WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Loris Mosser
Case No. D2005-1157
1. The Parties
The Complainant is Lilly ICOS LLC of Wilmington, Delaware, United States of America, represented by Baker & Daniels LLP of Indianapolis, Indiana, United States of America.
The Respondent is Loris Mosser, of New Ark, Algeria.
2. The Domain Name and Registrar
The disputed domain name <mycialispharmacy.org> (the “Domain Name”) is registered with Gandi SARL (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 7, 2005, and in hard copy on November 10, 2005. The Center transmitted its request for registrar verification to the Registrar by email on November 8, 2005. The Registrar responded by email the same day, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding, and that the registration agreement contained a submission to the jurisdiction of the courts of Paris, France, where the Registrar’s principal office is located; and providing the contact details in respect of the registration on its Whois database. However, the Registrar stated that its registration agreement was available in either English or French, and that it could not confirm which was chosen by the Respondent. The Registrar also stated that it had not received a copy of the Complaint.
The Panel considers it likely that the English language version of the Registration Agreement was used by the Respondent, since the Respondent’s website is in English, as was a communication by the Respondent in this proceeding (see below). However, if the language of the Registration Agreement was French, the Panel hereby determines that the language of this proceeding shall be English in accordance with paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). In so determining the Panel has taken into account the fact that the Complaint has been filed in English, that the Respondent appears to understand English, and that the Respondent has made no request that the proceeding be conducted in French. In these circumstances, it is convenient and fair to proceed in English.
Any failure on the part of the Complainant to send the Complaint to the Registrar was cured by the Center’s transmission to the Registrar of a copy of the Complaint with the Notification of Complaint and Commencement of Administrative Proceeding as mentioned below.
The Center verified on November 16, 2005, that the Complaint satisfied the formal requirements of the 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 November 16, 2005. The formal notification by email was also copied to the Registrar. The respective tracking records indicate that the notifications could not be delivered to any of the email or postal addresses in the contact details on the Registrar’s Whois database or to <firstname.lastname@example.org>.
In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2005.
On December 8, 2005, the Center received an email from “cris <email@example.com>”, stating “i’ve never been informed of any complains … l.m.” “L.M.” are the initials of the Respondent’s name. The Center replied by email to this address on December 8, 2005, stating that a copy of the Complaint and the Notification of Complaint and Commencement of Administrative Proceeding had been sent on November 16, 2005, to all contact addresses made known to the Center by the Complainant or by the Registrar and to <firstname.lastname@example.org>; enclosing further copies of the Complainant and Notification; and indicating that if the Respondent wished to make a late response to the Complaint, the Center would bring it to the attention of the Panel which would have a discretion to consider it. No response was received by the Center.
The Panel is satisfied that the Center has fully complied with its obligation to employ reasonably available means to notify the Respondent of the Complaint in accordance with paragraph 2(a) of the Rules.
The Center appointed Jonathan Turner as the sole panelist in this matter on December 20, 2005. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant supplies a pharmaceutical product for the treatment of erectile dysfunction under the trademark “CIALIS”. The generic name of the product is Tadalafil.
The Complainant applied for registration of the mark “CIALIS” in the United States on June 17, 1999 and now has registrations for this mark in respect of over 117 countries, including the Unites States.
The Complainant announced its intention to sell the product under this mark in July 2001, and its first sales were made under it in the European Union on January 22, 2003. The domain name <cialis.com> has been used for a website promoting the product since June 2001. There has been extensive worldwide publicity relating to the Complainant’s launch and sales of the product under the mark. In 2004, the Complainant spent in excess of US $39 million on marketing the product under the mark and its worldwide sales of the product under the mark exceeded US $550 million.
