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Lilly ICOS LLC v. 2thetop Marketing [2005] GENDND 1280 (22 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. 2thetop Marketing

Case No. D2005-0559

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 2thetop Marketing, New Smyrna Beach, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <cialis-us.com> (hereinafter the “Domain Name”), is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2005. On May 27, 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 27, 2005, Go Daddy Software 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 June 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2005.

The Center appointed Terrell C. Birch as the Sole Panelist in this matter on July 8, 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

Complainant’s rights in the CIALIS mark date back to as early as June 17, 1999, when it filed for registration of the CIALIS trademark with the United States Patent and Trademark Office. The CIALIS mark was registered on the principal register on June 10, 2003 (Registration No. 2,724,589), giving Complainant a constructive use date of June 17, 1999, and priority over those with competing claims to the CIALIS mark based upon later use. 15 U.S.C. § 1057(c).

Complainant’s decision to use the CIALIS trademark to identify its pharmaceutical product was made public in July 2001. There has been substantial early media coverage of Complainant’s product. 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. Complainant began sales in the United States of America in November 2003. Further substantial media coverage occurred regarding Complainant’s launch of its product in various markets. In total, Complainant has obtained more than eighty-seven (87) registrations for the CIALIS mark covering more than 117 countries, and the CIALIS trademark is the subject of pending registration applications filed by Complainant in twenty-four (24) countries. Additionally, in 2003, Complainant spent in excess of 13 million dollars to market and sell its CIALIS brand product worldwide and U.S. sales of the CIALIS brand product totaled more than 27 million dollars. For these reasons, Complainant believes that it is reasonable to infer that the CIALIS trademark is well-known.

5. Parties’ Contentions

The following factual and legal contentions have been presented by Complainant:

A. Complainant

1. The Domain Name is confusingly similar to a trademark in which the Complainant has rights

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

(a) Complainant’s use and registration of the CIALIS trademark pre-dates Respondent’s registration of the Domain Name

Complainant notes that due to the nature of its business (pharmaceutical drugs) and the regulated environment in which it operates, there often can be a lengthy period of time before its products can be sold to the public. Complainant began filing trademark applications for the CIALIS mark approximately three (3) and one-half (1/2) years prior to the first public sale of product bearing the CIALIS mark. This necessary delay between trademark selection and commercialization of the product identified by that trademark does not lessen Complainant’s rights in its CIALIS trademark. See Eli Lilly and Company v. Xigris Internet Services, WIPO Case No. D2001-1086 (November 22, 2001).

Because Respondent registered the Domain Name on November 25, 2003, Complainant’s rights in the CIALIS trademark predate Respondent’s registration date, and Complainant has both senior and exclusive rights in the CIALIS mark. Complainant also has an Internet presence, primarily through the website accessed by the domain name <cialis.com>, that it uses to advertise and provide information regarding its pharmaceutical product. The <cialis.com> domain name was registered by Eli Lilly and Company on August 10, 1999. Complainant has used this domain name to identify a website since at least June 2001.

(b) The CIALIS mark is distinctive

Complainant submits that the CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use. The CIALIS mark is a distinctive identifier of the source of Complainant’s pharmaceutical product, and Respondent’s addition of the descriptive word “us” 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 (November 8, 2004).

(c) The Domain Name is confusingly similar to the CIALIS Mark

The addition of a descriptive word 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 (December 20, 2004) (determining that the respondent’s addition of the words “apcalis” or “viagra” to the disputed domain names <cialisapcalis.com> and <cialis-viagra.info> did not eliminate the confusing similarity, and that the additional words referred back to the CIALIS mark by suggesting an association with Complainant, thereby reinforcing the disputed domain names’ confusing similarity to the CIALIS mark); Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891 (January 28, 2005) (finding the addition of the generic word “generic” and the generic letter “a” to Complainant’s CIALIS mark did not prevent the domain name from being confusingly similar to the Mark); Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004) (determining that the addition of the words “drug”, “online”, “buying” and “guide” to Complainant’s registered CIALIS trademark did not eliminate the confusing similarity between the CIALIS mark and the <cialis-drug-online-buying-guide.com> domain name because the additional words did not distinguish the owner of the disputed name from Complainant); Lilly ICOS LLC v. Anwarul Alam/”- -”, WIPO Case No. D2004-0793 (November 26, 2004) (determining that the addition of the descriptive word “city” to the disputed domain name <cialiscity.com> did not eliminate the confusing similarity).

