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Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing [2005] GENDND 1055 (21 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing

Case No. D2005-0313

1. The Parties

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

The Respondent is Tudor Burden d/b/a BM Marketing/Burden Marketing, Cape Town, South Africa; Kelowna, British Columbia, Canada; Kelowna, British Columbia, Canada; and Vancouver, British Columbia, Canada.

2. The Domain Names and Registrars

The disputed domain names are:

<advantagecialis.com>
<bonuscialis.com>
<budget-cialis.com>
<buycialis-buyviagra.com>
<buy-cialis-generic-viagra.com>
<buy-cialis-247.com>
<buycialis247.com>
<buyecialis.com>
<buynetcialis.com>
<buy-new-cialis.com>
<buynewcialis.com>
<buy-viagra-cialis-generic.com>
<buy36hourcialis.com>
<cheap-viagra-cialis-cheap.com>
<cialisbestprice.com>
<cialisbonus.com>
<cialis-buy-viagra-online.com>
<cialis-cheapest-viagra.com>
<cialis-com-cialis.com>
<cialis-discount-viagra.com>
<cialis-online-viagra.com>
<cialis-option.com>
<cialis-order-viagra.com>
<cialis-viagra-cheap.com>
<cialis-viagra-for-women.com>
<cialis-viagra-online.com>
<cialis-viagra-online-sale.com>
<cialis-viagra-pill.com>
<cialis-viagra-prescription.com>
<cialis-viagra-sale.com>
<cialis-where-to-buy-viagra.com>
<cialis-247.com>
<cialis36hours.com>
<fast-cialis.com>
<findcheapcialis.com>
<findgenericcialis.com>
<getcheapcialis.com>
<newgenericcialis.com>
<on-line-cialis.com>
<pluscialis.com>
<purchase-viagra-cialis.com>
<takecialis.com>
<viagra-cialis-generic.com>
<1genericcialis.com>
<2-buy-cialis.com>
<2-buycialis.com>
<247-cialis.com>
<36hourcialis.com>
<4genericcialis.com>

All of the above domain names are registered with Go Daddy Software except for <fast-cialis.com> which is registered with eNom, Inc. and for <viagra-cialis-generic.com> which is registered with Tucows. The domain names registered with Go Daddy Software are referred to as the “GDS Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2005, by email and on March 31, 2005, on hardcopy.

On March 29, 2005, the Center transmitted by email to Go Daddy Software, eNom and Tucows a request for registrar verification in connection with the domain names at issue.

On March 29, 2005, eNom transmitted by email to the Center its acknowledgment of receipt of the notification that a Uniform Domain Name Dispute Resolution Policy (“UDRP”) claim had been initiated. For the contact details, eNom referred to their site: “whois.enom.com”. That site provides the following details as of June 10, 2005, for the domain name <fast-cialis.com>:

Registrant: Tudor Burden
1186 Wilson Ave.
Kelowna BC V1Y 6Y6
Tel. (250) 979-2854
webmaster@aboutkelowna.com

eNom did not state whether it had received a copy of the Complaint.

On March 30, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that BM Marketing is the listed registrant and providing the contact details for the administrative, billing, and technical contact which were:

Burden, Tudor webmaster@aboutkelowna.com
BM Marketing
6 Pentz Lane
TableView
Cape Town, Africa Africa
South Africa
(602) 557-9019.

Go Daddy Software stated that it had not received a copy of the Complaint. However, the Center has confirmed that a copy was transmitted to Go Daddy Software.

Tucows did not respond to the Center’s email of March 29, 2005. However, the Center has confirmed that it sent the Complaint to Tucows. According to TUCOWS whois base the Registrant for the domain name <viagra-cialis-generic.com> was:

Burden Marketing
119 875 Badke Road
Kelowna B.C. V1W 5Z5

The administrative contact was given as Mr. Charles Burden. The Tucows site confirmed that the domain had been locked.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2005.

The Center appointed Thomas Webster as the sole panelist in this matter on May 30, 2005. 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 in this administrative proceeding is Lilly ICOS LLC, a limited liability company registered under the laws of Delaware. It has filed for registration of the CIALIS trademark with the United States Patent and Trademark Office on June 17, 1999, and the CIALIS mark was registered on the principal register on June 10, 2003 (Registration No. 2,724,589).

