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Easygroup IP Licensing Limited v. The Carphone Warehouse Limited [2005] GENDND 588 (13 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Abadia Distribution

Case No. D2005-0449

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 Abadia Distribution, Simon Schnieders, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <cialis411.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2005, by email and on April 29, 2005, by hardcopy. On April 27, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On April 27, 2005, Register.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 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 May 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2005.

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

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 US $ 39 million dollars to market and sell its CIALIS brand product worldwide and worldwide sales of Cialis in 2004 exceeded US $ 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 March 27, 2004. The disputed domain name redirects Internet users to an online pharmacy.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the CIALIS mark is an invented word that has “a high degree of individuality” and acts as an “identifier of the source of Complainant’s pharmaceutical product”. According to the Complainant, the Respondent’s addition of the number 411 to the disputed domain name “does not negate the distinctiveness of Complainant’s CIALIS mark.”

According to the Complainant, “the addition of a term 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.”

Moreover, Complainant claims that “Respondent is using the Domain Name for improper commercial gain’ because Respondent offers consumers ‘the opportunity to purchase genuine CIALIS brand product, by offering links to legitimate sites. However, to assist consumers in their purchase decision, Respondent has conveniently ranked the legitimate and illegitimate sites where one can purchase CIALIS and generic cialis”.

Furthermore, the Complainant asserts that “the several avenues that lead from Respondent’s home page to sale or information about illegal and illegitimate generic products are strong evidence that Respondent is attempting to improperly gain from its use of Complainant’s brands.”

Complainant adds that it 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 another’s competing illegitimate 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”.

According to the Complainant, “Respondent’s use of a confusingly similar Domain Name to link consumers to sites that offer ‘generic cialis’ does not amount to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Additionally, 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, the 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.” According to the Complainant “consumers are offered the opportunity to link to several other sites where one can purchase generic cialis’ which is ‘strong evidence that Respondent is using the 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

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 an additional number. 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).

In this case, the number that is added is “411” which is the number for directory assistance in North America and which is in fact widely used in North America as part of other trademarks. The domain name is therefore composed of a trademark and a number which may be associated by Internet users with a directory search. This gives the impression that the site is intended to attract persons seeking the Complainant’s trademarked product.

Although there is no evidence that “411” in and of itself has been registered as a trademark, that would be of no assistance to the Respondent. It has been decided in WIPO Case No. D2004-0794, that ‘A number of WIPO Panels have considered domain names that consist of a Complainant’s mark and a third party trademark and have concluded that such domain names are confusingly similar to either mark, Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487, quoting Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142, and Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793.

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

It is established that the Respondent is using the domain name to provide a link to an online pharmacy promoting CIALIS drugs and generic CIALIS drugs.

As stated in Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101, “While mere resale of genuine branded products might give rise to a legitimate debate over whether the use of the mark was “nominative” and therefore a fair use under U.S. trademark law, any such contention is undermined by Respondent’s sale of products directly competing with Complainant’s through the same website” and “this principle may have particular weight in the pharmaceutical context, where risks to the public may be enhanced by the lack of regulatory safeguards assuring the safety or efficacy of the purported ‘generic’ version of Complainant’s CIALIS brand product, thus further undermining any argument (had Respondent made such an argument, which it did not) that it was making a bona fide offering of goods.” See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750.

The Respondent’s provision of a link to an online pharmacy suggests that he might be receiving payment for redirecting traffic. Therefore, 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).

Therefore, in accordance with Paragraph4(a)(ii) of the Policy, it appears that the Respondent has no rights nor 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 that the trademark was known in the media and was used for advertising prior to the registration of the Respondent’s registration of the domain name on May 27, 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.

The Panel has visited the relevant website and agrees 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 redirect 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) 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 has been using the domain name in bad faith.

D. Relief Sought

The Complainant seeks the transfer of the domain name <cialis411.com>. However, as noted above, the number “411” is widely used for directory assistance in North America. Indeed, there are many US trademark registrations that include “411” with other elements. Therefore, there is an issue as to whether it is appropriate to transfer a domain name composed of the Complainant’s trademark and the “411” number.

The Panel decides that it is appropriate to order the transfer because the usage of “411” is broad and there is no indication that “411” in and of itself has been registered as a trademark. However, this decision is based on the documents before the Panel in this case and the Panel expresses no view that the Complainant is entitled to use <cialis411.com> as regards anyone other than the Respondent.

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 <cialis411.com> be transferred to the Complainant.

Thomas Webster
Sole Panelist

Date: June 29, 2005