WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Dylan Dupre
Case No. D2006-0331
1. The Parties
Complainant is Lilly ICOS LLC, Wilmington, Delaware, United States of America, represented by Baker & Daniels, United States of America.
Respondent is Dylan Dupre, Los Angeles, California, United States of America, represented by an external representative.
2. The Domain Name and Registrar
The disputed domain name <cialiswonder.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2006. On March 17, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 21, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2006. A Response was filed on May 2, 2006. While the Response was not timely, the Panel, in the exercise of its discretion, considered its contents. On May 5, 2006, “Complainant’s Reply to Response” was submitted. The Panel has considered the contents of this submission as well in reaching its decision.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on May 2, 2006. 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
Complainant Lilly ICOS LLC is a joint venture between ICOS Corporation and Eli Lilly and Co. Complainant owns a U.S. Trademark Registration (No. 2,724,589) for the mark CIALIS, as used on a pharmaceutical product. Complainant began selling pharmaceutical products under the CIALIS mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand. Complainant began sales of the drug CIALIS in the U.S. in November 2003. To date, the CIALIS mark is the subject of more than 87 registrations covering more than 117 countries and sales of CIALIS brand product exceed $1 billion, and the CIALIS brand drug has been the subject of extensive media coverage. Eli Lilly is the owner of the domain name <cialis.com> that it has used to advertise and provide information regarding its pharmaceutical product.
Respondent registered the domain name in dispute, <cialiswonder.com>, on December 8, 2004.
5. Parties’ Contentions
Complainant contends that the domain name <cialiswonder.com> is confusingly similar to its CIALIS mark, noting that the domain name incorporates the CIALIS mark in its entirety and that the addition of the merely descriptive word “wonder” does not prevent a finding of confusing similarity.
Complainant further argues that Respondent has no rights or legitimate interests in the domain name. According to Complainant, by using the mark CIALIS in the domain name, Respondent is luring consumers in search of CIALIS brand product to a website that advertises both CIALIS brand product and generic CIALIS product.
Further, Complainant declares, Respondent is using the CIALIS mark in its domain name to draw customers to its website and then direct them to another site, <generic-pharmacy.net>. Complainant indicates that Respondent likely receives a payment each time it links a consumer to the <generic-pharmacy.net> page and the consumer makes a purchase.
Complainant also maintains that Respondent may not be considered to be promoting a bona fide offering of goods or services placed on the mark by their owner since Respondent is not actually selling the goods, Respondent’s website is not used only to sell the trademarked goods and/or services, and Respondent’s site does not accurately disclose Respondent’s relationship with the trademark owner.
With respect to the issue of “bad faith” registration and use, Complainant contends that CIALIS is a well-known mark and Respondent is using such mark to attract internet users to its site for commercial gain. Respondent’s use of the CIALIS mark, Complainant maintains, wrongfully implies that Complainant is endorsing and/or supporting the web site and the products advertised thereon.
Finally, Complainant notes that Respondent’s use of the CIALIS mark is potentially harmful to the public health to the extent that many unsuspecting consumers may purchase unlawfully sold products advertised on Respondent’s web site under the mistaken impression they are dealing with Complainant and purchasing safe and effective government-approved drugs. CIALIS product is only available on a prescription basis.
In his Response, Respondent argues that the domain name <cialiswonder.com> is “substantially different” from CIALIS due to the addition of the distinctive word “wonder.” Respondent further maintains that it does not use the domain name in bad faith since its homepage indicates that it is not affiliated or associated with Complainant.
C. Complainant’s Reply
In its Reply, Complainant contends that Respondent added its disclaimer only after commencement of this proceeding and, thus, that the addition of the disclaimer does not cure Respondent’s bad faith. Complainant also takes issue with Respondent’s assertion that the term “wonder” is distinctive and thus that the domain name is “substantially different” from the CIALIS mark.
D. Respondent’s Rebuttal
In its Rebuttal, Respondent denies that the disclaimer was posted only after the filing of the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no question, given Complainant’s use of, and registrations covering, the CIALIS mark, that Complainant has rights in the mark. The parties, however, dispute whether the domain name <cialiswonder.com> is confusingly similar to CIALIS. Complainant urges that the term “wonder” is descriptive and, thus, its addition does not avoid a finding of confusing similarity; the Respondent maintains that “wonder” is distinctive and, thus, its addition avoids a finding of confusing similarity.
In determining whether a term is descriptive, the term must be compared with the goods and/or services on or in connection with which it is used. In this case, the goods are a drug product. The Panel takes notice of the fact that the term “wonder” is often used to describe the qualities or characteristics of a drug product. For this reason, the Panel concludes that the term “wonder,” as used by Respondent in its domain name, is descriptive and, thus, that its addition to the name does not avoid a finding of confusing similarity. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (determining that addition of words “drug”, “online”, “buying” and “guide” to CIALIS mark did not eliminate confusing similarity between CIALIS and the domain name <cialis-drug-online-buying-guide.com>.).
B. Rights or Legitimate Interests
Given the finding that the disputed domain name is confusingly similar to the CIALIS mark, the Panel concludes that Respondent cannot be found to be using the domain name in connection with a bona fide offering of goods, within the meaning of paragraph 4(c)(i) of the Policy. Nor is there any evidence in the case file that any of the other circumstances set forth in paragraph 4(c) of the Policy is applicable.
C. Registered and Used in Bad Faith
Regardless of when the disclaimer was posted, the Panel concludes that Respondent, through the use of the domain name <cialiswonder.com>, has intentionally attempted to attract, for commercial gain, internet users to its site and other linked sites by creating a likelihood of confusion as to the source of its site and the products offered at such sites, within the meaning of paragraph 4(b)(iv) of the Policy. Thus, based on the evidence of the case, the Panel finds the requisite evidence of registration and use in bad faith.
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 <cialiswonder.com> be transferred to the Complainant.
Jeffrey M. Samuels
Dated: May 16, 2006