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Lilly Icos LLC v. Silagra World [2005] GENDND 788 (12 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly Icos LLC v. Silagra World

Case No. D2005-0211

1. The Parties

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

The Respondent is Silagra World, MA, India.

2. The Domain Name and Registrar

The disputed domain name <generic-cialis.com> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2005. On February 24, 2005, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On February 25, 2005, Melbourne IT trading as Internet Name Worldwide 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 March 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2005.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on April 28, 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 considers that, according to paragraph 11 of the Rules, the language of the proceedings is English.

Based on the case file, the Panel has independently verified that the Complaint is in compliance with the Rules and the Policy. 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 Panel notes that, the only seemingly correct addresses available in registrar’s Whois web page with regard to the disputed domain name, are the email addresses for the Respondent. All other contact details for the Respondent seem to be incomplete and for this reason the Panel accepts that, in light of the information available to it, the Center has fulfilled the obligation to employ reasonable means to achieve 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 (87) registrations of the trademark CIALIS covering 117 countries, and also has filed applications for registration of the CIALIS trademark in twenty-four (24) 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.

In August 2003, the Respondent registered the disputed domain name <generic-cialis.com>, which resolves, to a website that advertises for sale several forms of “Generic Cialis” pharmaceutical products, the products including Apcalis, Forzest, Megalis, Regalis and Tadalis products. The website also includes web pages associated with each of the “Generic Cialis” products. The “Buy” button on each of these respective web pages links Respondent’s website to an online pharmacy at “www.populargenerics.com”, that sells the “Generic Cialis” products advertised on Respondent’s website.

The facts above are drawn from the appendixes to the Complaint. The Panel was unable to access the website operating under the disputed domain name. Also, the website “www.populargenerics.com”, to which the website associated to the disputed domain name resolves, does not, according to the searches performed by the Panel, have the content described in the Complaint and presented in the appendixes to the Complaint.

Taking in consideration the appendices 11 and 12 to the Complaint, the lack of any reply from the Respondent together with the response default notification sent by the Center, the information in the Whois of the relevant registrar, the Panel has been able to confirm the fact that the Respondent has created a website under the domain name <generic-cialis.com>, and a print out of the contents was provided in the said appendices of the Complaint.

5. Parties contentious

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 has no rights or legitimate interests in respect of the disputed Domain Name:

- The Respondent is compensated for directing traffic from its site “www.generic-cialis.com” to the website of an online pharmacy that sells the “Generic Cialis” products advertised on Respondent’s website,

- The Respondent is not authorized by Complainant to use the CIALIS trademark,

- Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, due to the fact that: it promotes and advertises for sale on its website pharmaceutical products described as generic versions of Complainant’s CIALIS brand product – namely, the Apcalis, Forzest, Megalis, Regalis and Tadalis products, however, the Complainant’s U.S. patent rights in the CIALIS product makes the sale of any “generic” version of Complainant’s pharmaceutical product in the U.S. unlawful for the duration of such rights, the Respondent is using the confusingly similar Domain Name to attract Internet consumers to its website, whereupon Respondent promotes, advertises for sale and facilitates the purchase of unlawful “Generic Cialis” products comprising untested chemical compositions.

- The disputed Domain Name was registered and is being used in bad faith, as its registration occurred in order to utilize the Complainant’s well-known trademark by attracting Internet users to a website for commercial gain. A further indication of bad faith is represented by the fact that the Respondent is associating Complainant’s registered CIALIS trademark with its “Generic Cialis” products and also is associating Complainant’s registered trademark consisting of a golden colour, ovoid shaped tablet bearing the letter “C” with its “Generic Cialis” products. In addition, the Respondent’s offering of “generic cialis products” is potentially harmful to the health of many unsuspecting consumers who purchase unlawfully sold pharmaceutical products 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 (“FDA”) or other health authorities around the world.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

A.1. The Complainant’s trademark or service mark rights

The Complainant’s rights in the CIALIS mark are undisputable and result both from registration and use of the mark in advertising and selling the CIALIS drug for erectile dysfunction. A series of objective facts support the conclusion reached by the Panel at this point 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 mark CIALIS mark with the disputed domain name <generic-cialis.com>

The disputed Domain Name entirely incorporates the CIALIS mark with the addition of the descriptive term “generic”.