In total, the Complainant has obtained more than eighty-seven (87) registrations for the CIALIS mark covering more than 117 countries, including both Canada (filed on November 19, 1999, and registered on January 15, 2004) and South Africa (filed on November 19, 1999, and registered on April 11, 2003) where the Respondent is seemingly based.

The Complainant began selling pharmaceutical products intended for the treatment of erectile dysfunction and identified by the CIALIS mark on January 22, 2003. During the year 2003, the U.S. sales of the CIALIS brand product totaled more than $27 million.

Furthermore, the Complainant has registered the <cialis.com> domain name on August 10, 1999, and is using the Internet site to advertise and provide information on the CIALIS product.

The Respondent is referred to as “BM Marketing” (for the GDS Domain Names), Tudor Burden (for eNom) and Burden Marketing (for Tucows). The issue of whether this is one Respondent is discussed below.

The Respondent has registered <viagra-cialis-generic.com> on May 29, 2003, <fast-cialis-com> domain name on January 17, 2004, and the rest of the domain names between June 3, 2004, and August 10, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant appears to assume that the entities referred to as the registrant are one and same Respondent based on similarity or overlapping contact details.

The Complainant asserts that the CIALIS mark is an invented word that has “a high degree of individuality’ and acts as an ‘identifier of the source of Complainant’s pharmaceutical product’. According to the Complainant, the Respondent’s addition of the words and numbers to the CIALIS mark to create the Domain Names ‘does not negate the distinctiveness of Complainant’s CIALIS mark”. According to the Complainant, the addition of generic words and numerals to the CIALIS trademark “does not prevent a finding of confusing similarity”.

Moreover, Complainant claims that it “has not given Respondent permission, authorization, consent or license to use its CIALIS mark in the Domain Names”.

Furthermore, concerning the domain names containing the word “CIALIS” and the word “Viagra”, the Complainant argues that “while a number of the Domain Names contain the well-known VIAGRA® mark, a domain name consisting of more than one famous mark still may satisfy the requirement of paragraph 4(a)(i) of the Policy and thus be held to be confusingly similar”.

The Complainant also asserts that “Respondent is not making a legitimate noncommercial use of the Domains Names, but instead is using the Domain Names for commercial gain”. According to the Complainant, “it is apparent from the websites associated with the <buy-cialis-247.com>, <buy36hourcialis.com>, <fast-cialis.com>, <buyecialis.com> and <budget-cialis.com> Domain Names that Respondent is attempting to capitalize financially on the valuable reputation and goodwill of the CIALIS mark by either directing consumers to websites that link the consumers to another website from which unlawful ‘Generic Cialis’ products may be purchased or directing consumers to a website from which “Generic Cialis” products may be purchased”.

In addition, the Complainant argues that “although Respondent includes disclaimers on the websites associated with the <buy-cialis-247.com>, <buy36hourcialis.com> and the <fast-cialis.com> domain names, a disclaimer is not sufficient to form an effective defense when it is positioned at the bottom of a page below the place where a customer would click to order Respondent’s product”.

The Complainant adds that “when the holder of a domain name that is confusingly similar to an established mark uses the domain name to divert Internet users to its own competing website for commercial gain, such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under paragraphs 4(c)(i) and (iii) of the Policy”.

Finally, the Complainant argues that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant contends that it has “extensively marketed and advertised its pharmaceutical product using the CIALIS trademark”, spending in excess of $240 million to market and sell its product. Therefore, according to the Complainant, “it is reasonable to infer that the CIALIS trademark is well-known’ and that ‘it is highly unlikely that Respondent did not know of Complainant’s CIALIS mark at the time of registering the confusingly similar Domain Names”.

According to the Complainant, “evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain”. The Complainant adds that “Respondent is using Complainant’s CIALIS trademark in the Domain Names either to attract Internet consumers to websites advertising ‘Generic Cialis’ and/or Complainant’s CIALIS product before linking the consumer to the “www.rx-mex.com” website where ‘Generic Cialis’ products may be purchased or to redirect Internet consumers to the ‘www.rx-mex.com’ website”.

Furthermore, the Complainant claims that “the Respondent’s use of Complainant’s logo and product packaging suggests an effort on Respondent’s part to confuse consumers as to the source, sponsorship, affiliation or endorsement of the pharmaceutical products advertised for sale on Respondent’s websites”.

