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Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC [2005] GENDND 1939 (15 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC

Case No. D2005-1052

1. The Parties

The Complainants are Eli Lilly and Company, Indianapolis, Indiana, United States of America; ICOS Corporation, Bothell, Washington, United States of America; and Lilly ICOS LLC, Wilmington, Delaware, United States of America; all represented by Baker & Daniels, Indianapolis, Indiana, United States of America.

The Respondent is RM-RS, LLC, of Brick, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lilly-icos.com> (the “Domain Name”) is registered with Tucows (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on October 5, 2005, and in hard copy on October 10, 2005. The Center transmitted its request for registrar verification by email to the Registrar on October 5, 2005. The Registrar responded by email on October 5, 2005, confirming that it had received a copy of the complaint, that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would be locked pending the outcome of this proceeding unless the registration expired earlier, that the registration agreement was in English and contained a submission to the jurisdiction at the location of the principal office of the Registrar; and providing the contact details on its Whois database.

The Center verified that the Complaint satisfied the formal requirements of 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 October 11, 2005. The notification was sent by courier and email to the addresses on the Registrar’s Whois database and by email to postmaster@ the Domain Name. The emails seem, based on the Center’s email system properties page, to have been transferred to the email addresses provided. However, an email was returned to the Center indicating a delivery failure, and the hard copy notification was also returned as undeliverable. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2005. The Respondent did not submit any response by this date. Accordingly, the Center notified the Respondent’s default on November 1, 2005. An email was subsequently sent to the Center on November 1, 2005, from the Respondent’s contact email address stating “RM Referral Service LLC is no longer in business. Webmail and website to be discontinued”.

The Center appointed Jonathan Turner as the sole panelist in this matter on November 10, 2005. 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.

The Respondent responded on November 11, 2005, to the notification of the Panelist’s appointment by an email stating: “What is this exactly in reference to? The lilly-icos.com domain? There is no longer any website at this web address, the domain is simply parked so that I can sell it. I am in no way in violation of any copyright or intellectual property. If the complainant wishes, he may purchase the domain to resolve the dispute.”

The Panel is satisfied that the original notification of the Complaint by the Center to the Respondent complied with paragraph 2(a) of the Rules. However, it appeared to the Panel that the Respondent may not have received it, perhaps on account of a temporary failure in the Respondent’s email facility. The Panel observes that it is the responsibility of holders of domain names to provide correct contact details to registrars and to ensure that they remain operational. A domain name holder has itself to blame if it does not receive an important document because it has provided an incorrect postal address and only one contact email address whose continuous operation is not assured. Nevertheless, to avoid any possible prejudice to the Respondent, the Panel asked the Center to make a further attempt to notify the Complaint by email on November 14, 2005, requesting the Respondent to submit any further statement in this proceeding to the Center by November 17, 2005.

The Respondent replied by email of November 15, 2005. In the circumstances described above, the Panel exercises its discretion under paragraphs 10 and 12 of the Rules to admit this email and the Respondent’s email of November 11, 2005 in evidence.

Under paragraph 3(a) of the Rules, “any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy”. In this case the third Complainant is a joint venture of the First and Second Complainants and the Complaint relates to a Domain Name which is similar to the name of the Third Complainant and incorporates marks of the First and Second Complainants. The Panel considers that the Complainants can properly be regarded as an entity in connection with this Complaint for the purposes of the Rules.

Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The First Complainant is a well-known developer, manufacturer and supplier of pharmaceuticals, founded in 1876 by Colonel Eli Lilly. It has used the trademark “LILLY” since 1895 and has registered it in numerous countries around the world.

The Second Complainant is engaged in pharmaceutical research and development relating to erectile dysfunction, sexual and urological conditions. It has used the trademark “ICOS” since 1998 and has applied to register it as a trademark in the United States.

The Third Complainant was formed by the First and Second Complainants to develop, manufacture and market a pharmaceutical treatment for erectile dysfunction. It has traded under the name “Lilly ICOS” since 1998. Its pharmaceutical treatment for erectile dysfunction has become very well-known under the trademark “CIALIS”, which is normally presented with a “swoosh” device in the form of a green “C” against a yellow background. It operates a website containing information about this product at “www.lillyicos.com”.

The Domain Name was registered by the Respondent on December 2, 2004. At the date of the Complaint, the Domain Name resolved to a web page headed with the trademark “CIALIS” accompanied by a device similar to the Third Complainant’s “swoosh”. The web page contained information apparently relating to “CIALIS” in 10 point black and blue fonts on a white background. A footer in a 4 point yellow font on a green background included a disclaimer of any affiliation of Lilly-ICOS.com with the Complainants. This was preceded by footers in larger type stating “Original Text Copyright © 2004 Lilly-ICOS.com. All Rights Reserved” and “‘Cialis’ and related logos/insignias are registered trademarks of Lilly ICOS LLC”.

