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Viacom International, Inc. contre Véronique Mistrali [2005] GENDND 452 (22 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. The Counsel Group, LLC

Case No. D2005-0042

1. The Parties

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

The Respondent is The Counsel Group, LLC of Shadow Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <get-cialis-rx.com> (the “Domain Name”) is registered with Go Daddy Software Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2005. On January 14, 2005, the Center transmitted by email to Go Daddy Software Inc. a request for registrar verification in connection with the domain name at issue. On January 15, 2005, Go Daddy Software Inc. transmitted by email to the Center its verification response, in which it notified the Center that the Respondent as listed in the Complaint was not the current registrant of the Domain Name, and provided the correct contact details for the registrant, and the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 3, 2005. The Center verified that the Complaint together with the amendment to 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 February 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2005.

The Center appointed Warwick Smith as the sole panelist in this matter on March 15, 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.

In the absence of any Response from the Respondent, the Panel has considered whether the Center has discharged its responsibility to forward the Complaint to the Respondent (paragraph 2(a) of the Rules). The Panel is satisfied that it has. The Complaint was transmitted to the appropriate email addresses, and was sent by courier to the address listed in the WHOIS for the Domain Name. It would appear that the hard copy of the file transmission sent by courier was delivered. Overall, the Panel is satisfied that the Center has discharged its responsibility “to employ reasonably available means calculated to achieve actual notice [of the Complaint] to the Respondent” (paragraph 2(a) of the Rules).

4. Factual Background

CIALIS

The Complainant, a joint venture between ICOS Corporation and Eli Lilly & Company, markets CIALIS, a pharmaceutical preparation for the treatment of erectile dysfunction. CIALIS is available only on a physician’s prescription, and is manufactured, labeled and sold in compliance with the requirements of the United States Food and Drug Administration and other health authorities around the world.

The Complainant made public its decision to use CIALIS to identify its pharmaceutical product in July 2001, and it has supplied examples of press clippings from 2001, in an Annex to the Complaint. The product itself did not come onto the market until January 22, 2003, when the CIALIS became available in the European Union. CIALIS was sold in Australia and New Zealand shortly thereafter, and sales commenced in the United States in November, 2003. The Complainant has annexed to its Complaint examples of media coverage surrounding the market launch of CIALIS.

The Complainant has supplied evidence that in 2003, it spent in excess of US$240 million dollars to market and sell CIALIS worldwide. In 2003, United States sales of CIALIS totaled more than US$27 million dollars.

The Complainant’s Trade Marks and Patent

The Complainant filed for registration of the CIALIS mark (‘CIALIS’) with the United States Patent and Trademark Office (USPTO) on June 17, 1999. CIALIS was registered on the principal register of the USPTO on June 10, 2003 (Registration No. 2,724,589). To date, the Complainant has obtained more than 87 registrations of CIALIS, covering more than 117 countries. At the date of the Complaint, CIALIS was the subject of pending applications in 24 additional countries. In addition, the Complainant has United States Patent rights in the CIALIS brand pharmaceutical product (Patent No. 6,140, 329). The Complainant supplied copies of the certificates of registration for the CIALIS mark which it has received to date, and a certificate evidencing the United States Patent.

The Complainant’s Domain Name and Website

Eli Lilly & Company registered the domain name <cialis.com> on August 10, 1999. The Complainant has used this domain name since at least June 2001, to resolve to a website on which it advertises and provides information on CIALIS.

The Respondent and the Domain Name

The Domain Name was registered on July 31, 2003. A WHOIS search undertaken by the Complainant on January 4, 2005, showed the Registrant as “Domains by Proxy Inc.”. It is not clear when the Domain Name was transferred to the Respondent, but it must have been by January 13, 2005, when Go Daddy Software Inc. advised that the Respondent was by then the registrant. In the event, the Panel is of the view that the date of the transfer is not important. In the absence of any response from the Respondent, the Panel is prepared to infer either that the Respondent was controlling the use of the Domain Name prior to the transfer or that it acquired the Domain Name with the intent and for the purpose of continuing the prior registrant’s use of the Domain Name.

The Respondent advertises for sale on the website to which the Domain Name resolves (“the Respondent’s website”), the Complainant’s CIALIS brand, and a product described as “Generic Cialis”. The “Generic Cialis” is advertised at a cheaper price than the product described as the Complainant’s CIALIS product. Also on the Respondent’s website, there is advertised a product described as “Mouth Dissolving General Cialis”. The Complainant says that it neither provides the CIALIS product in mouth-dissolving form, nor endorses any such product.

The Respondent’s website also provides links to online pharmacies (Drugstore A, Generic Cialis Pharmacy, and Better Life Rx), from which products described as the Complainant’s CIALIS brand products and/or products described as “Generic Cialis” may be purchased.

Two of the online pharmacies to which the Respondent’s website is linked, describe an affiliate programme, whereby website owners are paid commission when Internet visitors to their sites are linked to the online pharmacy websites, and sales result.

