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Lilly ICOS LLC v. Self [2005] GENDND 2134 (4 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

1. The Parties

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

The Respondent is a person identified as “Self” of Silverton, Gauteng, South Africa.

2. The Domain Name and Registrar

The disputed domain name <buy-cialis-tadalafil.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 19, 2005, and in hard copy on October 24, 2005. The Center transmitted its request for registrar verification by email to the Registrar on October 21, 2005. The Registrar responded by email on October 24, 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 remain locked during this proceeding, and 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 for the registration on its Whois database. According to these details, the Registrant is identified as “Self” of the same address as the Administrative Contact, who is identified as Stephan Uys.

The Center verified on October 27, 2005, 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 27, 2005. Stephan Uys confirmed by email on October 27, 2005, that he had received the Complaint by email. The couriers’ delivery records confirm that hard copies of the Complaint and annexes were delivered to the addresses on the Registrar’s Whois database for the Registrant and Administrative Contact and for the Technical Contact.

In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2005.

The Center appointed Jonathan Turner as the sole panelist in this matter on November 23, 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.

Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly served on 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 Complainant supplies a pharmaceutical product for the treatment of erectile dysfunction under the trademark CIALIS. The generic name of the product is Tadalafil.

The Complainant announced its intention to sell the product under the mark CIALIS in July 2001, and its first sales were made under the mark in the European Union on January 22, 2003. The domain name <cialis.com> has been used for a website promoting the product since June 2001. There has been extensive publicity relating to the Complainant’s launch and sales of the product under the mark. The Complainant spent in excess of US $13 million on marketing the product in 2003, and its US sales exceeded US $27 million in that year.

The Complainant has registered CIALIS as a trademark in more than 117 countries. Its applications to register the mark were filed in the US trade mark office on June 17, 1999, and in the EU office on June 24, 1999.

The Respondent registered the Domain Name on April 18, 2004, and is using it for a website which promotes what it describes as “Brand Cialis”, “Generic Cialis” and “Generic Viagra”. The references on this website to “Brand Cialis” link to an online pharmacy which supplies the genuine CIALIS product placed on the market by the Complainant under the mark. The references to “Generic Cialis” link to an online pharmacy which supplies both the genuine CIALIS product placed on the market by the Complainant and generic Tadalafil supplied by other suppliers. Both online pharmacies operate affiliate programmes under which owners of websites which provide links to the pharmacies’ websites are paid commissions on sales to Internet users who access the pharmacies’ websites via these links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the mark CIALIS in which it has rights. It submits that the addition of the generic words “buy” and “tadalafil” does not avoid confusion.

The Complainant further contends 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. It alleges that the Respondent is obtaining a commercial gain in the form of click-through commissions through diverting internet users attracted to the Respondent’s website by the use of the Complainant’s mark in the Domain Name to a supplier of competing generic products.

The Complainant also points out that the generic products may not be approved by regulatory authorities and may be unsafe, and that their sale in the United States of America infringes the Complainant’s US patent. The Complainant contends that this use of the Domain Name is not bona fide and is in bad faith within the meaning of the Policy.

The Complainant requests an order that the Domain Name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (a) that the Domain Name is identical or confusingly similar to a mark in which it has 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

It is clear that the Complainant has rights in the trademark CIALIS which has been registered in numerous countries.

The Panel is also satisfied that the Domain Name is confusingly similar to this mark. The addition of the generic words “buy” and “tadafil” do not avoid confusion, since at least some internet users are liable to assume that the Domain Name identifies a website of or approved by the Complainant inviting members of the public to buy tadalafil supplied by the Complainant under the mark “CIALIS”.

B. Rights or Legitimate Interests

The Panel considers that the use made of the Domain Name by the Respondent has not been in connection with a bona fide offering of goods or services so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy.

The Respondent’s use of the Domain Name is not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods or services placed on the market by its owner (as to which, see Koninklijke Philips Electronics N.V. v. Cun Siang Wang, WIPO Case No. D2000-1778). In accordance with the propositions laid down in Oki Data Americas, Inc v. Asdnic.com, WIPO Case No. D2001-0903, and followed in many subsequent cases (see particularly Deutsche Telekom AG v. Mighty LLC/Domain Admin, WIPO Case No. D2005-0027), this principle can only be invoked under the Policy if (i) the Respondent is actually offering the goods or services at issue; (ii) the Respondent uses the website to sell only the trademarked goods or services; and (iii) the website accurately discloses the Respondent’s relationship (or otherwise) with the trademark owner.

In this case, (i) the Respondent is not itself a supplier of the Complainant’s product; (ii) the Respondent’s website promotes an online pharmacy which supplies products of the Complainant’s competitors as well as those of the Complainant; and (iii) the Respondent’s website does not contain any clear indication that it is not authorised by the Complainant and exacerbates confusion by its use of the term “Generic Cialis” to refer to products which have not been sold or approved by the Complainant.

The Panel is also satisfied that the Respondent has not been commonly known by the Domain Name and that he is not making legitimate non-commercial or fair use of the Domain Name. On the contrary, the Panel is satisfied that the Respondent is using the Domain Name to obtain commercial gain by misleadingly diverting consumers seeking the Complainant’s website or product to his website which promotes a supplier of competing products.

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name

C. Registered and Used in Bad Faith

The Panel is satisfied by the undisputed evidence that the Respondent is using the Domain Name to attract internet users to his website by creating a likelihood of confusion with the Complainant’s mark in order to obtain commercial gain in the form of click-through commissions.

The Panel considers that internet users are liable to assume that the Domain Name indicates a website authorized by the Complainant, and to be diverted through the sponsored links on that website to a supplier selling products which have not been sold or approved by the Complainant.

This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy. This evidence stands unrebutted.

The Panel concludes 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 <buy-cialis-tadalafil.com> be transferred to the Complainant.