In the present case, Respondent’s addition of the descriptive word “us” to Complainant’s CIALIS mark is insufficient to remove the confusion which inevitably arises from Respondent’s use of the CIALIS mark in the Domain Name. The use of the term “us” only serves to modify Complainant’s mark by indicating where the product may be purchased (i.e., the U.S.), and the use of the term in the Domain Name is not sufficient to negate the similarity between the Domain Name and the mark CIALIS. The CIALIS product is marketed as “CIALIS” in many countries where English is not the main language, and given the worldwide ubiquity of the CIALIS brand product, it is probable that a significant number of Internet consumers will assume that the Domain Name must resolve to a website which is somehow associated with Complainant’s CIALIS brand product, or at least endorsed by Complainant as the makers of the CIALIS product. Some Internet consumers will likely assume that the mark CIALIS could only be used with Complainant’s consent, and that assumption will lead easily to the further assumption that such consent must have been given by Complainant. See Lilly ICOS LLC v. Emilia Garcia, WIPO Case No. D2005-0031 (March 29, 2005).

Further, 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 (March 24, 2000). With the exception of the descriptive term “us”, the Domain Name consists of Complainant’s CIALIS mark. For all of these reasons, Respondent’s Domain Name is confusingly similar to Complainant’s CIALIS trademark.

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

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

(a) Respondent is using the Domain Name for commercial gain

Respondent has no rights or legitimate interests in the Domain Name. It is apparent from the website associated with the Domain Name that Respondent is attempting to capitalize on the valuable reputation and goodwill of the CIALIS mark to direct Internet consumers to a website on which generic CIALIS product is advertised.

The Domain Name <cialis-us.com> resolves to a website that both links an Internet consumer to several websites that will enable the consumer to purchase a product described as Complainant’s CIALIS brand product and links the Internet consumer to a website that enables the consumer to purchase a “Generic Cialis” product. On the left-hand side of its homepage, Respondent provides a “Buy Generic Cialis” hyperlink that links the consumer to another webpage on the “www.cialis-us.com” website. On this webpage, Respondent promotes the “Generic Cialis” product and explains that “Generic Cialis can be purchased at a fraction of the cost of name brand”.

When the Internet consumer clicks on the “Buy Now” hyperlink within the price table labeled “Best Generic Levitra Prices”, the consumer is directed to the website for Rx-mex “www.rx-mex.com”, an online pharmacy from which the consumer may purchase a generic version of Complainant’s CIALIS brand product. The “www.rx-mex.com” website describes an affiliate program – a program in which an online pharmacy makes commission payments to a website owner when the website owner links an Internet consumer to the online pharmacy and a sale is generated. Respondent’s provision of hyperlinks on the website associated with the <cialis-us.com> Domain Name to direct an Internet consumer’s website viewer to the “www.rx-mex.com” website is indicative of Respondent’s intent to commercially gain from using Complainant’s CIALIS mark in the Domain Name. See Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101 (March 16, 2005) (determining that the respondent’s provision of links to online pharmacies, including Rx-Mex, suggested that the respondent may have been a member of the online pharmacies’ affiliate programs and may have received payments for redirecting traffic to those online pharmacies, thereby appearing to have used the disputed domain name for commercial gain); Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004) (determining that the respondent used the disputed domain name for commercial purposes because the respondent’s website provided links to online pharmacies that sold Complainant’s CIALIS brand pharmaceutical product). As a probable participant in the Rx-Mex affiliate programs, Respondent likely derives commercial benefit from every purchase made on the Rx-Mex website by a consumer who was linked to the website through Respondent’s “www.cialis-us.com” website.

