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Frog Planete, S.A.S contre Eskiv Alex [2005] GENDND 454 (21 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Emilia Garcia

Case No. D2005-0031

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 Emilia Garcia of Alajuela, Costa Rica.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2005. On January 12, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Name. On January 12, 2005, Go Daddy Software 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 for 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. The Center also attempted to send the Complainant by facsimile to the number supplied in the WHOIS report. While the transmission reports forwarded by the Center indicate that attempts to send the Complaint by email and facsimile were unsuccessful, 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

The Product CIALIS

The Complainant, a joint venture between ICOS Corporation and Eli Lilly & Co., markets CIALIS, a pharmaceutical preparation for the treatment of erectile dysfunction.

The Complainant made public its decision to use the mark CIALIS to identify its pharmaceutical product, in July 2001, and it has supplied examples of press clippings from 2001 showing the mark used in a variety of publications. The product itself did not come onto the market until January 22, 2003, when CIALIS became available in the European Union. CIALIS was launched 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, and by September of 2003, it appears that CIALIS sales extended far beyond Europe, the United States and Australasia – news articles produced by the Complainant refer to August/September 2003 approvals or launches in Mexico, Canada, and Kenya.

The Complainant says 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 totalled more than US$27 million dollars.

The Complainant’s Trade Marks

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. The mark CIALIS is also the subject of pending applications in approximately 24 countries. In addition, the Complainant has United States Patent rights in the CIALIS brand pharmaceutical product (Patent No. 6,140, 329). The Complainant has produced copies of the certificates of registration for the CIALIS trademark which it has received to date, and a copy of the United States patent certificate.

The Complainant’s Website

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

The Respondent and the Domain Name

The Domain Name was registered on October 28, 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 12, 2005, when Go Daddy Software Inc. advised the Center that the Respondent was by then the Registrant. In the Panel’s view the timing of the transfer does not matter – the Respondent has not denied the allegations in the Complaint, and the Panel is prepared in those circumstances to assume that the Respondent was either controlling the operation of the Domain Name before he became the registrant, or that he acquired the Domain Name with the intent and for the purpose of continuing the previous registrant’s use of the Domain Name.

The website to which the Domain Name resolves (“the Respondent’s website”) offers online sales of “Generic Cialis”, in packs of different sizes and at different prices. (It also offers sales of what appear to be generic versions of the competing products Viagra and Levitra). The Respondent’s website also provides links to “Generic Cialis Pharmacy” at “www.gcpharma.com”, an online pharmacy from which “Generic Cialis” can be purchased.

The Generic Cialis Pharmacy website describes an affiliate programme, through which website owners are paid commission when an Internet user is linked to the online pharmacy website and a sale results.

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 addition of the descriptive words “generic” and “online” does not negate the distinctiveness of the CIALIS mark;

(iv) The Domain Name is confusingly similar to the Complainant’s mark, as it incorporates the Complainant’s 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 Respondent’s website that the Respondent is attempting to capitalise on the reputation and goodwill of CIALIS, to direct Internet users to a website on which “Generic Cialis” is advertised for sale;

(iii) The fact that the Respondent’s website directs Internet traffic to the Generic Cialis Pharmacy site strongly suggests that the Respondent is a member of the affiliate programme and is thus using the Domain Name for commercial gain;

(iv) The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services;

(v) 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) or 4(c)(iii) of the Policy;

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

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

ii. 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.

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

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

i. CIALIS is a well-known trademark;

ii. The Complainant has a constructive use date for CIALIS of June 17, 1999, and there has been substantial media coverage of the CIALIS brand product going back as far as 2001;

iii. 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 worldwide, and in that year sales of the product exceeded US$27 million.

(b) 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 the mark CIALIS to attract Internet users to its website, then link them to an online pharmacy from which consumers can purchase “Generic Cialis”;

(c) The Respondent’s use of CIALIS in the Domain Name is a violation of the Complainant’s rights;

(d) 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 drugs which have the approval of the United States Food and Drug Administration or other international health authorities.

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 the word 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 “generic” and “online”, and two hyphens. The additional words and the hyphens do nothing to obviate the confusing similarity of the Domain Name to the Complainant’s mark. CIALIS is a highly distinctive identifier of the source of the Complainant’s product, and the mark has a strong international reputation. The word “Cialis” is the only distinctive part of the Domain Name, and 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 “generic” and “online” only serve to modify the Complainant’s mark by indicating (respectively) the nature of the product, and where the product can be purchased: see Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750, where the Panel found that the inclusion of generic words in the domain name <cialis-drug-online-buying-guide.com> was no obstacle to a finding of confusing similarity.

