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Lilly ICOS LLC v. WhoisGuard Protected [2005] GENDND 1313 (12 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. WhoisGuard Protected

Case No. D2005-0542

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 WhoisGuard Protected, Westchester, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <cialis-rainbow.com> (hereinafter the “Domain Name”), is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2005. On May 23, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On May 23, 2005, eNom 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 27, 2005, by e-mail and by hardcopy of June 2, 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 June 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2005.

The Center appointed Terrell C. Birch as the sole panelist in this matter on June 28, 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 (Registration No. 2,724,589) on June 10, 2003, 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. Complainant began selling pharmaceutical products identified by the CIALIS mar k 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. There has been substantial media coverage of 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 2004, Complainant spent approximately 39 million dollars 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. For these reasons, Complainant believes that it is reasonable to infer that the CIALIS trademark is well-known.

Due to the nature of Complainant’s 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).

5. Parties’ Contentions

A. Complainant

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

A. 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))

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

Because Respondent registered the Domain Name on October 2, 2004, 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.

(2) 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 word “rainbow” 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).

(3) 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. The Counsel Group, LLC, WIPO Case No. D2005-0042 (March 29, 2005) (finding the addition of the words “get” and “rx” to the CIALIS mark to form the disputed domain name did not obviate the confusing similarity between the disputed domain name and Complainant’s 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 word “rainbow” to Complainant’s CIALIS mark does not dispel the confusion created by the use of Complainant’s CIALIS mark in the Domain Name.

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). In the case at hand, the Domain Name is confusingly similar to the CIALIS mark because it incorporates the Mark in its entirety. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004) (finding that the disputed domain name <cialis-drug-online-buying-guide.com> was confusingly similar to the CIALIS trademark because it incorporated the distinctive CIALIS mark in its entirety). With the exception of the word “rainbow,” the Domain Name consists of Complainant’s CIALIS mark. Thus, Respondent’s Domain Name is confusingly similar to Complainant’s CIALIS trademark.

B. 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))

(1) 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 attract Internet consumers to its website. The domain name <cialis-rainbow.com> resolves to a website that promotes the “Cheapest Generic Cialis Online Pharmacies” and provides links to the promoted pharmacies, i.e., “www.cialis-rainbow.com” website provides links to “www.rx-mex”, “www.budgetmedicines.com”, “www.usonlinerx.net” and “www.supersavermeds.com”. Each of these websites sell a “Generic Cialis” product. Each of these websites also describe 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 links to the “www.rx-mex.com”, “www.budgetmedicines.com”, “www.usonlinerx.net” and “www.supersavermeds.com” websites strongly suggest that Respondent is a member of the affiliate programs of these online pharmacies and receives payments each time Respondent’s website links an Internet consumer to the website and the consumer purchases a product. Therefore, because Respondent is providing links on its “www.cialis-rainbow.com” website to online pharmacies that sell “Generic Cialis” products promoted on Respondent’s website, it is reasonable to infer that Respondent is compensated for directing traffic to the website of that online pharmacy. See Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042 (March 29, 2005) (indicating that it is difficult to imagine why the respondent facilitated click-through traffic to online pharmacies having affiliate programs if not for the promise of financial compensation).

(2) 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. Despite this fact, however, 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.

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

It is not a bona fide offering of goods to use the reputation of one’s well-known mark to attract Internet traffic to a website which offers cheaper and apparently untested competitors’ products. Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042 ( March 29, 2005) (determining that it was not a bona fide offering of goods to use Complainant’s CIALIS mark in the disputed domain name to capitalize on the reputation and goodwill of the CIALIS mark by misleadingly attracting Internet users looking for websites offering the CIALIS brand product for sale to the respondent’s website). In the present case, Respondent is using Complainant’s well-known CIALIS mark in the Domain Name to lure to Respondent’s website Internet consumers searching for sites associated with Complainant’s CIALIS brand product. Upon accessing Respondent’s website, however, these Internet consumers are presented with links to online pharmacies where alternative cheaper, “Generic Cialis” products are sold which are not the CIALIS product. This is not a bona fide use, nor a “fair” or “legitimate” use, within the meaning of those expressions as used in paragraphs 4(c)(i) and (iii) of the Policy. Id.

Further, 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. For these reasons, because Respondent is using the confusingly similar Domain Name to attract Internet consumers to its website, whereupon Respondent promotes and facilitates the purchase of unlawful “Generic Cialis” products comprising untested chemical compositions, Respondent’s use of the Domain Name is not a bona fide offering of goods.

C. 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 fact, in 2004, the year in which Respondent registered the Domain Name, Complainant spent in excess of $39 million dollars to market and sell its CIALIS brand product, and sales of the CIALIS brand product exceeded $206.6 million. 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.

According to paragraph 4(b)(iv) of the Policy, 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 first attract Internet consumers to its “www.cialis-rainbow.com” website and then link the consumers to multiple websites from which the consumers may purchase generic versions of Complainant’s CIALIS brand product.

Lastly, Respondent’s use of Complainant’s CIALIS mark in the Domain Name is potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold pharmaceutical products promoted 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 A.(1)-(3) 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 A.(1)-(3) 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 Paragraphs C 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-rainbow.com>, be transferred to the Complainant.

Terrell C. Birch
Sole Panelist

Date: July 12, 2005