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Lilly ICOS LLC v. Sachin Tailor [2005] GENDND 1446 (16 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Sachin Tailor

Case No. D2005-0580

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 Sachin Tailor, Mumbai, Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <cialisclones.com> is registered with Direct Information Pvt. Ltd., d/b/a Directi.com.

3. Procedural History

The Complaint was filed with WIPO Arbitration and Mediation Center (the “Center”) by e-mail on June 6, 2005 and on June 10, 2005, by hard copy. On June 7, 2005, the Center transmitted by email to Direct Information Pvt. Ltd., d/b/a Directi.com a request for a registrar verification in connection with the domain name at issue. On June 8, 2005, Direct Information Pvt. Ltd., d/b/a Directi.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the current registrant of the domain name and providing the contact details for the administrative, technical and billing contact. On June 14, 2005, the Respondent commented on the Complaint as is discussed below.

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 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2005.

The Center appointed Thomas Webster as the sole panelist in this matter on July 28, 2005. The Panelist 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 has filled 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.

Complaint’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.

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.

Additionally, in 2004, Complainant spent approximately 39 million dollars to market and sell its CIALIS brand product worldwide. US sales of Cialis totaled more that $204 million in 2004 and worldwide sales of the product for 2004, were in excess of $550 million.

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

The Respondent registered the domain name on April 20, 2004. The disputed domain name redirects Internet users to an online pharmacy where generic equivalents to Cialis are offered.

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”. The Complainants also states that the CIALIS mark “is not a term that domain name registrants would legitimately choose unless seeking to create an impression of an association with Complainant”.

According to the Complainant, “the addition of a word 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, December 20, 2004) 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, March 24, 2000).

The Complainant also claims that, in the present case, “Respondent’s addition of the word clones to Complainant’s CIALIS mark is insufficient to remove the confusion which inevitably arises from Respondent’s use of the distinctive CIALIS mark in the domain name”. The Complainant argues that “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”.

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 a website on which generic CIALIS product is promoted. Because the domain name <cialisclones.com> resolves to a website that greets an Internet consumer with a hyperlink that reads “Buy CIALIS clones online now” and, by clicking the hyperlink, the Internet consumer is linked to the site of an online pharmacy that sells competing products, the Complainant infers that the Respondent is compensated for directing traffic to the website of the online 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”.

The Complainant also argues 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”. Because the Respondent is using the CIALIS mark in the Domain Name to attract Internet consumers to its website, whereupon the Respondent promotes, advertises and provides a link to a website that sells FORZEST, an unlawful and generic CIALIS product comprising untested chemical compositions, the Respondent’s use of the Domain Name is not a bona fide offering of goods.

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 domain name is potentially harmful to the health of many unsuspecting consumers who may 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 or other health authorities around the world”.

B. Respondent

The Respondent did not transmit a formal reply to the Complainant’s contentions. As However, in its email of June 14, 2005, the Respondent stated:

“The additional word Clones does distinguish the owner of the disputed domain name CialisClones.com from the owner of the mark Cialis as it implies a very distinctive if not the opposite meaning like in HUMANS and HUMAN CLONES. Clones will never be considered to be the original. Internet users will NOT assume that the domain name CialisClones.com is used by Eli Lilly as Clones clearly has the meaning of “Generic”, not the original.”

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

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 word “clones”. 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).

The domain name is therefore composed of a trademark and the word “clones” and at least two other WIPO panels have found “confusing similarity” in circumstances involving a “trademark + clone” domain name. In Institut Straumann A.G. v. Core-Vent Corporation, WIPO Case No. D2000-0404 the issue was the domain name <straumann-clone>. The Panel held that: “Firstly…. this Administrative Panel accepts that subject to any patent or registered design or similar rights which the Complainant may have, the Respondent is entitled to make and market products which are identical or similar to the Complainant’s products. Secondly this Administrative Panel also accepts that the Respondent may well be entitled to describe its products as being “clones” of the Complainant’s products. However it does not follow that the Respondent may make the leap of logic and claim that the Respondent is therefore entitled to use the Complainant’s trademark as the Respondents domain name.”

In Dell Inc. v. None, WIPO Case No. D2004-0511, the domain name in issue was: <dellcomputersclone.com>. In that case, the Panel held that: “This argument [that clones refers to a generic equivalent and not the trademarked product] merits attention, but ultimately is not persuasive here. The dominant element of the Domain Name is the strong (and in all likelihood famous) mark DELL, which is followed immediately by the noun (“computers”) that best describes the goods and services provided by Complainant under that mark. By the time one reaches the word “clone,” one is clearly prepared to see something related to Complainant’s goods or services. The word “clone” may well suggest to some that they are about to visit a site featuring something other than a Dell computer, but others might not reach the same conclusion. There remains, notwithstanding Respondent’s assertion, considerable room for confusion as to the source, sponsorship, affiliation, or endorsement of the offerings one may expect to find at the corresponding website.

Indeed, the very allure of this Domain Name - assuming it was ultimately intended to resolve to a website selling Dell clones - is that it trades on the renown of the DELL mark. To sell Dell clones (whether legitimately or otherwise) is presumably different from selling, say, Compaq clones. The presence of the DELL mark in this Domain Name must have some value as a signal to potential customers.”

In the present case, with a pharmaceutical product, the addition of the word “clone” implies that the product is the same as that of the Complainant. Therefore, while the Respondent does have a point in stating that a clone is not the original, it does not dissipate the confusion arising from use of the Complainant’s trademark as the key element of the domain name.

Given the strength and renown of Complainant’s mark , the word “clones” placed at the end of the domain name is not sufficient to overcome the confusing similarity between the mark and the Domain Name.

Moreover, it is obvious that the presence of the CIALIS mark in the Domain Name must have some value as a signal to potential customers.

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

Paragraph 4(c) of the Policy give 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 non commercial 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 was and appears to still be used to provide a link to an online pharmacy. There is no argument that the Respondent was known by the domain name or has a trademark. The evidence is that the Responding 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.

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”.

The Respondent’s provision of a link to an on line pharmacy suggests that he might be receiving payment for redirecting traffic. Therefore, the Panel 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 Policy, it appears 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 showed that the trademark was known in the media and was used for advertising prior to the registration of the domain name by the Respondent on April 20, 2004. 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, according to Exhibit 11 to the Complaint, the Respondent was trading on the value established by Complainant in its marks. At the time the Complaint was prepared, the Respondent was using the Complainant’s CIALIS trademark in the Domain Name to redirect Internet consumers to an online pharmacy where they can purchase competing products. The web site now shows an article on legal proceedings with the possibility of linking to the Forzest site. However, that indirect use of the Cialis name to apparently sell generic drugs competing with Cialis is also objectionable.

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 the Policy paragraph 4(a)(iii), it appears that the Respondent has registered and has been using 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 <cialisclones.com> be transferred to the Complainant.

Thomas Webster
Sole Panelist

Dated: August 16, 2005