Is the use of the word “generic” in the Domain Name sufficient to indicate that any “Cialis” product described on the Respondent’s website will not be the Complainant’s well known product? In the Panel’s view, using the word “generic” in the Domain Name is not sufficient to negate the similarity between the Domain Name and the mark CIALIS. The CIALIS product is marketed in many countries where English is not the main language, and it does appear to be marketed as CIALIS in those countries. Given the apparent worldwide ubiquity of the product, it is in the Panel’s view inevitable that a significant number of Internet users will assume that the Domain Name must resolve to a site which is somehow associated with the Complainant’s product, or at least endorsed by the makers of CIALIS. Some Internet users will assume that the mark CIALIS could only be used with its owner’s consent, and that assumption will lead easily to the further assumption that such consent must have been given. Others, particularly those for whom English is not their first language, will not appreciate that “generic” CIALIS may not be the real thing.

For those reasons, the Panel is of the view that the inclusion of the word “generic” in the Domain Name is insufficient to remove the confusion which inevitably arises from the use of the Complainant’s mark in the Domain Name.

The Panel therefore concludes 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 licensed or authorised the Respondent to use either the mark CIALIS or the Domain Name, and the Panel has found that the Domain Name is confusingly similar to the Complainant’s CIALIS mark. The Respondent has not filed any response. In those circumstances, the Complainant has done sufficient to discharge the onus of proving this part of the Complaint.

However, the Complainant submits that there are a number of other factors which support its claims that the Respondent has not been engaging in a bona fide offering of goods or services. In the absence of any response, the Panel finds these submissions compelling.

The Respondent has clearly been capitalising on the confusing similarity between the Domain Name and the Complainant’s mark, and (equally clearly) it has been doing so for its own commercial gain. The Respondent’s awareness of the mark, and the goodwill accruing to that mark, are obvious simply from reading the Respondent’s website. After listing the products available on the website (“Generic Cialis”, “Generic Viagra” or “Generic Levitra”) and their respective prices, the website reads:

“Cialis is the new impotence treatment drug that everyone is talking about. Already very popular in Europe this so-called Super-Viagra pill outperforms any and all of the other alternatives.”

The website then goes on to describe the effects and benefits of Cialis.

So the Respondent is clearly using the reputation of the Complainant’s well-known mark to attract to the Respondent’s website Internet visitors who are then offered a product which is not manufactured or endorsed by the Complainant.

There is little doubt that this is being done for commercial gain. From the Respondent’s website it is clear that there is a very close relationship between the Respondent’s operation and that of the Generic Cialis Pharmacy. There is a banner at the head of the Respondent’s website, which reads: “Generic Cialis Pharmacy – Your trusted source for generic medications”. The rider at the bottom of the Respondent’s website provides:

“© 2003 Generic Cialis Pharmacy

Proudly listed at the Affiliate Hangout and the Online Drugstore Directory”

Indeed, the font and general layout of the Respondent’s website and that of the Generic Cialis Pharmacy are remarkably similar.

Clearly there is an association between the Respondent and Generic Cialis Pharmacy. Whether they are in fact one and the same entity or whether the Respondent is an independent entity which earns commission through the Generic Cialis Pharmacy affiliates programme (as the rider at the bottom of the Respondent’s website might imply), the clear inference is that the Respondent is using the Respondent’s website for his own commercial gain. Such use could never be a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor could it be a legitimate non-commercial or fair use under paragraph 4(c)(iii).

An additional point is that the Respondent’s website offers for sale generic versions of well-known products (Viagra and Levitra) which compete with CIALIS in the markets for erectile dysfunction products. There is no explanation why the trademark of one particular competitor (the Complainant) was chosen as the distinctive part of the Domain Name. The Panel is left to infer that the Respondent chose to incorporate the word “Cialis” in the Domain Name because the Respondent believed that significant numbers of Internet users who were interested in websites dealing with erectile dysfunction remedies would know of CIALIS (and would share the Respondent’s apparent belief that CIALIS outperforms all alternative products), and would be attracted to the website.

For the foregoing reasons the Panel finds that that the second requirement of paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

In the absence of any response, the Panel has no difficulty in concluding that the Respondent registered the Domain Name in bad faith and has been using the Domain Name in bad faith. Specifically, the use is in contravention of paragraph 4(b)(iv) of the Policy – the Respondent has been attempting (for commercial gain) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the Respondent’s website.

In addition, the Panel takes into account the various matters considered under the heading “Rights or Legitimate Interests” above, and the fact that the Respondent is using the Complainant’s mark to mislead significant numbers of Internet users into thinking that a product of questionable composition is a product developed or endorsed by the Complainant.

The Complainant has satisfied the third requirement of paragraph 4(a) 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, <generic-cialis-online.com>, be transferred to the Complainant.

Warwick Smith
Sole Panelist

Dated: March 29, 2005