the Panel finds that the Complaint and the Response provide sufficient information to decide the case. Therefore, the Panel did not consider the Complainant’s Additional Submission and the Respondent’s Objection and Reply to the Additional Submission, finding, in accordance with Rule paragraph 10(d) of the Rules, that those additional documents are not relevant for the present proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence showing that it owns various trademarks for the string LILLY. And that it is a well-known company in the pharmaceutical business. It is clear that the disputed domain name, consisting of the Complainant’s trademark with the addition of an extra “i”, is confusingly similar to the Complainant’s trademark. See for example Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161 (April 17, 2003) (determining that the domain name <hoildayinn.com> was a misspelling of Holiday Inn and confusingly similar to the complainant’s mark therefore constituting an attempt to confuse and lure customers of complainant).

The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent correctly argues that, where a domain name is generic, the first person to register it in good faith is entitled to the domain name; that is to say, provided the domain name was genuinely registered for its generic meaning and not with the Complainant’s mark in mind. See Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902 (March 12, 2008); see also mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 (November 30, 2007).

It is not disputed that the string “lily” is a common word referring to a flower and that the disputed domain name is a misspelling of that common word. Thus, the essential question that this Panel has to address is whether or not the Respondent registered the disputed domain name in good faith.

If the registration was in good faith, then the Respondent may (depending on its use of the site) have a legitimate interest in the disputed domain name. But, if the registration was not in good faith, then the Respondent does not have rights or legitimate interests in the disputed domain name.

For the reasons given below, the Panel finds that the Complainant has provided sufficient evidence to show that the Respondent registered and is using the disputed domain name in bad faith.

Thus the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent does not dispute the Complainant’s allegation that it is a well-known company. The Complainant has provided evidence showing that the disputed domain name was used to point to a website containing sponsored links, which created a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Further, despite the Respondent’s denial, the Panel holds that the Respondent profited from the resulting click-through revenue. This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. See American University v. Richard Cook, NAF Case No. 208629 (December 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Systems Corporation v. Perot.net, NAF Case No. 95312 (August 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Indeed, the evidence contradicts the Respondent’s allegation that the Complainant has provided little evidence that the Respondent selected the disputed domain name for a free ride upon Complainant’s mark. On the contrary, the evidence provided by the Complainant shows that the disputed domain name was used specifically to point to a custom-made website (not a default page) containing the registered trademarks of several of the Complainant’s best-known products, and embedding links in those trademarks to competitors of the Complainant’s products.

The Respondent makes much of the fact that many other companies or individuals can claim trademark or other rights in the string LILLY. But this is irrelevant for the present case. It suffices that the Complainant has trademark rights in that string, that the disputed domain name is confusingly similar to the mark, and that the Respondent registered and is using the disputed domain name in bad faith.

As the Complainant correctly points out, the Respondent’s use of the disputed domain name could be potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold pharmaceutical products through web sites advertised on the Respondent’s web site 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.

Contrary to the Respondent’s assertion, the Panel finds that the Complainant has presented convincing evidence that that consumers and Internet users have been or are likely to be confused or to associate the Respondent’s services with the Complainant.

Further, again contrary to the Respondent’s assertion, the Panel finds that the Complainant has presented convincing evidence that an inference of targeting may be drawn from the inherent distinctiveness of the mark in question, from the Respondent’s use in its web site of the registered trademarks of several of the Complainant’s well-known products, and from the fact that the disputed domain name is more a misspelling of the Complainant’s mark LILLY that a misspelling of the common work “lily”, since it differs from the mark by only one letter, while it differs from the flower by two letters. Thus, the case cited by the Respondent, Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489 (June 7, 2007), actually supports the Complainant.

The Respondent requests that the Panel find that its use of a generic domain name to provide information about the genus shows bona fide use of the disputed domain name. But the evidence provided by the Complainant (and not disputed by the Respondent) shows clearly that the web site at the disputed domain name does not primarily provide information about “lilies” (a flower). On the contrary, it prominently features the registered trademarks of several of the Complainant’s well-known products, products whose names are not at all related to the generic term lily. That is, the disputed domain name is not being used to provide generic information related to “lily” or “lilies” or, for that matter, “lilly” or “lilliy”.

The Respondent makes much of the fact that none of the Complainant’s registered trademarks give it the exclusive rights to claim the disputed domain name. This point is not disputed, but it is not relevant. It is surprising that the Respondent, who is a sophisticated and experienced participant in UDRP proceedings, should bring forth such arguments. As noted above, what is relevant is whether the Respondent violated the three conditions set by the Policy. The first condition is that the Complainant has a trademark that is confusingly similar to the disputed domain name. There is no requirement in the Policy that the Complainant have exclusive rights to the character string which is confusingly similar to the mark.

The Panel finds that the Respondent has registered and used the disputed domain name 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, <lilliy.com> be transferred to the Complainant.


Richard Hill
Sole Panelist

Dated: June 9, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0584.html

 

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