As mentioned above, following the Panel’s appointment, the Respondent stated that there was no longer any website at this web address and that the domain was simply parked so that it could be sold.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have rights in the marks “LILLY” and “ICOS” and that the Domain Name is confusingly similar to each of these marks. They further contend that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it was registered and is being used in bad faith.

The Complainants point out that the Respondent’s use of the Domain Name in conjunction with its web page was liable to mislead members of the public into believing that it was an official web page provided by the Complainants, and that the disclaimer was inadequate to dispel such confusion. The Complainants further allege that the Respondent was deriving revenue through sponsored links to websites selling CIALIS or supposed alternatives to CIALIS. The Complainants also draw attention to a link on the web page at the Domain Name to a website at “www.buyfdacialis.com”, another Domain Name belonging to the Respondent, which purports to offer the Complainants’ CIALIS product for sale.

The Complainants seek a decision that the Domain Name be transferred to the Third Complainant.

B. Respondent

In its emails, the Respondent states that its original website was intended to provide information to consumers interested in obtaining Cialis through affiliate programs. The Respondent accepts that this website was commercial in nature, but avers that no revenue was in fact obtained. The Respondent contends that it was not intended to and did not infringe any copyright or intellectual property of the Complainant. The Respondent emphasizes that it was made clear on every page that the website was not affiliated or endorsed by the Complainants and was meant only as an information guide.

The Respondent further states that the website has now been removed and that the Domain Name by itself cannot be objectionable. In both of its emails, the Respondent offers the Domain Name for sale to the Complainant, stating in the second that it “would be glad to surrender the lilly-icos.com address to the complainant for a reasonable offer”.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding the Complainants must prove (a) that the Domain Name is identical or confusingly similar to a mark in which they have rights, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (c) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar to Mark in which Complainants have rights

The Panel is satisfied on the evidence that the First Complainant has registered and unregistered rights in the mark “LILLY”, and that the Second Complainant has unregistered rights in the mark “ICOS”.

The Panel also considers that the Domain Name is confusingly similar to each of these marks. The marks “LILLY” and “ICOS” have been used together by the Third Complainant on a substantial scale, including through its website at “www.lillyicos.com”. Many members of the public familiar with such use would associate the Domain Name with the owners of both marks and assume that it was used for a website for their joint venture. Even members of the public not familiar with such use would be likely to assume that the Domain Name was used for a website of the First or Second Complainant or a joint venture between them, as in many other cases where well-known marks have been combined: see, for example, the decision of the three-member administrative panel in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC , WIPO Case No. D2003-0112 (<konicaminolta.net>) and cases cited there.

It is well-established that initial confusion is sufficient to satisfy the first requirement of the Policy, even if it is dispelled by the content of the website. In any event, the Panel considers that many members of the public would still be misled even after viewing the content of the Respondent’s website as at the time of the Complaint. The disclaimer in the footer is wholly inadequate and the preceding, much more legible, footers would reinforce the impression that it was an official website of the Complainants.

The removal of the website following the Complaint cannot avoid the application of the Policy: see the decision in Lilly ICOS LLC v. Brian Focker, ,WIPO Case No. D2005-0729 (<cialismagic.com>).

The Panel concludes that the first requirement of the Policy is satisfied.

B. No Rights or Legitimate Interests

The Panel is satisfied on the evidence that the use made by the Respondent of the Domain Name prior to notice of the dispute was apt to attract internet users to its website by confusion with the Complainants’ marks and thereby to obtain click-through commissions on sponsored links. Such use was not a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy giving rise to rights or legitimate interests within the meaning of its paragraph 4(a)(ii).

The Respondent accepts that its use was not non-commercial, and for the reasons indicated above, the Panel considers that it was not fair use in accordance with paragraph 4(c)(iii) of the Policy. The Panel is also satisfied that the Respondent was not commonly known by the Domain Name and that there is no other basis on which the Respondent can claim rights or legitimate interests in respect of the Domain Name.

The Panel finds that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

As indicated above, the Panel is satisfied on the evidence that the Respondent has used the Domain Name to attract internet users to its website by creating a likelihood of confusion with the Complainants’ marks, with a view to commercial gain in the form of click-through commissions on sponsored links. Even if no such gain was in fact achieved, this is evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

In addition, the Respondent’s emails following the Panel’s appointment admit that it is now endeavouring to sell the Domain Name. The Panel infers that the Domain Name was registered for the purposes of use to obtain revenue through sponsored links from internet traffic generated by confusion with the Complainants’ marks and/or sale at a price in excess of the costs of registration which would reflect the possibility of such use. Registration and use for these purposes are in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

The Panel concludes that the Domain Name was registered and is being used in bad faith and that the third requirement of the Policy is satisfied.

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, <lilly-icos.com>, be transferred to the Third Complainant, Lilly ICOS LLC.

Jonathan Turner
Sole Panelist

Dated: November 15, 2005