5. Parties’ Contentions

A. Complainant

1. The Domain Name is identical or confusingly similar to the Complainant’s mark CIALIS:

(i) The Complainant’s use and registration of CIALIS predates the Respondent’s registration of the Domain Name;

(ii) CIALIS is a well-known trademark;

(iii) CIALIS is an invented word with a high degree of individuality and inherent distinctiveness. CIALIS is a distinctive identifier of the source of the Complainant’s pharmaceutical product, and the Respondent’s addition of the words “get” and “rx” does not negate the distinctiveness of the CIALIS mark;

(iv) The words “get” and “rx” do not prevent a finding of confusing similarity. These words in no way distinguish the Respondent from the Complainant; they indicate that the Respondent’s website is a location on the Internet where a consumer may purchase the Complainant’s CIALIS brand product to meet the consumer’s medical needs;

(v) The Domain Name is confusingly similar to the Complainant’s mark, as it incorporates a distinctive mark in its entirety.

2. The Respondent has no rights or legitimate interests in the Domain Name:

(i) The Complainant has not given the Respondent permission, authorisation, consent or license to use CIALIS in the Domain Name;

(ii) It is apparent from the website to which the Domain Name resolves that the Respondent is attempting to capitalise on the reputation and goodwill of CIALIS to direct Internet users to a website at which “Generic Cialis” is advertised for sale;

(iii) The fact that the Respondent’s website provides links to the Generic Cialis Pharmacy and Better Life Rx pharmacy, strongly suggests that the Respondent is a member of the affiliate programmes associated with those online pharmacies and receives a payment for each resulting sale. Accordingly, the Respondent is using the Domain Name for commercial gain.

(iv) 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 or services, nor a legitimate non-commercial or fair use (under paragraphs 4(c)(i) and 4(c)(iii) of the Policy).

(v) The Complainant cites as further evidence of a lack of bona fides on the part of the Respondent:

(a) The questionable safety of a “generic” version of the Complainant’s product, comprising an untested chemical composition;

(b) The fact that the Complainant’s United States Patent rights in the CIALIS brand pharmaceutical product would prohibit the sale of any “generic” version of the product in the United States for the duration of such rights;

(c) The fact that the Respondent’s website advertises and promotes for sale “Mouth Dissolving Generic Cialis”, a product which the Complainant neither produces nor endorses.

3. The Domain Name was registered and is being used in bad faith:

(i) The Respondent had knowledge of the Complainant’s mark at the time of registration:

(a) CIALIS is a well-known trademark;

(b) The Complainant has a constructive use date for CIALIS of June 17, 1999, and substantial media coverage of the CIALIS product goes back to 2001;

(c) The Complainant has extensively marketed and advertised its product under the name CIALIS. In the year in which the Domain Name was registered, the Complainant spent in excess of US$240 million dollars to market and sell its CIALIS brand product, and in that year sales of that product in the United States exceeded US$27 million.

(ii) According to paragraph 4(b)(iv) of the Policy, evidence of bad faith registration and use is shown when a domain name is registered in order to utilise another’s well-known trademark by attracting Internet users to a website for commercial gain. The Respondent is using CIALIS to attract Internet users to its website, then link them to online pharmacies from which consumers can purchase products described as the Complainant’s CIALIS product and/or “Generic Cialis”;

(iii) The Respondent’s use of CIALIS in the Domain Name is a violation of the Complainant’s rights. The use of the Domain Name is potentially harmful to the health of Internet users who purchase products under the mistaken impression that they are dealing with the Complainant and, therefore, will be receiving safe and effective drugs which have the approval of the United States 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

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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 or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial 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 issue.

Paragraph 15(a) of the Rules requires the Panel to:

“… 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 5(e) of the Rules provides that, if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. By paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of the Rules.

A. Identical or Confusingly Similar

The Complainant has proved that it is the registered proprietor of mark “CIALIS” in the United States and, at the time the Complaint was drafted, in 87 other countries.

The Domain Name comprises the mark CIALIS, plus the words “get” and “rx”, and two hyphens. These additional words and symbols do nothing to obviate the confusing similarity between the Domain Name and the Complainant’s mark. CIALIS is a highly distinctive identifier of the source of the Complainant’s product, with a strong international reputation, and it is the only distinctive part of the Domain Name. A Domain Name which incorporates a distinctive mark in its entirety frequently creates sufficient similarity between the mark and the domain name to render it confusingly similar: EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The words “get” and “rx” only compound the confusion with the Complainant’s mark. “Rx” appears to be a transliteration of the symbol (℞). The Panel understands that this symbol is commonly associated with medical prescriptions. The impression given by the Domain Name is therefore that an Internet user can obtain the Complainant’s product, which has the quality of being a prescription drug, at the Respondent’s website.

In all those circumstances, the Panel has no difficulty in concluding that the Domain Name is confusingly similar to the Complainant’s CIALIS mark.

