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Lilly ICOS LLC v. Dan Eccles [2004] GENDND 1499 (8 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Dan Eccles

Case No. D2004-0750

1. The Parties

The Complainant is Lilly ICOS LLC, Lilly Corporate Center, Indianapolis, Indiana, United States of America, represented by Baker & Daniels, United States of America.

The Respondent is Dan Eccles, of Alexandria, Alabama, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cialis-drug-online-buying-guide.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2004. On September 16, 2004, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On September 21, 2004, InnerWise, Inc. d/b/a ItsYourDomain.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, 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 September 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2004.

The Center appointed Gregory N. Albright as the Sole Panelist in this matter on October 25, 2004. 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 Lilly ICOS LLC (“Lilly ICOS”), a limited liability company organized under the laws of the State of Delaware, is a joint venture between ICOS Corporation and Eli Lilly and Company. CIALIS is Lilly ICOS’ trademark for a pharmaceutical preparation intended for the treatment of erectile dysfunction. Beginning in the United States in June 1999, Lilly ICOS applied for registration of the CIALIS mark in many countries around the world. The CIALIS mark was registered on the Principal Register of the United States Patent and Trademark Office on June 10, 2003 (Reg. No. 2,724,589). To date Lilly ICOS has obtained more than 87 registrations of the CIALIS mark covering more than 117 countries, and applications for registration are pending in approximately 24 more countries. Lilly ICOS also registered the domain name <cialis.com> on August 10, 1999.

Respondent Dan Eccles registered the disputed domain name <cialis-drug-online-buying-guide.com> on May 22, 2003.

5. Parties’ Contentions

A. Complainant

1. Identical Or Confusingly Similar

a. Priority

Complainant’s use of the CIALIS trademark (the “Mark”) pre-dates Respondent’s May 22, 2003 registration of the disputed domain name. Complainant’s rights in the Mark date back at least to its June 17, 1999, application for registration of the Mark in the United States. Complainant’s decision to use the Mark to identify its pharmaceutical product was made public on or about July 2001, as shown by media coverage of the CIALIS product.

Complainant began selling products identified by the Mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand. Sales in the United States began in November 2003.

Because of the nature of Complainant’s business and the regulated environment in which it operates, there is often a lengthy period of time between adoption of a mark and first sales of a product identified by the mark. Complainant began filing trademark applications for the Mark approximately three and one-half years before the first sale of the product identified by the Mark. The delay between selection of the Mark and sale of the product identified by the Mark does not lessen Complainant’s rights in the Mark.

b. Distinctiveness

The Mark is an invented word with a high degree of individuality and inherent distinctiveness.

c. Confusing Similarity

The disputed domain name is confusingly similar to the Mark because the disputed domain name incorporates Complainant’s distinctive mark in its entirety. Respondent’s addition of the descriptive words “drug”, “online”, “buying”, and “guide” in the disputed domain name does not prevent a finding of confusingly similarity with the Mark. Instead, the added words merely describe where and how one may purchase a product passed off as Complainant’s branded pharmaceutical product.

Further, use of the descriptive words “online” and “buying” in the disputed domain name is evidence that Respondent intends to mislead and confuse Internet users by suggesting that Respondent’s website is authorized or sponsored by Complainant. Respondent should not be allowed to use the disputed domain name in a manner that misleads consumers into believing that Respondent is an authorized distributor or reseller of Complainant’s products.

2. Rights or Legitimate Interests

Respondent has no legitimate rights or interests in the disputed domain name. Respondent is trading on the valuable reputation and goodwill of the Mark by using the Mark to solicit orders for counterfeit goods passed off as Complainant’s product. Respondent’s use of a domain name that is confusingly similar to the Mark is not a bona fide offering of goods or services. Respondent’s website provides links to several websites where products passed off as Complainant’s CIALIS product may be purchased. Respondent’s website also displays the Mark and Complainant’s logo, and thereby confuses visitors as to Complainant’s affiliation with or sponsorship of the Respondent’s website and the products advertised there. Respondent’s use of the Mark on its website is evidence that Respondent knowingly registered the disputed domain name with the intent of misleading and diverting Internet users to the Respondent’s website, and trading on the goodwill established in the Mark, for Respondents’ commercial gain.

