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Lilly ICOS LLC v. John Hopking / Neo net Ltd. [2005] GENDND 1640 (8 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. John Hopking / Neo net Ltd.

Case No. D2005-0694

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 John Hopking / Neo net Ltd., Denver, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain names are <bestcialisnow.com>, <buyingcialisonline.com>, <buyonlinecialis.com>, <buyonlinecialisinusa.com>, <cialis-instantly.com>, <cialis-instantly.net>, <cialisandmore.com>, <cialisandmore.net>, <cialisinstant.com>, <cialisnowonline.com>, <cialisnowstore.com>, <cialisrightnow.com>, <get-cialis-now.com>, <get-cialis-now.net>, <getcialisonlinenow.com>, <instant-cialis.net>, <instantcialis.net>, <mycialisnow.com>, <onlinecialisinusa.com>, <onlinecialisorder.com>, <buyonlinecialis.net>, <onlinecialissales.com>, <cialisonlinenow.com>.

The above domain names are all registered with Direct Information Pvt. Ltd. d/b/a Directi.

3. Procedural History

The Complaint was filed with WIPO Arbitration and Mediation Center (the “Center”) by e-mail on June 30, 2005, and in hardcopy on July 6, 2005. On July 1, 2005, the Center transmitted by email to Direct Information Pvt. Ltd. d/b/a Directi a request for a registrar verification in connection with the domain names at issue. On July 2, 2005, Direct Information Pvt. Ltd. d/b/a Directi transmitted by email to the Center its verification response listing the Respondent as the current registrant of the domain names and providing the contact details for the administrative, technical and billing 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2005.

The Center appointed Thomas Webster as the sole panelist in this matter on August 23, 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 filed 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.

Complainant’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 the subject of pending registration applications filed by Complainant in twenty-four countries.

Additionally, in 2004, Complainant spent approximately 39 million United States 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 <cialis-instantly.net> and <cialis-instantly.com> domain names on February 20, 2005; registered the <cialisandmore.com> and <cialisandmore.net> domain names on February 25, 2005; registered the <instantcialis.net> and <instant-cialis.net> domain names on March 5, 2005; registered the <get-cialis-now.net>, <get-cialis-now.com>, <cialisnowstore.com> and <bestcialisnow.com> domain names on March 11, 2005; registered the <mycialisnow.com>, <getcialisonlinenow.com>, <cialisonlinenow.com>, <cialisrightnow.com>, <cialisnowonline.com> and <cialisinstant.com> domain names on March 16, 2005; and registered the <buyonlinecialisinusa.com>, <buyingcialisonline.com>, <buyonlinecialis.com>, <buyonlinecialis.net>, <onlinecialisorder.com>, <onlinecialisinusa.com> and <onlinecialissales.com> domain names on April 19, 2005.

The disputed domain names redirect Internet users to several online pharmacies.

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” and that the CIALIS mark acts as an “ identifier of the source of Complainant’s pharmaceutical product”.

The Complainant claims that “the addition of descriptive words to Complainant’s CIALIS trademark does not prevent a finding of confusing similarity” (Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004–0891) 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).

According to the Complainant, the Respondent’s addition of the words, “online”, “best”, “now”, “buy”, “buying”, “in”, “USA”, “instant”, “instantly”, “and”, “more”, “store”, “right”, “get”, “my”, “order”, “sales” to the Complainant’s CIALIS mark “does not dispel the confusion created by the use of the Complainant’s CIALIS mark in the domain names”.

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 websites on which products described as “Cialis Soft Tabs” are sold. Each of the above domain names resolves to websites that advertise “Cialis Soft Tabs” alongside Complainant’s CIALIS trademark and logo.

The Complainant states that he does not offer its CIALIS brand product in a soft tab or mouth-dissolving form and that “the Respondent is commercially benefiting from the use of Complainant’s CIALIS mark in the domain names” in spite of the fact that the “Complainant has not given Respondent permission, authorization, consent or license to use its CIALIS mark”.