The Complainant also asserts that “Respondent is passively holding many of the Domain Names because those Domain Names resolve to parked web pages” and, according to the Complainant, “a respondent’s passive holding of a domain name can amount to the respondent acting in bad faith when all of the circumstances of the respondent’s behavior are examined”.

B. Respondent

The Respondent did not file a Response.

6. Discussion and Findings

Under the Policy, paragraph 4 (a) the Complainant must prove that each of the following three elements are present to succeed:

(i) the Domain Name is identical with or confusingly similar to a trademark 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.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Respondent

The Respondent has been identified as “Burden Marketing” with an address in Kelowna, B.C. Canada, “BM Marketing” with an address in South Africa and “Tudor Burden” with an address in Kelowna, B.C. Canada.

There is no evidence that “Burden Marketing” or “BM Marketing” are incorporated entities. The issue is whether they are simply business names being used by an individual, such as Tudor Burden.

The eNom “whois” page as at March 8, 2005, and June 10, 2005, gives Tudor Burden’s address as 1186 Wilson Avenue, Kelowna B.C. The Tucows “whois” page as at March 8, 2005, gives another address in Kelowna B.C. for Burden Marketing. The addresses for the GDS Names vary as of March 8, 2005. The address for “BM Marketing” is, for example, 1186 Wilson Ave., Kelowna B.C. for <1Genericcialis.com>; <4Genericcialis.com>; <Buy-Cialis-Generic-Viagra.com>; <Buy-Viagra-Cialis-Generic.com>; <Cheap-Viagra-Cialis-Cheap.com>; etc. Where the address for the registrant is in South Africa, Mr. Tudor Burden’s name frequently appears as an administrative contact.

Therefore, on the evidence submitted by the Complainant it appears that “Burden Marketing”, BM Marketing and Mr. Tudor Burden are prima facie closely related if not alter egos of one another. Moreover, it is noteworthy that neither the entities nor Mr. Burden have contested that they are to be treated as one Respondent. Therefore, the Panel finds that the entities should be treated as one Respondent in these proceedings.

B. Identical or Confusingly Similar

All the disputed domain names registered by the Respondent contain the Complainant’s CIALIS mark as well as additional words, letters or numbers. 18 of them also contain the word Viagra, which is a trademark registered by one of the Complainant’s competitors.

As in Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891, concerning the CIALIS mark, the Panel finds that the word CIALIS is distinctive and has no colloquial use.

Moreover, concerning the addition of the word “Viagra” to 18 of the disputed domain names, it has been decided in Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO case No. D2004-0794, that “the mark VIAGRA can be considered as a well-known mark. A number of WIPO Panels have considered domain names that consist of a Complainant’s mark and a third party trademark and have concluded that such domain names are confusingly similar to either mark, Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 quoting Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 and Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793”.

Therefore, in accordance with previous panel decisions, the Panel concludes that the Respondent’s domain names are confusingly similar to the Complainant’s CIALIS mark in which the Complainant has rights, even if some of them also contain a third parties’ mark.

C. Rights or Legitimate Interests

Paragraph 4(a)ii of the Policy directs that the Complainant must prove that:

“The Respondent has no rights or legitimate interests in respect of the Domain Name”.

The Complainant has alleged and the Respondent has failed to deny that the Respondent has no legitimate interests in respect of the domain names at issue. (see Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011).

Secondly, the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests (Policy, paragraph 4(c)), namely:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is established that the Respondent is using the domain names to give information about buying CIALIS online or providing links to online pharmacies promoting generic versions of CIALIS. As it has been decided in Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (also cited in Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794) “the Respondent is offering for sale not only the Complainant’s genuine product, but also a generic competitor. It is therefore using a domain name confusingly similar to the Complainant’s trademark to attract customers, who are then offered the choice of the Complainant’s product, and a competing product at a lower price. The facts that the disputed domain name is confusingly similar with the Complainant’s trademark and is used to sell a competing product in this manner deprive the Respondent’s offering of services of the bona fide character required to satisfy paragraph 4(c)(i) of the Policy. (A number of previous decisions have reached a similar conclusion: See, for example, Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700)’.

