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Lilly ICOS LLC v. Saban Mihailovic [2005] GENDND 755 (27 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Saban Mihailovic

Case No. D2005-0356

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 Saban Mihailovic, Nish, Serbia and Montenegro.

2. The Domain Name and Registrar

The disputed domain name <one-cialis.com> is registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2005. On April 7, 2005, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On April 8, 2005, Gandi SARL 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.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 12, 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 April 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2005.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2005.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on May 13, 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.

Paragraph 2(a) of the Rules provides that it is the provider’s responsibility to employ reasonably available means to achieve actual notice to the Respondent of the dispute. The Center made the communication to the Respondent’s email address and to the postal address indicated in the contact details provided by the Registrar. The Respondent answered to one of the Center’s communications on April 11, 2005, asking the following question “What we need to fix to resolve this issue asap?”. Considering the Center’s communications and the said answer of the Respondent, the Panel accepts that, in light of the information available to it, the Center has fulfilled its obligation and achieved actual notice to the Respondent of the dispute.

4. Factual Background

The Complainant is a joint venture between ICOS Corporation and the Eli Lilly and Company, which owns the trademark CIALIS. The Complainant is the owner of more than eighty-seven registrations of the trademark CIALIS covering one hundred and seventeen countries, and also has filed applications for registration of the CIALIS trademark in twenty-four countries.

The CIALIS mark is registered or is pending registration for class 5 of Nice classification: pharmaceutical and medicinal preparations for treatment of sexual dysfunctions, pharmaceutical and medicinal preparation for prevention of sexual dysfunction.

Complainant has also an Internet presence, through the website accessed from the domain name <cialis.com>, which the Complainant uses to advertise and provide information regarding its pharmaceutical products. The <cialis.com> domain name was registered by Eli Lilly and Company on August 10, 1999.

The Complainant has had media coverage associated with the CIALIS drug for erectile dysfunction since 2001.

The Respondent is a natural person who registered the disputed domain name on January 9, 2004. The disputed domain name contains information about CIALIS drug and provides links to websites where CIALIS and other drugs for erectile dysfunction are sold on-line.

The Complainant attached to the Complaint a print out of the website’s content under the disputed domain name (appendix 11). Also, the Complainant provided a print out of the of the website’s content to which the links on the website under the disputed domain name resolves (appendix 12).

Based on the case file and taking into consideration the silence of the Respondent as to the Complainant’s allegations, the Panel accepts that the content of the website under the domain name and the content of the on-line pharmacy website to which the disputed domain name provides links, are those indicated in the appendixes to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

- the use and registration of the CIALIS mark to identify its pharmaceutical product for erectile dysfunctions pre-dates Respondent’s registration of the disputed domain name,

- the disputed domain name is confusingly similar with the CIALIS mark, which bears a strong distinctiveness with a high degree of individuality and no common colloquial use,

- the Respondent is using the disputed domain name for commercial gain,

- the website to which the disputed domain name resolves, provides links to an on-line pharmacy where, along with CIALIS drugs, some other competitor’s drugs (as the unlawful Generic Cialis) are sold,

- the Respondent is attracting Internet consumers to its website, whereupon the links resolve to websites where unlawful Generic Cialis products are advertised for sale.

B. Respondent

Properly notified, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Identical or Confusingly Similar

A.1. Complainant’s Rights in the mark CIALIS

It is beyond any doubt that the Complainant has rights in the CIALIS mark. These rights result from both registration and use of the mark in advertising and selling the CIALIS drug for erectile dysfunction.

A series of objective facts drawn from the documents attached to the Complaint and the search performed by the Panel support the conclusion reached at this point, which is as follows: the Complainant’s rights in CIALIS mark dating from June 17, 1999, when it filed a registration for this mark with the United States Patent and Trademark Office; the registration by Eli Lilly and Company of the domain name <cialis.com> on August 10, 1999, the use by the Complainant of this domain name since at least June 2001, as the address of the website on which it advertises and provides information on CIALIS.

A. 2. The similarity of the disputed domain name <one-cialis.com> with the mark CIALIS

The disputed domain name fully incorporates the Complainant’s trademark and adds the descriptive term “one” and hyphen.

As other panels before it (See GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464), the Panel concludes that such differences do not have the nature to render the disputed domain name distinctive from the Complainant’s mark CIALIS.

Therefore, it is the opinion of the Panel that the disputed domain name is confusingly similar to the Complainant’s mark CIALIS.

Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides three non-exclusive circumstances that can demonstrate that the Respondent has rights to or legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, his 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 or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) 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.

Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests.

In consideration of the first circumstance, it is the opinion of the Panel that the Respondent is capitalizing on the valuable reputation and goodwill of the CIALIS mark to direct Internet users to a website where he provides links to an on-line pharmacy. This on line pharmacy sells competitor’s products as well as the Complainant’s products. Some of these products are described as “Generic Cialis”.

Providing links to websites, which advertise for sale products of the Complainant’s competitors and specifically generic forms of the Complainant’s drug CIALIS, cannot be considered a bona fide offering of goods (See Pfizer, Inc. v. Internet Gambiano Productions LLC, WIPO Case No. D2002-0325, Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870 Nikon, Inc. v. Technilab, Inc., WIPO Case No. D2000-1774.

In addition, the Complainant’s alleged U.S. patent rights in the CIALIS brand pharmaceutical product could make the sale of any “generic” version of the Complainant’s pharmaceutical product in the U.S. unlawful for the duration of such rights.

Referring to the second circumstance, the Panel agrees, given the circumstances of the case, the Respondent’s name and the case file, that the Respondent as an individual, business, or other organization has not been commonly known by the disputed domain name.

The Respondent’s website resolves according to the appendixes to the Complaint to a website which provides links to an on-line pharmacy, where the Complainant’s products are sold together with those of the Complainant’s competitors. As other panels before it (See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750), the Panel cannot consider this fact as legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers of the Complainant’s product CIALIS drug, in principal, because it is reasonable to infer that the Respondent is compensated for directing traffic to the website of that on-line pharmacy.

Also, the Panel did not find, from the facts presented by the Complainant and from its own search any other circumstances which, being applicable to the case, would amount for the Respondent to have rights and legitimate interests in the disputed domain name.

Having done the analysis above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

Registered and Used in Bad Faith

The evidence presented in this case supports the conclusion that the Complainant’s erectile dysfunction drug called CIALIS has been extensively marketed and sold by the Complainant long before the Respondent registered the disputed Domain Name.

Taking into consideration the worldwide reputation of the CIALIS mark, identifying the pharmaceutical product developed, manufactured and marketed by Complainant, it is highly unlikely that the Respondent did not know about the existence of the drug and the trademark CIALIS before it registered the disputed Domain Name.

It is the conviction of the Panel that the Respondent registered the domain name not only having knowledge of the trademark, but also founding its commercial activities and trying to get advantages for such activities of the popularity of the CIALIS drug. Such conduct represents evidence of registration and use in bad faith of the disputed domain name.

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, <one-cialis.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist

Dated: May 27, 2005