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Lilly ICOS LLC v. Jay Kim [2005] GENDND 16 (28 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Jay Kim

Case No. D2004-0891

1. The Parties

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

The Respondent is Jay Kim, London, United Kingdom of Great Britain and Northern Ireland (“Respondent”).

2. The Domain Names and Registrar

The following disputed domain names are registered with Go Daddy Software:

<buy-cialis-a.biz>
<buy-cialis-a-i.biz>
<buy-cialis-i-a.biz>
<buy-cialis-i.biz>
<buy-cialis-online-a.biz>
<buy-cialis-online-a-i.biz>
<buy-cialis-online-i-a.biz>
<buy-cialis-online-0.biz>
<buy-cialis-online-00.biz>
<buy-cialis-0.biz>
<buy-cialis-000.biz>
<buy-online-cialis-a.biz>
<cialis-buy-a.biz>
<cialis-buy-online-a.biz>
<cialis-cheapest-a.biz>
<cialis-generic-a.biz>
<cialis-online-order-a.biz>
<cialis-online-purchase-a.biz>
<cialis-order-a.biz>
<cialis-order-online-a.biz>
<cialis-purchase-online-a.biz>
<cialis-sale-a.biz>
<lowest-price-cialis-a.biz>
<online-buy-cialis-a.biz>
<on-line-cialis-a.biz>
<online-cialis-buy-a.biz>
<online-cialis-purchase-a.biz>
<online-purchase-cialis-a.biz>
<order-cialis-a-i.biz>
<order-cialis-i-a.biz>
<order-cialis-i.biz>
<order-cialis-online-a.biz>
<order-cialis-0.biz>
<order-cialis-000.biz>
<purchase-cialis-a.biz>
<purchase-cialis-online-a.biz>
<purchase-online-cialis-a.biz>
<sale-cialis-a.biz>
<cialis-online-a.biz>

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2004. On October 29, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On October 29, 2004, 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 November 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 28, 2004. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on December 2, 2004.

The Center appointed Michael C. Pryles as the sole panelist in this matter on December 10, 2004. 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.

When the Center forwarded the Complaint to Respondent its communication referred to 38 domain names. However the Complaint referred to 39 domain names. The Center's communication omitted the disputed domain name <cialis-online-a.biz>. At the Panel's suggestion the Center then notified Respondent of this omission and gave an opportunity to reply. No reply was received within the time allowed. Accordingly this decision deals with all 39 disputed domain names, including <cialis-online-a.biz>.

4. Factual Background

Complainant is a joint venture between ICOS Corporation and Eli Lilly and Company. Its complaint relates to a pharmaceutical product named CIALIS. CIALIS is a product that treats erectile dysfunction.

Complainant first registered the CIALIS mark in the U.S. on June 17, 1999. Since then, Complainant has obtained more than 86 registrations of the mark. There are also pending registration applications in 24 countries. CIALIS has been reported in the media since at least June 2001.

Complainant has an Internet site (“www.cialis.com”) that it uses to advertise and provide information about the product. The domain name <cialis.com> was registered by Eli Lilly & Company on August 10, 1999.

Apart from the name and address details mentioned above, no information is known about Respondent.

The domain names at issue (the “domain names”) were registered on November 2, 2003. The relevant registrar is Go Daddy Software, Inc.

5. Parties’ Contentions

A. Complainant

Complainant alleges that when the domain names are entered into the web address box of a web browser, the following occurs:

- a website opens that appears to be sponsored by or affiliated with Complainant and advertises the sale of CIALIS; and

- multiple additional websites (the “additional websites”) operated by Respondent also open and either sell fake CIALIS or real CIALIS without Complainant’s permission.

Complainant also alleges that

(i) the domain names are identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names are being registered and are being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove each of the following elements in order to obtain relief:

(i) the domain names are identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names are being registered and are being used in bad faith.

Complainant bears the burden of proof for each of these elements.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy Complainant must first prove that the domain names are identical or confusingly similar to the CIALIS mark.

Each of the domain names contains Complainant’s CIALIS mark as well as additional words, letters and/or numerals, such as ‘000’, ‘0’, ‘i’, ‘a’, ‘buy’, ‘purchase’, ‘sale’, ‘lowest’, ‘price’ and ‘online’ (“the additions”). Because of the additions, the domain names cannot be considered ‘identical’ to Complainant’s mark.

However, the Panel finds that they are ‘confusingly similar’. This is because, first, the word CIALIS has been created by Complainant, is highly distinctive and has no common colloquial use. Thus any reference to CIALIS is likely to create confusion with Complainant’s product. Second, the additions are generic. Therefore the additions would not dispel the confusion created by the use of the word CIALIS. Accordingly, the Panel finds that the first element of paragraph 4(a)(i) of the Policy has been met.

The second element of paragraph 4(a)(i) of the Policy requires Complainant to prove that it has rights in the CIALIS mark. It has done so by providing evidence that it has registered the mark in the United States and many other countries.

B. Rights or Legitimate Interests

Respondent has not responded to Complainant’s contentions, and therefore has not produced evidence of any rights or legitimate interest in the disputed domain name.

Complainant has not granted Respondent a licence to use the mark and has argued that Respondent has no other legitimate interests in the disputed domain name.

According to paragraph 14(b) of the Rules, the Panel is entitled to draw a negative inference from the Respondent’s silence. The Panel does so, and finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant contends that the domain names were registered by Respondent on November 2, 2003, and supports this with evidence of Whois searches. The Panel accepts this evidence.

In regard to using the domain names in bad faith, Complainant alleges that Respondent’s conduct falls within the example of bad faith provided for in paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) states:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel has entered the domain names into a web browser and visited the relevant websites. The Panel agrees that these websites give the appearance of being affiliated with Complainant. The Panel accepts that Complainant is not in fact affiliated with these websites.

In addition, these websites contain hyperlinks to other websites that purport to sell real or fake CIALIS. Multiple websites also open automatically that do the same. The Panel accepts Complainant’s evidence that these websites were also registered by Respondent.

In light of this the Panel has had little difficulty in concluding that Respondent has registered and used the domain names in bad faith. It is clear that Respondent is using the domain names to cause unsophisticated internet users searching for information on Complainant’s CIALIS brand product to mistakenly believe that Respondent is affiliated with the Complainant, or is authorized to use the name CIALIS and/or sell its products.

Further, it is clear that Respondent intends to exploit the name CIALIS for commercial gain. These circumstances suffice to establish 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 following domain names be transferred to the Complainant.

Michael C. Pryles
Sole Panelist

Dated: January 28, 2005

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