Complainant has not given Respondent permission, authorization, consent or license to use the Mark.

3. Registered and Used in Bad Faith

Respondent has attempted to unfairly capitalize on the reputation and goodwill in the Mark, which Complainant has extensively marketed and advertised. Respondent’s trading on Complainant’s goodwill in the Mark, for commercial gain, is evidence of bad faith. Bad faith is also evidenced by the false appearance that Respondent’s website is connected with or endorsed by Complainant, Respondent’s use of the Mark on the website (in addition to using the Mark in the disputed domain name), and Respondent’s knowledge of Complainant’s Mark and reputation when Respondent registered the disputed domain name.

Finally, bad faith is evidenced by Respondent’s use of the disputed domain name in a manner that is potentially harmful to the health of many unsuspecting consumers. Respondent’s website creates the false impression that those who purchase pharmaceutical products from Respondent’s website are buying safe and effective products from Complainant that have been approved by the U.S. Food and Drug Administration (“FDA”) and many other health authorities around the world. Complainant’s CIALIS product is available only with a physician’s prescription, and is manufactured, labeled, and sold in strict compliance with FDA and other health authority laws and regulations. No other product containing tadalafil, the active ingredient in CIALIS, has been approved by the FDA or any other health authority in the world. Products sold on Respondent’s website have not been approved by the FDA or, to Complainant’s knowledge, any other health authority in the world. The products sold on Respondent’s website are therefore illegal and potentially dangerous.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and is in default in this proceeding.

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, Complainant has the burden of proving all of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.

A respondent may demonstrate that it has rights or legitimate interests in respect of the domain name by proving those circumstances identified in Paragraph 4(c) of the Policy.

Evidence of bad faith registration and use of a domain name may be proven by, among other things, the circumstances identified in Paragraph 4(b) of the Policy.

A. Identical or Confusingly Similar

The evidence shows that Complainant owns rights in the Mark, and that it acquired rights in the Mark before Respondent’s May 22, 2003 registration of the disputed domain name.

Complainant alleges that on June 19, 1999, it filed an application for registration of the Mark with the United States Patent and Trademark Office (“USPTO”). USPTO records confirm that on that date Complainant filed an “Intent-to-Use” (“ITU”) application, pursuant to 15 U.S.C. § 1051(b), for registration of the Mark on the principal register. On June 10, 2003, the Mark was registered on the principal register (Reg. No. 2,724,589), thus giving Complainant a constructive use date of June 19, 1999, and giving Complainant priority over those with competing claims to the Mark based upon later use. 15 U.S.C. § 1057(c).

In addition, Complainant has submitted evidence of registrations of the Mark in many other countries. Many of those registrations evidence Complainant’s priority over Respondent’s May 22, 2003, registration of the disputed domain name. The evidence also shows that Complainant registered the domain name <cialis.com> on August 10, 1999.

The CIALIS mark is a distinctive identifier of the source of Complainant’s pharmaceutical product.

The disputed domain name is confusingly similar to the Mark because it incorporates the distinctive Mark in its entirety. Respondent’s addition of the words “drug”, “online”, “buying”, and “guide” to the disputed domain name does not eliminate the confusing similarity, because the additional words do not distinguish the owner of the disputed domain name from the owner of the Mark. To the contrary, the additional words refer back to CIALIS (by suggesting how and where one might buy the product), suggest an association with the owner of the Mark, and thus reinforce the disputed domain name’s confusing similarity to the Mark. See Paccar, Inc. v. Telescan Tech. LLC[2003] USCA6 45; , 319 F.3d 243, 252 (6^th Cir. 2003); G.D. Searle & Co. v. Vioxx & Celebrex Arthritis Help, FA 0210000126831, National Arbitration Forum; Pfizer, Inc. v. Papol Suger, WIPO Case No. D2002-0187; G.D. Searle & Co. v. Paramount Mktg., FA 0208000118307, National Arbitration Forum; EAuto v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”.).

B. Rights or Legitimate Interests

Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has no rights or legitimate interests in respect of the domain name – i.e., to prove a negative. Paragraph 4(c) of the Policy contemplates that the respondent will come forward with evidence to demonstrate its rights or legitimate interests, and lists non-exclusive ways this might be shown.