An important body of WIPO UDRP decisions conclude that adding the word “generic” alone or in combination with other generic terms to certain famous drug names, to which pharmaceutical companies have trademark rights, and registering the resulted combinations as domain names (see Lilly ICOS LLC v. Emilia Garcia, WIPO Case No. D2005-0031; Aventis Pharma SA Merrell Pharmaceuticals Inc. v. Filisp Kostins, WIPO Case No. D2004-0943; Lilly Icos LLC v. Jay Kim, WIPO Case No. D2004-0891; Sanofi –Aventis v. US-Meds.com. WIPO Case No. D2004-0809; Pfizer Inc v. Philip Pizzuro, WIPO Case No. D2004-0600; Pfizer Inc v. Ian Herman, WIPO Case No. D2004-0597; Pfizer Inc. v. M N, WIPO Case No. D2004-0595; Pfizer Inc. v. William James Case, WIPO Case No. D2004-0583) does not exclude the confusing similarity of such domain names to such trademarks.

For these reasons, the Panel finds that using the word “generic” in the disputed Domain Name is not sufficient to negate the similarity between the Domain Name and the mark CIALIS, and that the disputed Domain Name is confusingly similar to the mark CIALIS.

B. 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.

The last two circumstances are not applicable in this case: the second one, because the Respondent’ s name is Silagra World and it is not known as “generic-cialis”; and the third one, because the possibility for the Internet user to buy the products advertised on “www.generic-cialis.com” represents a fact from which, it is reasonable to infer, as the Complainant contends that, Respondent is compensated for directing traffic to the website of that online pharmacy. (See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).

As to the first circumstance, the Panel considers that, this is also not applicable to this case. The Respondent is capitalizing on the valuable reputation and goodwill of the CIALIS mark to direct Internet users to a website on which products described as forms of “Generic Cialis” are advertised for sale and such use cannot be considered a bona fide offering of goods (See Pfizer, Inc. v. Internet Gambiano Prods., WIPO Case No. D2002-0325).

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 Complainant’s pharmaceutical product in the U.S. unlawful for the duration of such rights.

Finally, the Panel did not find, from the record or based on its own search any other circumstances which would amount for the Respondent’s rights and legitimate interests in disputed domain name.

Considering the above, taken together with the absence of any response from the Respondent (which might be an indication that the Respondent has no rights or legitimate interests in respect of the disputed domain name (See Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO Case No. D2000–0115, Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000–0641, Bayerische Motoren Werke AG v. Null, WIPO Case No. D2002-0937), entitles the Panel to consider that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Based on the evidence presented in the case and based on the Panel’s own search, the Panel concludes that the Complainant’s erectyle dysfunction drug called CIALIS has been extensively marketed and sold by the Complainant long before the Respondent registered the disputed Domain Name. It is therefore 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.

Bearing in mind the content of the Respondent’s website, advertising for sale generic forms of CIALIS (appendix 11 to the Complaint), the Panel infers that the Respondent registered the domain name not only having knowledge of the trademark but also founding its commercial activities on the popularity of the CIALIS drug.

The Respondent not only registered a domain name which creates confusion among the Internet users as to the source and affiliation of the website, but also introduced on the website references to the original drug CIALIS and to the Complainant’s registered figurative trademark.

Respondent’s conduct represents, in the Panel’s opinion, evidence of registration and use in bad faith of the disputed domain name, as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

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

Beatrice Onica Jarka
Sole Panelist

Dated: May 12, 2005