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Lilly ICOS LLC v. idesigns [2005] GENDND 1270 (26 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. idesigns

Case No. D2005- 0482

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 idesigns, Weizman, Naharyia, Israel.

2. The Domain Name and Registrar

The disputed domain name <great-cialis-viagra.biz> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with WIPO Arbitration and Mediation Center (the “Center”) by e-mail on May 3, 2005, with the Respondent listed as “Domains by Proxy, Inc.”. On May 3, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On May 4, 2005, Go Daddy Software transmitted by email to the Center its verification response stating that idesigns” is listed as the current registrant of the domain name and providing the contact details for the administrative and technical contact. At the same time, the registrar indicated that it had not received a copy of the Complaint.

On May 10, 2005, the Center notified the Parties that the Complaint was administratively deficient as it named “Domains by Proxy, Inc.” as the Respondent and not “idesigns”. The Complainant filed an amendment to the Complaint and sent it to the Center on May 10, 2005, by email and on May 31, 2005, in hardcopy. 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 June 1, 2005. A copy of this notification together with the Complaint and the amendment to the Complaint have been sent to the Respondent in accordance with the Rules. The due date for Response was June 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2005.

The Center appointed Thomas Webster as the sole panelist in this matter on July 13, 2005. The Panel has submitted a 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 filed for registration of the CIALIS mark with the United States Patent and Trademark Office on June 17,1999. The CIALIS mark was registered on the principal register (Registration No. 2,724,589) on June 10, 2003.

The Complainant’s decision to use the CIALIS trademark to identify its pharmaceutical product was made public in July 2001, and the Complainant began selling pharmaceutical products identified by the CIALIS mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand and since November 2003, by sales in the United States of America.

In total, Complainant has obtained more than eighty-seven registrations for the CIALIS mark covering more than 117 countries and the CIALIS trademark is subject of pending registration applications filed by Complainant in twenty-four countries.

In 2004, Complainant spent approximately $39 million to market and sell its CIALIS brand product worldwide; U.S. Sales of the CIALIS brand product totaled more than $206 million dollars; and worldwide sales of CIALIS brand product were in excess of $550 million dollars.

The Complainant also has an Internet presence, primarily through the website accessed by the domain name <cialis.com>, registered on August 10, 1999.

The Respondent registered the disputed domain name on February 10, 2004. The Respondent’s website offers various pharmaceutical products, including CIALIS and VIAGRA, for sale.

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” and that the CIALIS mark acts as an “ identifier of the source of Complainant’s pharmaceutical product”. According to the Complainant, the Respondent’s addition of descriptive word “great” and the addition of the trademark “VIAGRA”, to the domain name “does not negate the distinctiveness of Complainant’s CIALIS mark”. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750.

The Complainant claims that “the addition of descriptive words to Complainant’s CIALIS trademark does not prevent a finding of confusing similarity” (Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794,) and “when a domain name incorporates a distinctive mark in its entirety, that creates sufficient similarity between a mark and a domain name to render the domain name confusingly similar” (EAuto v. Triple S. Auto Parts, WIPO Case No. D2000-0047).

Furthermore, the Complainant adds that “it is apparent from the website associated with the domain name that the Respondent is attempting to capitalize on the valuable reputation and goodwill of the CIALIS mark” to direct Internet users to another website on which products described as “Generic Cialis” are sold. Because Respondent is providing a link on its “www.great-cialis-viagra.biz” website to an on line pharmacy that sells “Generic Cialis” products, the Complainant infers that the Respondent is compensated for directing traffic to the website of the on line pharmacy and that the Respondent “uses the domain name for commercial gain” although the Complainant has “not given Respondent permission, authorization, consent or license to use the CIALIS mark”.

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.

Moreover, the Complainant states 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” (Am. Online, Inc. v. Tencent Comm. Corp., FA 93668, National Arbitration Forum, March 21, 2000).

Lastly, according to the Complainant, “respondent's use of Complainant’s CIALIS mark in the disputed domain name is potentially harmful to the health of many unsuspecting consumers who may purchase the Generic Cialis from the “www.generic-pharmacy.net” website under the mistaken impression that they are dealing with Complainant and, therefore, will be receiving safe and effective drugs approved by the U.S. Food and Drug Administration or other health authorities around the world”.

B. Respondent

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

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is 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

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.

The disputed domain name contains the Complainant’s CIALIS mark as well as the words “great” and “Viagra”. 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).

As regards the addition of the word “Viagra” to the disputed domain name, 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 UDRP 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”.

The domain name at issue is therefore composed of the Complainant’s trademark, a trademark of a third party and a general term. This gives the impression that the site is intended to attract persons seeking the Complainant’s trademarked product.

Therefore, in accordance with previous UDRP 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

Paragraph 4(c) of the Policy gives the following three examples of ways in which a respondent may demonstrate its rights or legitimate interests to a domain name:

“(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 and services;

or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;

or

(iii) you are making a legitimate noncommercial 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 issues.”

The Respondent’s website is used to offer CIALIS and competing products (including VIAGRA). There is no argument that the Respondent was known by the domain name or has a trademark. The evidence is that the Respondent is using the domain name at issue for commercial use and is attempting to attract consumers with the Complainant’s trademark.

It is well accepted that the use of a trademark to attract consumers to a website offering competing products is not a bona fide use of the domain name. 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.

Therefore, in accordance with Paragraph 4 (a)(ii) of the Policy, the Panel finds that the Respondent has no rights nor legitimate interest 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 the trademark was known in the media and was used for advertising prior the Respondent’s registration of the domain name on February 10, 2004. The Respondent appears to have been in the business of dealing in pharmaceutical products. Therefore, the Panel finds that the registration of the domain name was made in bad faith.

Moreover, the Panel has visited the relevant website and finds 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 disputed domain name to offer competing products.

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)”.

Therefore, according to Policy Paragraph 4(a)(iii), the Panel finds that the Respondent has registered and has been using the domain name at issue in bad faith.

D. Relief requested

The Complainant requests the transfer of the domain name <great-cialis-viagra.biz>. There are cases (including cases decided by this Panelist) holding that transfer may not be appropriate where the domain name consists of the Complainant’s trademark and the trademark of a third party as it may well infringe the rights of the third party holding the trademark. (See Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794). That concern is increased when the trademark is that of a competing company, and the Viagra trademark is apparently held by one of the Complainant’s competitors. However, there is also the concern that the remedy should be effective and in other cases the panel ordered transfer of the domain name despite the presence of a third party trademark (See Yahoo! Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195). Transfer rather than cancellation may be necessary or desirable where there has been repeated registration of the same domain name or there is otherwise some concern about ensuring that the remedy provided for under the Policy is effective. However, there is no evidence that this is the case in this instance or that the Complainant is even concerned about the issue. Therefore, in the absence of such evidence, cancellation appears to be the appropriate remedy.

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 <great-cialis-viagra.biz> be cancelled.