The Respondent in this proceeding is in default, which in itself permits an inference that Respondent cannot show rights or legitimate interests in the disputed domain name. See Rules, Paragraph 14(b); G.D. Searle & Co. v. James Mahony, FA 0204000112559, National Arbitration Forum (when no Response is submitted, Panel may presume Respondent has no rights or interests in disputed domain name); G.D. Searle & Co. v. Fred Pelham, FA 0208000117911, National Arbitration Forum, (same); Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 0006000095095, National Arbitration Forum (lack of response allows all reasonable inferences of fact in the allegations of Complainant to be deemed true). Moreover, for reasons discussed below, the Panel is satisfied that Complainant has carried its initial burden of showing that Respondent has no rights or legitimate interests in the disputed domain name.

The certified Complaint asserts that Complainant has not authorized or licensed Respondent to make use of the Mark in the disputed domain name or otherwise (however, no evidence, e.g., a declaration, was submitted to support the assertion).

Complainant has also submitted evidence regarding the website home page to which the disputed domain name resolves. As the disputed domain name itself suggests, the Respondent’s website purports to be a “guide” for buying CIALIS online, and provides links to online pharmacies where Cialis may be purchased. In addition, Respondent’s website recommends “Generic Cialis”, and provides a link to a site where it can be purchased at a claimed savings of 60%. Respondent’s website claims: “Generic Cialis [NEW] works the same way as Cialis but cost [sic] 60% cheaper [sic].” Respondent’s website also claims that by following Respondent’s advice, a visitor to the website can obtain Generic Cialis at a deep discount without worrying about “questionable … quality.” Respondent claims: “Generic Cialis gave me the same effects as the brand name Cialis, but I enjoy 60% direct savings. So why not?” The Respondent’s promotion of a “generic” version of Cialis, the safety of which is at least suspect, is evidence that Respondent’s use of the disputed domain name is not a bona fide offering of goods. See Pfizer Inc. v. The Magic Islands,WIPO Case No. D2003-0870.

Further, the evidence shows that Respondent is using the disputed domain name for commercial purposes. Respondent’s website provides links to online pharmacies that sell Cialis, or an alleged “generic” equivalent. It is reasonable to infer – particularly in light of Respondent’s default – that Respondent is compensated for directing traffic to the websites of those online pharmacies.

For these reasons, the Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services under Paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Paragraph 4(c)(iii) of the Policy. See G.D. Searle & Co. v. James Mahony, FA 0204000112559, National Arbitration Forum; G.D. Searle & Co. v. Fred Pelham, FA 0208000117911, National Arbitration Forum. Nor is there any evidence before the Panel that Respondent is commonly known by any name other than Dan Eccles – the only name in registrar’s records for the disputed domain name. Accordingly, there is no basis for finding rights or legitimate interests under Paragraph 4(c)(ii) of the Policy. Id.

C. Registered and Used in Bad Faith

The evidence shows that Respondent has registered and is using the disputed domain name intentionally to attract, for commercial gain, Internet users to Respondent’s website. The disputed domain name incorporates the entirety of Complainant’s distinctive mark, which in itself gives the appearance of a connection with the product marketed by Complainant, and creates likelihood of confusion with the Mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

The conclusion that Respondent has acted in bad faith by intentionally seeking to capitalize on consumer confusion, and the goodwill associated with the Mark, is reinforced by Respondent’s use of the Mark and Complainant’s CIALIS logo on Respondent’s website.

Further, Respondent’s website “recommends” the purchase of an alleged “generic Cialis”, the safety of which is at least suspect, in direct competition with Complainant’s FDA-approved product (the certified Complaint asserts that the products sold through links on Respondent’s website are illegal and potentially dangerous, but Complainant has not supported the assertion with evidence).

Circumstances like these have supported findings of bad faith in several other proceedings. See Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589 (using domain name to offer “generic Viagra” in direct competition with genuine Viagra was bad faith); Aventis, Aventis Pharma SA v. VASHA Dukes, WIPO Case No. D2004-0276; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870.

Accordingly, the Panel finds that Complainant has demonstrated the existence of bad faith pursuant to Paragraph 4(b) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders transfer of the domain name <cialis-drug-online-buying-guide.com> to the Complainant.

Gregory N. Albright
Sole Panelist

Dated: November 8, 2004