(b) Respondent is not authorized by Complainant to use the CIALIS trademark

Complainant has not given Respondent permission, authorization, consent or license to use its CIALIS mark. However, despite this fact, the Domain Name resolves to a website enabling Respondent to commercially benefit from the strength of Complainant’s CIALIS mark and the reputation of the pharmaceutical preparation with which the CIALIS mark is associated.

(c) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services

Respondent’s use of the confusingly similar Domain Name does not amount to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. 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. See G. D. Searle & Co. v. James Mahoney, Case Number FA 112559 (National Arbitration Forum, June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy paragraph 4(c)(i)); See also G.D. Searle & Co. v. Fred Pelham, Case Number FA 117911 (National Arbitration Forum, September 19, 2002) (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 the complainant’s mark in order to attract Internet users to its website).

Additionally, 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. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004). Because Complainant has U.S. patent rights in the CIALIS brand pharmaceutical product, the sale of any “generic” version of Complainant’s pharmaceutical product in the U.S. is unlawful. Respondent, however, promotes and advertises for sale on its “www.cialis-us.com” website the “Generic Cialis” product. Therefore, because Respondent is using the CIALIS mark in the Domain Name to attract Internet consumers to its website, whereupon Respondent promotes, advertises and provides a link to a website that sells unlawful “Generic Cialis” products comprising untested chemical compositions, Respondent’s use of the Domain Name is not a bona fide offering of goods.

3. The Domain Name was registered and is being used in bad faith

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

Complainant has a June 17, 1999, constructive use date of the CIALIS trademark, and media coverage of the CIALIS brand product is dated as early as 2001. Complainant has extensively marketed and advertised its pharmaceutical product using the CIALIS trademark. In 2003, the year in which Respondent registered the Domain Name, Complainant spent in excess of 13 million dollars to market and sell its CIALIS brand product worldwide and U.S. sales of the CIALIS brand product totaled more than 27 million dollars. Therefore, because it is reasonable to infer that the CIALIS trademark is well-known, it is highly likely that Respondent knew of Complainant’s CIALIS mark at the time of registering the confusingly similar Domain Name in November of 2003.

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. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (National Arbitration Forum, March 21, 2000) (finding bad faith where the respondent registered and used the disputed domain name to attract users to a website sponsored by the respondent). As described above, Respondent is using Complainant’s CIALIS trademark in the Domain Name to attract Internet consumers to its “www.cialis-us.com” website, on which it advertises and provides links from which products described as Complainant’s CIALIS brand product as well as “Generic Cialis” product may be purchased.

Respondent is also illegally using Complainant’s intellectual property to promote and facilitate the sale of the “Generic Cialis” products. As shown on the home page of Respondent’s “www.cialis-us.com” website, Respondent is using Complainant’s CIALIS logo to advertise and facilitate the sale of “Generic Cialis” product. Respondent’s use of Complainant’s logo 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 website.

Lastly, Respondent’s use of Complainant’s CIALIS mark in the Domain Name is potentially harmful to the health of many unsuspecting consumers who purchase unlawfully sold pharmaceutical products advertised on Respondent’s 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 (“FDA”) or other health authorities around the world. Complainant’s CIALIS product is only available on a physician’s prescription and is manufactured, labeled, and sold in strict compliance with the FDA and other health authority laws and regulations.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel adopts the factual and legal contentions set forth by the Complainant in Section 4 and paragraphs 1 (a)-(c) under Section 5.A. above, respectively.

Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s CIALIS trademark or service mark and that Complainant has superior rights in such mark(s) to Respondent.

B. Rights or Legitimate Interests

The Panel adopts the factual and legal contentions set forth by the Complainant in Section 4 and paragraphs 2 (a)-(c) under Section 5.A. above, respectively.

There is no evidence in the case file that Respondent has any rights or legitimate interests in the Domain Name. The Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel adopts the factual and legal contentions set forth by the Complainant in Section 4 and paragraph 3 under Section 5.A. above, respectively.

It is very likely that the Respondent had prior knowledge of the Complainant and its trademark when it registered the Domain Name.

Accordingly, the Panel finds that Respondent has registered and used the 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, <cialis-us.com> be transferred to the Complainant.

Terrell C. Birch
Sole Panelist

Dated: July 22, 2005