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Lilly ICOS LLC v. megasys yoginder_manchanda@yahoo.com [2005] GENDND 570 (19 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. megasys yoginder_manchanda@yahoo.com

Case No. D2005-0376

1. The Parties

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

The Respondent is megasys yoginder_manchanda@yahoo.com, New Delhi, Delhi, of India.

2. The Domain Name and Registrar

The disputed domain name <cialis-ed.com> is registered with <OnlineNic, Inc. d/b/a China-Channel.com>.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2005, by email and on April 14, 2005, by hardcopy. On April 12, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name(s) at issue. On April 13, 2005, OnlineNic, Inc. d/b/a China-Channel.com 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, billing, and technical contact. The registrar also indicated that it had not received the copy of the Complaint from the Complainant. 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 April 20, 2005. On May 12, 2005, the Center notified the parties that there had been a failure to transmit the Complaint to the Respondent previously; that the notification was being resent; and that the proceedings were deemed to have commenced as of May 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2005.

The Center appointed Thomas Webster as the sole panelist in this matter on June 21, 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

The Complainant in this administrative proceeding is Lilly ICOS LLC, a limited liability company registered under the laws of Delaware. It has filed for registration of the CIALIS trademark with the United States Patent and Trademark Office on June 17, 1999, and the CIALIS mark was registered on the principal register on June 10, 2003 (Registration No. 2,724,589).

In total, the Complainant has obtained more than eighty-seven registrations for the CIALIS mark covering more than 117 countries.

The Complainant began selling pharmaceutical products intended for the treatment of erectile dysfunction and identified by the CIALIS mark on January 22, 2003. In 2004, Complainant spent approximately 39 million dollars to market and sell its CIALIS brand product worldwide and worldwide sales of CIALIS in 2004 exceeded $550 million.

Furthermore, the Complainant has registered the <cialis.com> domain name on August 10, 1999, and is using the Internet site to advertise and provide information on the CIALIS product.

The Respondent registered the disputed domain name on August 19, 2004, and is using it to sell brand and generic versions of the CIALIS drug.

5. Parties’ Contentions

A. Complainant

The Complainant argues that “the CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use.” According to the Complainant, the Respondent’s addition of the descriptive word ‘ed’ to the domain name “does not negate the distinctiveness of Complainant’s CIALIS mark. Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (Annex 15, B).”

The Complainant claims that “the addition of descriptive words to Complainant’s CIALIS trademark does not prevent a finding of confusing similarity. See, Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794”.

Moreover, the Complainant asserts that despite the fact that he “has not given Respondent permission, authorization, consent or license to use its CIALIS mark”, “Respondent is profiting either directly or indirectly from the improper sales generated by other Internet vendors linked to its website”.

According to the Complainant, “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 noncommercial or fair use under paragraphs 4(c)(i) and (iii) of the Policy.”

Complainant adds that “the safety of a ‘generic’ version of Complainant’s CIALIS brand product is suspect and is also evidence that Respondent’s use of the domain name is not a bona fide offering of goods”.

Finally, Complainant claims that “according to Policy paragraph 4(b)(iv), evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain.” The Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Under the Policy, paragraph 4 (a) the Complainant must prove that each of the following three elements are present to succeed:

(i) the domain name is identical with or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name and

(iii) the domain name has been registered and is being used in bad faith.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Panel has already dealt with very similar cases (see Lilly ICOS LLC v. Abadia Distribution WIPO Case No. D2005-0449, Lilly ICOS LLC v. Tommy Hillinger, WIPO Case No. D2005-0475) and found that the word CIALIS is distinctive and has no colloquial use.

The disputed domain name contains the Complainant’s CIALIS mark as well as the word ‘ed’. As stated in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, “Generally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’ 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).” (See also The Price Company v. Price Club, WIPO Case No. D2000-0664 (finding <priceclub2000.com> to be confusingly similar to the PRICE CLUB mark).

