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Lilly ICOS LLC v. Cialis Pillz [2005] GENDND 392 (11 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Cialis Pillz

Case No. D2005-0063

1. The Parties

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

The Respondent is Cialis Pillz, Hiram, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cialispillz.com> is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2005. On January 19, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 25, 2005, Tucows 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 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 March 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2005.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 27, 2005. 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.

4. Factual Background

Complainant manufactures and sells a patented pharmaceutical preparation for men experiencing erectile dysfunction (“ED”). Its operative ingredient is the phosphodiesterase inhibitor tadalafil, and it is marketed under the brand name CIALIS (“the Mark”).

Complainant applied on June 17, 1999, to the United States Patent and Trademark Office (“USPTO”) for registration of the CIALIS mark. In July 2001, Complainant began to publicize its tadalafil preparation under that brand name, while the product was still awaiting approval by the pharmaceutical regulatory agencies in the United States and elsewhere. Complainant began selling CIALIS in Europe in January 2003, and in Australia and New Zealand shortly thereafter.

The CIALIS mark was registered by the USPTO on June 10, 2003. According to the uncontested evidence submitted by Complainant, Complainant has obtained at least 87 registrations for the CIALIS mark covering more than 117 countries, and the CIALIS mark is the subject of pending registration applications filed by Complainant in another 24 countries.

Complainant spent more than US$240 million advertising the brand in 2003 alone. Since at least June 2001, Complainant has maintained a website furnishing information about the drug at <cialis.com> (a domain name first registered by Complainant in August 1999).

According to registrar Tucows, Inc., the disputed domain name <cialispillz.com> (“Domain Name”) was registered in February 2004, by Respondent “Cialis Pillz,” listing a post office box in Hiram, Georgia as its address and naming Jeff Mayfield at the same postal address as its administrative contact. Notification by courier sent to this address by Complainant was returned as undeliverable. Email notification by the Center to the registered administrative contact produced only a “returned mail” message with the statement that the email address had “permanent fatal errors.”

The Domain Name currently does not resolve to a website. Based on cached files available online and printouts supplied by Complainant, it appears that the Domain Name previously resolved to a website offering “Generic Cialis” and advertising it as “the only generic cialis 50mg available online.” Respondent’s site promised “discreet shipping” of the pills to visitors who either emailed a doctor’s prescription or completed an “online consultation.” The site displayed Complainant’s CIALIS logo next to an image of orange pills and the word “Generic.” The text on the site characterized Respondent’s product as “cheap” and urged visitors that “[i]f you give us a try you will be pleasantly surprised and will wonder why you wasted your money on the brand name product.”

5. Parties’ Contentions

A. Complainant

Complainant argues that the Domain Name incorporates the Mark in its entirety and is confusingly similar to the Mark. Respondent is not licensed to use the Mark or sell Complainant’s product or a “generic” version of the product, which is still protected by patent. Thus, Respondent’s use of the Mark as part of the Domain Name is not related to a bona fide offering of goods, and Respondent has no rights or legitimate interests in the Domain Name.

Finally, Complainant infers that Respondent’s registration and use of the Domain Name were both made in bad faith. The Domain Name registration post-dates Complainant’s trademark registration and extensive advertising, and Respondent’s website blatantly traded on Complainant’s brand name and reputation. Respondent offered a “generic” version of Complainant’s product, which it was not authorized to do, and based on as little as an “online consultation” to establish medical safety and need. Complainant suggests that such a cavalier attitude toward both safety and legality supports an inference of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules directs as follows: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy provides that in order to divest Respondent of the Domain Name, Complainant must demonstrate each of the following:

- The Domain Name is identical or confusingly similar to Complainant’s mark; and

- Respondent has no rights or legitimate interests in the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

As in other cases where a respondent fails to reply, the Panel must still satisfy itself that Complainant has met its overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts must provide a sufficient prima facie basis for finding confusing similarity to a protected mark and for inferring that, more probably than not, Respondent has no right or legitimate interest in the Domain Name and has registered and used it in bad faith. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (August 21, 2003) <croatiaairlines.com>.

A. Identical or Confusingly Similar

Complainant’s CIALIS mark has been in use since 1999, and registered since 2003, both antedating Respondent’s registration of the Domain Name. The CIALIS mark is an invented rather than descriptive name, and it has been promoted extensively in the United States and other markets. It is, therefore, highly distinctive of Complainant’s product.

The Mark is included in its entirety in the Domain Name. The additional letters “pillz” (a phonetic rendition of “pills”) reinforce the Domain Name’s confusing similarity with the Mark rather than distinguishing the Domain Name from the Mark, since the CIALIS product is exactly that – pills. See Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (March 18, 2005) <microsoftcustomerservice.com> (“[t]he addition of such relevant descriptive words reinforces rather than detracts from the conclusion that the Domain Name confusingly refers to the business of Complainant and would likely cause at least some customers to assume that the Domain Name is associated with Complainant”).