Moreover, as stated in Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101, “While mere resale of genuine branded products might give rise to a legitimate debate over whether the use of the mark was ‘nominative’ and therefore a fair use under U.S. trademark law, any such contention is undermined by Respondent’s sale of products directly competing with Complainant’s through the same website” and “this principle may have particular weight in the pharmaceutical context, where risks to the public may be enhanced by the lack of regulatory safeguards assuring the safety or efficacy of the purported ‘generic’ version of Complainant’s CIALIS brand product, thus further undermining any argument (had Respondent made such an argument, which it did not) that it was making a bona fide offering of goods”. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750.

The Panel also concludes that the Respondent is making a non legitimate commercial use of the disputed domain names that misleadingly diverts consumers. (See National Arbitration Forum Case No. FA 117911 G.D Searle & Co. v. Fred Pelham, finding that because the Respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the Respondent was opportunistically using Complainant’s mark in order to attract Internet users to its website).

Therefore, in accordance with paragraph 4(a)(ii) of the Rules, it appears that the Respondent has no rights nor legitimate interests in respect of the domain names.

D. Registered and Used in Bad Faith

The Complainant claims that “the Respondent’s use of Complainant’s logo and product packaging suggests an effort on Respondent’s part to confuse consumers as to the source, sponsorship, affiliation or endorsement of the pharmaceutical products advertised for sale on Respondent’s websites”.

The Panel has visited the relevant websites and agrees that the Respondent is trading on the value established by Complainant in its marks to attract users to a website which includes Complainant’s, domain name. As decided in Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc. WIPO Case No. D2000-0587, “clearly, Respondent is deriving economic benefit from this practice, either by attracting users to Respondent’s website, where goods and services are offered, or by the receipt of compensation from the owners of other websites for delivering users to those sites. This constitutes bad faith registration and use as defined by paragraph 4(b)(iv) of the Policy: ‘[T]he following circumstances …. shall be evidence of the registration and use of a domain name in bad faith . . . by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or a product or service on your website or location’“.

It is also established that the Respondent is passively holding a certain number of disputed domain names. As decided in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, “paragraph 4(b) recognises that inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith”. (...) “in considering whether a passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Panel must give close attention to all the circumstances of the Respondent’s behavior”.

In the present case, it is established that the Respondent has registered 49 domain names between May 2003 and August 2004, all of which are confusingly similar to the Complainant’s trademark. This in itself constitutes evidence that the Respondent is acting in bad faith.

Therefore, according to the Policy paragraph 4(a)(iii), it appears that the Respondent has registered and used the domain names in bad faith.

E. Remedies requested

The Complainant has requested transfer of the domain names referred to below that contain the trademark “Cialis” but which do not contain the trademark “Viagra” which belongs to a third party. The Complainant requests that the latter trademarks be cancelled.

The Complainant’s request for cancellation of the latter domain names is in line with the authority of a number of decisions holding that it could be inappropriate to transfer a domain name containing a third-party trademark to a Complainant where the domain name also contained the Complainant’s trademark. This line of authorities is reflected in a prior decision between the parties to these proceedings. (See Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794.

The Panel has noted that <viagra-cialis-generic.com> has been omitted in the Complainant’s requests (at paragraph 12 of the Complaint) but which was referred to on the first page of the Complaint. In the Panel’s view, the reference at the beginning of the Complaint indicates that relief was sought with respect to this domain name as well and it is therefore granted.

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 names:

<advantagecialis.com>
<bonuscialis.com>
<budget-cialis.com>
<buy-cialis-247.com>
<buycialis247.com>
<buyecialis.com>
<buynetcialis.com>
<buy-new-cialis.com>
<buynewcialis.com>
<buy36hourcialis.com>
<cialisbestprice.com>
<cialisbonus.com>
<cialis-com-cialis.com>
<cialis-option.com>
<cialis-247.com>
<cialis36hours.com>
<fast-cialis.com>
<findcheapcialis.com>
<findgenericcialis.com>
<getcheapcialis.com>
<newgenericcialis.com>
<on-line-cialis.com>
<pluscialis.com>
<takecialis.com>
<1genericcialis.com>
<2-buy-cialis.com>
<2-buycialis.com>
<247-cialis.com>
<36hourcialis.com>
<4genericcialis.com>

be transferred

and

and
<viagra-cialis-generic.com>

be cancelled.

Thomas Webster
Sole Panelist

Dated: June 21, 2005