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Sodexho Alliance v. LaPorte Holdings,Inc [2005] GENDND 614 (2 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Private Domain Trust, Ltd.

Case No. D2005-0462

1. The Parties

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

The Respondent is Private Domain Trust, Ltd., Victoria, Australia.

2. The Domain Name and Registrar

The Disputed Domain Name <cialisnetwork.com> is registered with Direct Information Pvt Ltd. dba Directi.com (“Directi.com”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2005. On April 28, 2005, the Center transmitted by email to Directi.com a request for registrar verification in connection with the domain name at issue. On April 29, 2005, Directi.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 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2005.

The Center appointed Erica Aoki as the Sole Panelist in this matter on June 2, 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.

The Panel has received no further submission from either party since its appointment.

The Panel is requested to issue a decision on June 23, 2005, in the English language and is unaware of any other proceedings, which may have been undertaken by the parties or others in the present matter.

4. Factual Background

Complainant Lilly ICOS LLC, a limited liability company organized under the laws of the State of Delaware, is a joint venture between ICOS Corporation and Eli Lilly and Company.

Complainant’s rights to the trademark CIALIS date back to as early as June 17,1999, when it filed for registration of the CIALIS trademark with the United States Patent and Trademark Office to identify its pharmaceutical product, and was registered on the principal register (Registration No. 2.724.589) on June 10, 2003.

Complainant began selling pharmaceutical products identified by the CIALIS mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand. The sales in the United States started in November 2003.

Complainant has obtained more than eighty-seven registrations for the CIALIS mark covering more than 117 countries and is subjected of pending registration applications in twenty-four countries.

Complainant spent approximately 39 million dollars to market and sells its CIALIS brand product worldwide.

Complainant also has an Internet presence, through its registered domain name <cialis.com> since August 10, 1999. Complainant has used this domain name to identify a website since at least June 2001.

Respondent registered the disputed domain name <cialisnetwork.com> on July 6, 2004.

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.

Complainant’s rights in the CIALIS trademark predate Respondent’s registration date, and Complainant has both senior and exclusive rights in the CIALIS mark.

The CIALIS mark is a distinctive identifier of the source of Complainant’s pharmaceutical product, and Respondent’s addition of the term “network” to the Disputed Domain Name does not negate the distinctiveness of Complainant’s CIALIS mark.

Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

Respondent registered and used the Disputed Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

In order to succeed in a proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:

(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant ha rights; and

(ii) that 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.

These three elements are considered hereinafter.

Also, under paragraph 15(a) of the Rules, this Panel must “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.”

In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

Based on the facts and evidence presented by Complainant, this Panel finds that the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights under Policy, paragraph 4(a)(i). The Disputed Domain Name merely adds a term to CIALIS trademark. The addition of the term “network” to Complainant’s trademark does not sufficiently distinguish the Domain Name from the trademark. The Disputed Domain Name is confusingly similar to the Complainant’s registered trademark.

B. Rights or Legitimate Interests

Respondent is in default and thus has made no affirmative attempt to show legitimate rights and interests in the Disputed Domain Name.

The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.

The Respondent is in no way connected with Complainant and has no authorization to use Complainant’s CIALIS trademark.

There is no evidence that Respondent is or was commonly known by the Disputed Domain Name as an individual, business or other organization.

The Policy also indicates that a registrant may have a legitimate interest in a domain name if it is making fair use of the domain name.

Inputting the Disputed Domain Name in the Internet browser, an Internet user is immediately redirected to the website “www.xlpharmacy.com”. Thus, Respondent uses the Disputed Domain Name to divert Internet traffic to gain revenues. Such use, profitting from Complainant’s goodwill in its trademark, cannot be considered fair use of the Disputed Domain Name. The Panel, therefore, finds that Respondent has no rights or legitimate interests in the Disputed Domain Name, under Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant has alleged, and Respondent has not rebutted, that Respondent was aware of Complainant’s rights to the CIALIS trademark while registering the Disputed Domain Name and that such registration was made in bad faith.

Respondent’s use of Disputed Domain Name is to direct consumers to a site where one can purchase unlawful “generic cialis” products comprising untested chemical compositions which constitutes a bad faith offering of goods or services under paragraph 4(c)(i) of the Policy.

Respondent’s obvious intention to draw Internet traffic through the Disputed Domain Name, attracting Internet users to a website for commercial gain, and the lack of Respondent’s reply in these proceedings, are facts which demonstrate that the Disputed Domain Name was registered and is being used 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 <cialisnetwork.com> be transferred to the Complainant.

Erica Aoki
Sole Panelist

Dated: June 21, 2005