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Lilly ICOS LLC v. Lei Lu [2005] GENDND 571 (19 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Lei Lu

Case No. D2005–0436

1. The Parties

The Complainant is Lilly ICOS LLC, Wilmington, Delaware, United States of America. The Complainant’s representative in this administrative proceeding is Baker & Daniels, Indiana, United States of America.

The Respondent is Lei Lu and its address is not available.

2. The Domain Name and Registrar

The disputed domain name <buycheapcialis.net> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on April 22, 2005 and in hardcopy on April 27, 2005. On April 25, 2005, the Center transmitted by e-mail to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On April 26, 2005, eNom, Inc. transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and indicating that the contact information for the disputed domain name may be found by doing a whois lookup at “http://whois.enom.com”. The whois lookup showed an incomplete Respondent’s contact information with an email address.

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 at its email address and the proceedings commenced on April 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2005.

The Center appointed Thomas Webster as the sole panelist in this matter on July 15, 2005. The Panelist has submitted a 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, Lilly ICOS LLS, is a limited liability company registered under the laws of Delaware. It filed for the 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).

The Complainant’s decision to use the CIALIS trademark to identify its pharmaceutical product was made public in July 2001, and the Complainant began selling pharmaceutical products identified by CIALIS mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand and, since November 2003, in the United States of America.

In total, the Complainant has obtained more than eighty-seven registrations for the CIALIS mark covering more than 117 countries, and the CIALIS trademark is the subject of pending registration applications filled by the Complainant in twenty-four countries.

Additionally, in 2004, the Complainant spent approximately $39 million dollars to market and sell its CIALIS brand product worldwide. U.S. sales of the CIALIS brand product totaled more than $206 million dollars, and worldwide sales of CIALIS brand product were in excess of $550 million dollars.

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

Respondent registered the Domain Name on January 27, 2005. The Respondent is using the disputed domain name to sell what are apparently the generic equivalent to CIALIS products, as well as other pharmaceutical products.

Respondent does not appear to have provided a full address to the registrar despite the warranty under paragraph 2 of the Policy that: “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate…”. However, under paragraph 2(b)(iii) of the Rules transmission to an Internet address is acceptable and Respondent has provided an Internet address. Notifications have been made to that address.

5. Parties’ Contentions

A. Complainant

Complainant submits that the CIALIS mark “is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use” and acts as “a distinctive identifier of the source of Complainant’s pharmaceutical products”. According to the Complainant, the Respondent’s addition of the descriptive words “buy” and “cheap” to the disputed domain name “does not negate the distinctiveness of Complainant’s CIALIS mark”.

Furthermore, Complainants asserts that: “the addition of descriptive words to Complainant’s CIALIS trademark does not prevent a finding of confusing similarity” and “when a domain name incorporates a distinctive mark in its entirety, that creates sufficient similarity between a mark and a domain name to render the domain name confusingly similar”.

According to Complainant, the Respondent’s addition of the descriptive words “buy” and “cheap” to Complainant’s CIALIS mark suggests that the “Respondent’s website is a location where a consumer may buy cheap CIALIS brand product”.

The Complainant adds that “it is apparent from the website associated with the domain name that Respondent is attempting to capitalize on the valuable reputation and goodwill of the CIALIS mark” and that “Respondent is using the domain name for commercial gain” although the Complainant “has not given Respondent permission, authorization, consent or license to use its CIALIS mark in the domain name”.

Moreover, the Complainant argues that “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.”

The Complainant also argues 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”.

Finally, Complainant states that “Respondent is using Complainant’s CIALIS trademark in the Domain Name to attract Internet consumers to its “www.buycheapcialis.net”  website, on which it advertises and sells generic versions of Complainant’s CIALIS brand product” and that Respondent’s use of Complainant’s CIALIS mark in the Domain Name is potentially harmful to the health of many unsuspecting consumers who may purchase the “Generic Cialis” or the “Generic Cialis Softtab” product advertised on Respondent’s website under the mistaken impression that they are dealing with Complainant and, therefore, will be receiving safe and effective drugs approved by the U.S. Food and Drug Administration or other health authorities in the world.

B. Respondent

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

6. Discussions and Findings

Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements is 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 Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint.

A. Identical or Confusingly Similar

As in Lilly ICOS LLC v. Jay Kim, WIPO Case No.D2004-0891, concerning the CIALIS mark, the Panel finds that the word CIALIS is distinctive and has no colloquial use.

The disputed domain name contains the Complainant ’s CIALIS mark as well as two additional descriptive words. 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 on Trademarks & Unfair Competition §23:50 (4^th 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).

In this case, the descriptive words are “buy” and “cheap” and, added to the Complainant’s CIALIS mark, may suggest that Respondent’s website is a location where a consumer may buy cheap CIALIS brand product. Far from creating a distinction, these terms actually reinforce the reliance on Complainant’s trademark.

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives the following three examples of ways in which a respondent may demonstrate its rights or legitimate interests to a domain name:

“(i) before any notice to you of the dispute, your use 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 and services; or

(ii) you (as an individual, business, or another organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

The Respondent’s website is used to advertise and sell generic CIALIS or to resolve to a site that does so. There is no argument that the Respondent was known by domain name or has a trademark. The evidence is that the Respondent is using the domain name for commercial use and is attempting to attract consumers with the Complainant’s trademark. The issue is whether this is a “bona fide offering of goods” or a “fair use of the domain name” or constitutes rights or legitimate interests in the domain name by analogy.

The Respondent’s use of the confusingly similar domain name to sell generic CIALIS product does not amount to a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy. Respondent is using a domain name that is confusingly similar to an established mark. Respondent is using the domain name to divert Internet users who are seeking “Cialis” to Respondent’s site. Respondent then appears to be selling a competing product to Cialis. This use is neither a bona fide offering of goods and services, nor a legitimate non commercial or fair use of the domain name under paragraphs 4(c)(i) and (iii) of the Policy (See G.D. Searle &Co. v. James Mahoney, Case Number FA 112559, National Arbitration Forum, June 12, 2002).

In addition, Complainant’s product has apparently been tested and approved by health authorities in various countries. There is no evidence that is the case for the generic product that Respondent is offering. This is also evidence that the Respondent’s use of the domain name is not a bona fide offering of goods.

Complainant also holds U.S. patent rights to the CIALIS brand pharmaceutical product. As a result, the sale of any “generic” version of Complainant’s pharmaceutical product in the U.S. is apparently unlawful. As a result, to the extent that Respondent is selling products into the United States of America (or into any other country where Complainant enjoys patent protection for its CIALIS product) the offering is not bona fide.

Therefore, in accordance with paragraph 4(a)(ii) of the Policy, it appears that the Respondent has no rights or legitimate interest 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 showed that the trademark was known in the media and was used for advertising prior to the registration of the domain name by the Respondent on January 27, 2005. 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.

Moreover, the Panel has visited the relevant website and agrees that the Respondent is trading on the value established by the Complainant in its marks. The Respondent is using the Complainant’s CIALIS trademark in the domain name to direct Internet consumers to an online pharmacy where they can purchase products described as Complainant’s CIALIS brand product or competing products.

As decided in Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101, “Policy paragraph 4(b)(iv) 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 has been using the domain name in 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 <buycheapcialis.net> be transferred to the Complainant.

Thomas Webster
Sole Panelist

Dated: July 19, 2005