The Respondent registered the Domain Name on August 1, 2005, and is using it for a website of an online pharmacy which purports to supply the Complainant’s CIALIS product. The homepage of the Respondent’s website includes an image of the Complainant’s product and packaging bearing the name “Cialis”, accompanied by the text “Cialis ® / (Tadalafil) / Buy Cialis -> Order Cheap Cialis Online. Free Prescription!” This is followed by a table of quantities and prices in which the quantities are identified as e.g. “30 Cialis”. However, the prices advertised on the Respondent’s website are substantially lower than those normally charged by online pharmacies for the Complainant’s “Cialis” product and are more typical of generic alternatives not supplied by the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its well-known and distinctive mark “CIALIS”, in which it has rights antedating the Respondent’s registration of the Domain Name. The Complainant submits that the addition of the generic words “my” and “pharmacy” to its mark in the Domain Name does not avert confusion.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not authorized the Respondent to use the “CIALIS” trademark. The Complainant alleges that the Respondent is using the Domain Name to promote competing goods, and that this does not constitute a bona fide offering of goods or services or legitimate or fair use within the meaning of paragraphs 4(c)(i) or 4(c)(iii) of the Policy. The Complainant infers that the Respondent is selling a competing product, since the prices advertised on the Respondent’s website are substantially lower than those normally charged by online pharmacies for the Complainant’s “Cialis” product and are more typical of generic alternatives not supplied by the Complainant.
The Complainant further contends that the Domain Name was registered and is being used in bad faith. It alleges that the Respondent is obtaining a commercial gain from the sale of competing generic products to Internet users diverted to the Respondent’s website by the use of the Complainant’s mark in the Domain Name. The Complainant also asserts that the sale of generic equivalents to its “Cialis” product infringes its patent rights in the United States.
The Complainant requests a decision that the Domain Name be transferred to it.
As mentioned above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove that the Domain Name is identical or confusingly similar to a mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith. Each of these requirements will be considered in turn:
A. Identical or Confusingly Similar
It is clear that the Complainant has registered rights in the mark “CIALIS” in numerous countries.
The Panel is satisfied that the Domain Name is confusingly similar to this mark. The addition of the generic words “my” and “pharmacy”, and the generic top level domain suffix “.org” do not avoid confusion, since at least some internet users are liable to assume that the Domain Name identifies an online pharmacy of or approved by the Complainant for its “Cialis” product. A similar conclusion was reached in Lilly ICOS LLC v. Tommy Hillinger, WIPO Case No. D2005-0475, concerning the domain name <mycialispharmacy.com>.
The Panel accordingly concludes that the first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
As mentioned above, the Complainant infers that the Respondent is selling a competing generic alternative to the Complainant’s “Cialis” product, since the prices advertised on the Respondent’s website are substantially lower than those normally charged by online pharmacies for “Cialis” supplied by the Complainant and are more typical of generic alternatives not supplied by the Complainant.
The pricing comparison relied upon by the Complainant is evidence of only slight weight for the proposition that the Respondent is not supplying the Complainant’s “Cialis” product. However, in the absence of any contrary evidence provided by the Respondent, the comparison is sufficient to establish this proposition on the balance of probabilities, this being the applicable standard in accordance with decisions previously reached under the Policy: see e.g. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847, and Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003.
On this basis the Respondent’s use of the Domain Name is not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods or services placed on the market by its owner. On the contrary, the Respondent is using the Domain Name in connection with an illegitimate trade passing off a generic alternative as the genuine “Cialis” product supplied by the Complainant.
In these circumstances, the Panel considers that the use made of the Domain Name by the Respondent has not been in connection with a bona fide offering of goods or services so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy.
The Panel is also satisfied that the Respondent has not been commonly known by the Domain Name and that he is not making legitimate non-commercial or fair use of it. On the contrary, the Panel finds that the Respondent is using the Domain Name to obtain commercial gain by misleadingly diverting consumers seeking the Complainant’s website or product to his website through which competing products are supplied.
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name
C. Registered and Used in Bad Faith
The Panel is satisfied by the undisputed evidence that the Respondent is using the Domain Name to attract internet users to his website by creating a likelihood of confusion with the Complainant’s mark in order to obtain commercial gain by selling a competing product.
This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy. This evidence stands unrebutted.
The Panel concludes that the third requirement of the Policy is satisfied.
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 <mycialispharmacy.org> be transferred to the Complainant.
Dated: January 1, 2006