B. Rights or Legitimate Interests

The Policy requires that a complainant must prove each of the elements in paragraph 4(a), and it might be thought that proving a negative (that the respondent does not enjoy some right or legitimate interest in the domain at issue) could pose particular difficulties for complainants. But the wording of paragraph 4(c) of the Policy appears to envisage a respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, the evidential onus shifts to the respondent to demonstrate that it has some right or legitimate interest (see for example Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074. The Panel agrees with that general approach.

In this case, the Complainant has not authorised or licensed the use of its mark in the Domain Name, and the Respondent has taken no steps to demonstrate that it enjoys some right or legitimate interest in the Domain Name. The Panel has found that the Domain Name is confusingly similar to the Complainant’s mark. Those factors in combination provide sufficient proof under paragraph 4(a)(ii) of the Policy.

However, the Complainant also submits that there are a number of other factors which tell against the Respondent being able to demonstrate that it has a right or legitimate interest.

The Panel agrees with that submission. It finds that the Respondent has been capitalising on the confusing similarity between the Domain Name and the Complainant’s mark, and that it has been doing so for its own commercial gain.

First, the Respondent’s awareness of the Complainant and the Complainant’s mark is quite obvious from the Respondent’s website.

According to the printout of the website provided in the Complaint, a visitor to “www.get-cialis-rx.com” is presented with the following headings:

“Get Cialis Rx Sells Cialis, Generic Cialis, MelTabs

Get Drugstore Rx Medications

Cialis, MELTabs Quick Dissolve Sildenafil, Mouth Dissolving Cialis”

A table then lists two online pharmacies, Drugstore A and BetterLifeRx, and the prices at which they sell “Cialis”. In a side bar on the website the following paragraph provides:

“Cialis is a new drug from Eli Lilly and Company to treat erectile dysfunction.”

The website goes on to provide details on how Cialis works, how it should be used, side effects, drug interactions and recommended storage.

Secondly, it is clear that the Respondent has been using the Domain Name for commercial gain. The Complainant says that the online pharmacies on the Respondent’s website link the Internet user to the Generic Cialis Pharmacy and the Better Life Rx pharmacy. The Generic Cialis Pharmacy sells “Generic Cialis”, “Generic Viagra”, and “Generic Levitra”, as well as certain other unrelated products. Better Life Rx sells Viagra, Cialis and Levitra. Both online pharmacies offer an affiliate programme to website owners who provide links to their website, offering commission for every click-through which leads to a sale.

It is difficult to imagine why the Respondent would facilitate click-through traffic to the Generic Cialis Pharmacy and Better Life Rx, if not for the promise of financial compensation.

In the Panel’s view, it could never be a “bona fide” offering of goods to use the reputation of the Complainant’s well-known mark to attract Internet traffic to a website which offers cheaper and apparently untested competitors’ products (including the “Generic Cialis” products). This is not a genuine re-seller situation, of the kind discussed in cases such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. According to the learned Panelist in that case, one of the requirements for an offering of goods or services by a re-seller to be “bona fide”, is that the re-seller must sell only [the Complainant’s] genuine trademarked goods (otherwise the re-seller could be using the trade mark to “bait” Internet users and then switch them to other goods). That is not what is happening here. In this case the Respondent is using the Complainant’s well-known mark in the Domain Name, in order to lure to the Respondent’s website Internet users looking for sites associated with the Complainant’s CIALIS product. These visitors are then offered the alternative of cheaper, “generic”, products which are not CIALIS but which are claimed to have the same or similar properties. That is not a “bona fide” use, nor a “fair” or “legitimate” use, within the meanings of those expressions as used in paragraphs 4(c)(i) and (iii) of the Policy.

In the absence of a Response, the Panel is prepared to accept that the Respondent has been using the Complainant’s mark in the Domain Name, to capitalise on the reputation and goodwill of CIALIS, by misleadingly attracting to the Respondent’s website Internet users looking for websites offering CIALIS for sale. That could never constitute a bona fide offering of goods or services in terms of the Policy, or a fair or legitimate use of the Domain Name. Paragraph 4(a)(ii) has therefore been satisfied.

C. Registered and Used in Bad Faith

From the foregoing discussion it will be evident that the Respondent’s actions are almost a text book example of the application of paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and the websites of other online pharmacies, by creating a likelihood of confusion with the Complainant’s mark.

For completeness, it should be mentioned that the Respondent’s website does contain a disclaimer in small type at the conclusion of the text and tables described above. The disclaimer reads:

“The products mentioned are trademarks of their respective owners and are not owned by or affiliated with Get Cialis Rx”.

The Panel finds that such disclaimer is wholly insufficient to cure the bad faith of the Respondent. As noted by the Panel in Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316, a disclaimer can hardly cure bad faith when it comes after a full page of marketing and information concerning the Complainant’s product, and can be found in miniscule text only after the Internet user is presented with a myriad of opportunities to purchase the product. In addition, the disclaimer in itself is misleading, as it implies that “Generic Cialis” and “Mouth Dissolving Generic Cialis” are products developed by the Complainant, which they are not.

The Panel is therefore satisfied that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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, <get-cialis-rx.com>, be transferred to the Complainant.

Warwick Smith
Sole Panelist

Dated: March 29, 2005