According to the Complainant, “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 untested competitor’s products” (Lilly ICOS LLC v. The Counsel Group, WIPO Case No. D2005–0042).

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., NAF Case No. FA 93668).

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 pharmaceutical products sold on Respondent’s websites 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 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.

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 names contain the Complainant’s CIALIS mark as well as additional descriptive words. 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 (4^th 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 additional words are “online”, “best”, “now”, “buy”, “buying”, “in”, “USA”, “instant”, “instantly”, “and”, “more”, “store”, “right”, “get”, “my”, “order”, “sales” and, added to Complainant’s CIALIS mark, may suggest that Respondent’s websites are locations where a consumer may buy CIALIS brand product. Moreover, the systematic use of such descriptive terms by the same Respondent reinforces this impression.

Therefore, in accordance with previous panel decisions, the Panel concludes that the Respondent’s domain names are confusingly similar to Complainant’s CIALIS mark in which the Complainant has rights.

B. 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 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 websites are used to provide a link to several online pharmacies, where the Internet consumer may purchase CIALIS and competing products. There is no argument that the Respondent was known by the domain names or has a trademark. The evidence is that the Respondent is using the domain names 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 a general matter, 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 and services, nor a legitimate non-commercial or fair use under paragraphs 4(c)(i) and (iii) of the Policy (as decided in G.D. Searle &Co. v. James Mahony, NAF Case No. FA 112559).

In this case, the Respondent uses various domain names including the “CIALIS” trademark for sites that offer competing products and what is described as a generic equivalent to the CIALIS product. That is neither bona fide nor legitimate as the Respondent is using the Complainant’s trademark to sell competing products. Moreover, in this case, the Respondent apparently offers “CIALIS softabs” when the Complainant does not produce such a product. Therefore, with respect to at least one product, the Respondent is leading consumers to believe that it is a generic equivalent to the Complainant’s product when that cannot be the case.

The Complainant has raised the issue of whether the products offered by the Respondent meet applicable safety standards. There appears to be no assurance that they do which, in and of itself, is potentially harmful to consumers and to the Complainant’s reputation. This is not a legitimate use of a domain name that incorporates the Complainant’s trademark.

Therefore, in accordance with paragraph 4(a)(ii) of the Policy, the Panel decides that the Respondent has no rights nor legitimate interests in respect of the domain names.

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 Respondent’s first registration of a domain name that incorporates the Complainant’s CIALIS mark on February 20, 2005. 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 consulted several of the relevant websites and agrees that the Respondent is trading on the value established by Complainant in its marks. The Respondent is using the Complainant’s CIALIS trademark in the domain names to redirect Internet consumers to several online pharmacies where these Internet consumers are mislead into thinking that they can purchase a soft tab version of genuine CIALIS brand products.

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., NAF Case No. FA 93668”.

In this case, the Respondent has registered a series of domain names using the CIALIS trademark and descriptive words. This systematic use of the CIALIS trademark is a further indication of the intentional element of the bad faith.

Therefore, according to the Policy paragraph 4(a)(iii), the Panelist decides that the Respondent has registered and has been using the domain name in bad faith.

D. Relief requested

The Complainant requests transfer of the domain names. As the domain names consist of the Complainant’s trademark and descriptive words, transfer of the domain names 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 names <bestcialisnow.com>, <buyingcialisonline.com>, <buyonlinecialis.com>, <buyonlinecialisinusa.com>, <cialis-instantly.com>, <cialis-instantly.net>, <cialisandmore.com>, <cialisandmore.net>, <cialisinstant.com>, <cialisnowonline.com>, <cialisnowstore.com>, <cialisrightnow.com>, <get-cialis-now.com>, <get-cialis-now.net>, <getcialisonlinenow.com>, <instant-cialis.net>, <instantcialis.net>, <mycialisnow.com>, <onlinecialisinusa.com>, <onlinecialisorder.com>, <buyonlinecialis.net>, <onlinecialissales.com>, <cialisonlinenow.com> be transferred to the Complainant.

Thomas Webster
Sole Panelist

Dated: September 8, 2005