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Lilly ICOS LLC v. Tommy Hillinger [2005] GENDND 1060 (20 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Tommy Hillinger

Case No. D2005-0475

1. The Parties

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

The Respondent is Tommy Hillinger, Slashpills, Puebla, Mexico.

2. The Domain Name and Registrar

The disputed domain name <mycialispharmacy.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2005, by email and on May 4, 2005, on hardcopy. On May 2, 2005, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On May 8, 2005, CSL Computer Service Langenbach GmbH dba Joker.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. On May 8, 2005, the registrar indicated that it had not received a copy of the Complaint, and on May 9, 2005, the registrar wrote back to the Center indicating that it had received the Complaint.

The Center sent the Complainant a notification on May 11, 2005, that the Complaint was administratively deficient. In response, the Complainant filed an amendment to the Complaint on May 11, 2005. The Center verified that the Complaint together with the amendment to 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 May 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2005.

The Center appointed Thomas Webster as the Sole Panelist in this matter on June 16, 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 87 registrations for the CIALIS mark covering more than 117 countries.

The Complainant began selling pharmaceutical products intended for the treatment of erectile dysfunction and identified by the CIALIS mark on January 22, 2003. In 2004, Complainant spent approximately 39 million dollars to market and sell its CIALIS brand product worldwide and worldwide sales of CIALIS in 2004 exceeded $550 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 registered the disputed domain name on September 13, 2004, and is using it to sell generic versions of the CIALIS drug.

5. Parties’ Contentions

A. Complainant

The Complainant argues that “the CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use”. According to the Complainant, the Respondent’s addition of the words “my” and “pharmacy” to the Domain Name “does not negate the distinctiveness of Complainant’s CIALIS mark. Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (Annex 15, B)”.

The Complainant claims that “the addition of descriptive words to Complainant’s CIALIS trademark does not prevent a finding of confusing similarity. See Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794.

Moreover, the Complainant asserts that he “has not given Respondent permission, authorization, consent or license to use its CIALIS mark” and that “despite this fact, the Domain Name resolves to a website enabling Respondent to cash in on the strength of Complainant’s CIALIS mark and the reputation of the pharmaceutical preparation with which the CIALIS mark is associated”.

According to the Complainant, “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”.

Complainant adds that “the safety of a ‘generic’ version of Complainant’s CIALIS brand product is suspect and is also evidence that Respondent’s use of the Domain Name is not a bona fide offering of goods”.

Finally, Complainant claims that “according to Policy paragraph 4(b)(iv), 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 concludes that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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. Identical or Confusingly Similar

The Panel has already dealt with a very similar case (see Lilly ICOS LLC v. Abadia Distribution, WIPO Case No. D2005-0449) and found that the word CIALIS is distinctive and has no colloquial use.

The disputed domain name contains the Complainant’s CIALIS mark as well as the words “my” and “pharmacy”. As stated in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, “Generally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’ 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).” (See also The Price Company v. Price Club, WIPO Case No. D2000-0664 (finding <priceclub2000.com> to be confusingly similar to the PRICE CLUB mark).

Therefore, in accordance with previous panel decisions, the Panel concludes that the Respondent’s domain name is confusingly similar to the Complainant’s CIALIS mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is using the domain name to provide a link to an online pharmacy. The Panel consulted the site on June 23, 2005. The first page of the site gives the impression that what is being sold is Cialis-trademarked product. However, consulting the “Frequently Asked Questions” page makes it clear that the product actually being offered is a generic equivalent.

As stated in Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2001-1086, “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”.

In addition, evidence also shows that Respondent is using the disputed domain name for commercial purposes. As in Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750, it is reasonable to infer –is in particular in the light of Respondent’s default – that Respondent is compensated for directing traffic the website promoting generic CIALIS. As a result, the Panel also concludes that the Respondent is making a non legitimate commercial use of the disputed domain name 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 name.

C. Registered and Used in Bad Faith

The Complainant has established rights to the CIALIS trademark in 1999 and that the trademark was known in the media and was used for advertising prior to the registration of the Respondent’s registration of the domain name on September 13, 2004. The Respondent appears to have been in the business of dealing in pharmaceutical products. Therefore, it appears that the Respondent has registered the domain name in bad faith.

As in Lilly ICOS LLC v. Abadia Distribution, WIPO Case No. D2005-0449, the Panel has visited the relevant website and agrees that the Respondent is trading on the value established by Complainant in its marks: the Respondent is using the Complainant’s CIALIS trademark in the Domain Name to sell generic versions of CIALIS drugs.

As decided in Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101, “Policy paragraph 4(b)(iv) provides that registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (National Arbitration Forum, March 21, 2000)”.

In the present case, the Respondent’s site is particularly misleading as it gives the impression that it is offering CIALIS products when it is apparently offering the generic equivalent at roughly 60% of the price of the trademarked equivalent.

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

D. Relief requested

The Complainant requests transfer of the domain name. As the domain name consists of the Complainant’s trademark and descriptive words, transfer of the domain name would not infringe any third party rights and the Panel decides that it is appropriate in the circumstances.

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 <mycialispharmacy.com> be transferred to the Complainant.

Thomas Webster
Sole Panelist

Dated: June 20, 2005