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Lilly ICOS LLC v. Redzone [2005] GENDND 1326 (4 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Redzone

Case No. D2005-0534

1. The Parties

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

The Respondent is Redzone, Portsmouth, New Hampshire, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cialisprescrips.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on May 18, 2005 and by hardcopy on May 23, 2005. On May 18, 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 19, 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.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 25, 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 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2005.

The Center appointed Thomas Webster as the sole panelist in this matter on June 22, 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, Lilly ICOS LLC, is 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 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, the 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 August 28, 2003. The disputed domain name redirects Internet users to an online pharmacy.

5. Parties’ Contentions

A. Complainant

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 descriptive word ‘prescrips’ to the disputed domain name “does not negate the distinctiveness of Complainant’s CIALIS mark.”

According to the Complainant, “the addition of a descriptive word to Complainant’s CIALIS trademark does not prevent a finding of confusing similarity” 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.”

Furthermore, according to the Complainant, “Respondent’s addition of the descriptive word ‘prescrips’ to Complainant’s CIALIS mark suggests that Respondent’s web site is a location on the Internet where a consumer may purchase Complainant’s CIALIS brand product with a physician’s prescription.”

The Complainant adds that “it is apparent from the web site associated with the Domain Name that Respondent is attempting to capitalize on the valuable reputation and goodwill of the CIALIS mark”, and that “Respondent is using the Domain Name for commercial gain” although the Complainant has “not given Respondent permission, authorization, consent or license to use its CIALIS mark in the Domain Name.”

Moreover, the Complainant argues 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 another’s competing web site 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 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 web site for commercial gain.”

The Complainant also argues that “Respondent is using Complainant’s CIALIS trademark in the Domain Name to attract Internet consumers to the “www.cialisprescrips.com” web site, from which the consumers may purchase a product described as Complainant’s CIALIS brand product.” According to the Complainant, “Respondent’s use of Complainant’s CIALIS mark in the Domain Name is potentially harmful to the health of many unsuspecting consumers who purchase pharmaceutical products from the “www.cialisprescrips.com” web site under the mistaken impression that they are dealing with Complainant.”

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.

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 an additional descriptive word. 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).

In this case, the descriptive word “prescrips” is a short form for prescriptions which are apparently usually required to obtain CIALIS.

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.

A. 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 or 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 issue.”

The Respondent’s web site is used either to advertise and sell CIALIS drugs or to resolve to a site that does so. 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 for commercial use and is attempting to attract consumers with the Complainant’s trademark. The issue is whether this is a “bona fide offering of goods” or a “fair use of the domain name” or constitutes rights or legitimate interests in the domain name by analogy.

The Respondent’s web site does appear to offer CIALIS products. In addition, the web site gives every indication that it seeks to meet U.S. requirements for the sale of the product. However, the site offers competing products (such as VIAGRA) and to use a domain name containing a trademark to offer competing trademarks is not a “bona fide offering of goods” or a “fair use of the domain name” and is more akin to “bait and switch”. (See: Nokia Corporation v. Nick Holmes t/a EType Media, WIPO Case No. D2002-0001 and Zwack Unicom Ltd v. Duna, WIPO Case No. D2000-0037).

The Respondent’s web site also apparently offered the CIALIS product in capsule form and the Complainant maintains that it does not produce CIALIS in this form. The Respondent has not denied this contention. Therefore, it appears possible that the Respondent is using the site to offer not only CIALIS but also some equivalent product. This would, of course, be an improper use of the domain name. (Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168).

The more basic point is that the Respondent, by using the Complainant’s trademark as the distinctive part of the domain name, is making a non legitimate commercial use of the disputed domain name that misleadingly diverts consumers to its site. (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 the complainant’s mark in order to attract Internet users to its web site).

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 by Respondentof the domain name on August 28, 2003. The Respondent appears to have been in the business of dealing in pharmaceutical products. Therefore, it appears that the registration of the domain name was made in bad faith.

Moreover, the Panel has visited the relevant web site and agrees that the Respondent is trading on the value established by the Complainant in its marks. The Respondent is using the Complainant’s CIALIS trademark in the domain name to redirect Internet consumers to an online pharmacy where they can purchase products described as the Complainant’s CIALIS brand product as well as third party products. Moreover, there even appears to be some doubt as to whether the products described as the CIALIS products are in fact from the Complainant, as they are in capsule form and the Complainant does not manufacture CIALIS in that form.

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 web site 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, Lawcite: FA0093668).”

Therefore, according to the Policy, paragraph 4(a)(iii), the Panel is of the view that the Respondent has registered and is 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 a descriptive word, 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 <cialisprescrips.com> be transferred to the Complainant.

Thomas Webster
Sole Panelist

Date: July 4, 2005