Therefore, in accordance with previous Panel decisions, the Panel concludes that the Respondent’s domain name is confusingly similar to the Complainant’s CIALIS mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel was not able to access the Respondent’s website. However, print outs provided by the Complainant (Exhibits 11 and 12 to the Complaint) show that the disputed domain name has been used to advertise and sell brand and generic CIALIS products. The Complainant’s trademark is displayed on the welcome page.

Paragraph 4(a)(ii) of the Policy directs that the Complainant must prove that:

“The Respondent has no rights or legitimate interests in respect of the domain name”.

The Complainant has alleged and the Respondent has failed to deny that the Respondent has no legitimate interests in respect of the domain names at issue. (See Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic.A.S., WIPO Case No. D2000-0011).

Furthermore, evidence shows that Respondent is using the disputed domain name for commercial purposes. As in Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750, it is reasonable to infer – in particular in the light of Respondent’s default – that Respondent is compensated for directing traffic to the website promoting generic CIALIS. Therefore, the Panel concludes that the Respondent is making a non legitimate commercial use of the disputed domain name that misleadingly diverts consumers. (See National Arbitration Forum Case No. FA 117911 G.D Searle & Co. v. Fred Pelham, finding that because the Respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the Respondent was opportunistically using Complainant’s mark in order to attract Internet users to its website).

Finally, as it has been decided in Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (also cited in Lilly ICOS LLC v. Tudor Burden, Burden Marketing,WIPO Case No. D2004-0794) “the Respondent is offering for sale not only the Complainant’s genuine product, but also a generic competitor. It is therefore using a domain name confusingly similar to the Complainant’s trademark to attract customers, who are then offered the choice of the Complainant’s product, and a competing product at a lower price. The facts that the disputed domain name is confusingly similar with the Complainant’s trademark and is used to sell a competing product in this manner deprive the Respondent’s offering of services of the bona fide character required to satisfy paragraph 4(c)(i) of the Policy. (A number of previous decisions have reached a similar conclusion: see, for example, Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700)’.

Therefore, in accordance with paragraph 4(a)(ii) of the Rules, it appears that the Respondent has no rights nor legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

The Complainant has established rights to the CIALIS trademark in 1999 and the trademark was known in the media and was used for advertising prior to the Respondent’s registration of the domain name on August 19, 2004. The Respondent appears to have been in the business of dealing in pharmaceutical products. Therefore, it appears that the registration of the domain name was made in bad faith.

In addition, Exhibits 11 and 12 to the Complaint show that the Respondent is trading on the value established by Complainant in its marks: the Respondent is using the Complainant’s CIALIS trademark in the domain name to sell brand and generic versions of CIALIS drugs.

As decided in Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101 “Policy paragraph 4(b)(iv) provides that registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (National Arbitration Forum, March 21, 2000)”.

Therefore, according to the Policy paragraph 4(a)(iii), it appears that the Respondent has registered and used the domain name in bad faith.

D. Relief requested

The Complainant referred to the domain name <one-cialis.com> in Part VI of the Complaint, which is not the domain name held by the Respondent. However, the Exhibits and all other parts of the Complaint do refer to the disputed domain name <cialis-ed.com>, which is the domain name held by the Respondent. The Complainant has filed numerous complaints with respect to its CIALIS trademark and it is apparent from the Complaint as a whole and from the Exhibits in particular that the Complainant is seeking relief with respect to <cialis-ed.com>. Therefore, while the mistake in Part VI of the Complaint is unfortunate, it is clear that it is a typographical mistake and it should not act as a bar to obtaining the relief requested. Moreover, if the Respondent had responded and objected to this reference, the Panel is convinced that the error would have been corrected.

The Complainant requests transfer of the domain name. As the domain name consists of the Complainant’s trademark and a descriptive word, transfer of the domain name would not infringe any third party rights and the Panel decides that it is appropriate in the circumstances.

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 <cialis-ed.com> be transferred to the Complainant.

Thomas Webster
Sole Panelist

Date: July 5, 2005