Other panels have reached the same conclusion with respect to variations on precisely the Mark at issue here. See, Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794 (December 20, 2004) (the domain names <cialis-viagra.info> and <cialisapcalis.com> referred back to the CIALIS mark while adding the names for another ED drug, suggesting an association with Complainant); Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004) (addition of the words “drug”, “online”, “buying” and “guide” to the CIALIS mark did not serve to distinguish the owner of the mark and the owner of the domain name <cialis-drug-online-buying-guide.com>); Lilly ICOS LLC v. Anwarul Alam/”- -”, WIPO Case No. D2004-0793 (November 26, 2004) (addition of the descriptive word “city” to the CIALIS mark in the domain name <cialiscity.com> did not eliminate the confusing similarity).

Of course, some persons seeking Complainant’s product might think it unlikely that Complainant itself would misspell the word “pills,” but others either would not notice the misspelling at the end of the Domain Name or would not immediately conclude from the misspelling that the site was unaffiliated with Complainant. Phonetic variations of words are often used in marketing, and trademark owners may also register domain names with such phonetic variations as a defensive measure. On the Internet in particular, some users have long substituted “z” for “s” as an English plural,¹ and it is not improbable that a vendor would seek to appeal to such users or others who are attracted to a deliberately informal style of English.

In any case, the risk of “initial interest confusion” is strong in this instance, since the Domain Name is comprised of the Mark in its entirety and a word that describes the form of Complainant’s product.

B. Rights or Legitimate Interests

The Panel concurs with the reasoning of Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (November 5, 2004), to the effect that paragraph 4(c) of the Policy “contemplates an obligation on the part of respondent to come forward with evidence of rights and legitimate interests,” and that the panel can “appropriately” infer the absence of such rights or legitimate interests under paragraph 14(b) of the Rules in cases where the respondent fails to submit any response to the complaint. See, also Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023 (March 9, 2000). Thus, the Panel accepts the uncontested facts that Complainant has not authorized Respondent’s use of the Mark and that Respondent is not legitimately engaged in the business of selling Complainant’s product or a legal “generic” version of it.

There is nothing in the uncontested record to indicate that Respondent used the Domain Name in connection with a bona fide offering of goods or services before Complainant’s use and registration of the Mark, or that Respondent was known by that name, or that Respondent made a legitimate noncommercial use of the Domain Name. See Policy, paragraph 4(c). Instead, it appears that Respondent used the Mark in the Domain Name purely to attract business from consumers seeking a less expensive version of Complainant’s patented CIALIS product, which Respondent had no license to offer. Thus, there is no sign that Respondent had rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Under Policy, paragraph 4(b)(iv), the following is one indication of bad faith registration and use:

“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 CIALIS mark is registered and well known. It refers to a heavily advertised pharmaceutical product. The use of the Mark in Respondent’s Domain Name, along with the relevant word “pillz,” appears to be an attempt to confuse Internet users as to the affiliation of the website with Complainant, attracting users to Respondent’s website for commercial gain.

As indicated above, this is not the first occasion on which Complainant has applied for relief against respondents using similar domain names, ostensibly to sell CIALIS or “generic CIALIS,” which reinforces the conclusion that the Mark is well known and appealing to persons seeking to divert Internet traffic from Complainant to sell real or supposed pharmaceutical products.

In addition to the “initial interest confusion” created by using the Mark in the Domain Name, Respondent’s website displayed what appeared to be Complainant’s logo for the CIALIS product and even a similar overall color scheme and format to that found on Complainant’s “www.cialis.com” website. The logo reproduced on Respondent’s website included the ® trademark registration symbol, falsely implying that the site was in some way authorized by Complainant. Clearly, Respondent used these techniques to draw potential customers to its site, trading on the reputation of Complainant’s mark, and to keep them there long enough to make a commercial pitch to them. That pitch culminated in an effort to persuade consumers to purchase Respondent’s supposed “generic” version of the pills rather than “wasting their money on the brand name product.”

In short, the uncontested record indicates a bad-faith effort to mislead and divert consumers for commercial gain. Cf. Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004) <cialis-drug-online-buying-guide.com> (bad faith capitalization on the CIALIS mark); Pfizer, Inc. v. Internet Gambiano Productions LLC, WIPO Case No. D2002-0325 (June 20, 2002) (the domain name <www-viagra.com> represented a bad faith attempt to capitalize on the VIAGRA mark).

Further, Complainant’s product is patented, and it is also regulated for safety and efficacy. It is legally available only under license and with a prescription. In order to offer “cheap,” “generic” taladafil pills, then, Respondent must have manufactured tadalafil pills without a license from Complainant, or delivered a different (and possibly dangerous) substitute of unknown composition, or simply collected payments for a time and then delivered nothing at all. Any of these practices would also reflect 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 <cialispillz.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist

Dated: May 11, 2005