WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Megasys
Case No. D2006-0429
1. The Parties
The Complainant is Lilly ICOS LLC, a corporation based in Delaware, United States of America and represented by Baker & Daniels LLP, United States of America.
The Respondent is Megasys, Kapashrea, New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <cialis-drugmart.com> is registered with OnlineNIC, Inc. d/b/a China-Channel.com (“‘OnlineNic, Inc.”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2006. On April 6, 2006, the Center transmitted by email to OnlineNIC, Inc. a request for registrar verification in connection with the domain name at issue. On April 7, 2006, OnlineNIC, Inc. 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 April 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2006.
The Center appointed David J.A. Cairns as sole panelist in this matter on May 18, 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
The Complainant is a Delaware Corporation and a joint venture company between ICOS Corporation and Eli Lilly and Company. The Complainant markets a pharmaceutical product called CIALIS for the treatment of erectile dysfunction.
The CIALIS trademark was registered in the United States Patent and Trademark Office on June 10, 2003, with Registration Nº 2,724,589, and a first use in commerce of December 18, 2002. The Complainant has since registered or applied for registrations of the CIALIS trademark worldwide.
The Complainant uses a website at “www.cialis.com” (registered to Eli Lilly and Company) to advertise and provide information regarding its pharmaceutical product.
The Respondent registered the disputed domain name on May 11, 2004. The home page offers ‘Cialis (brand)’ products for sale in various dosages and quantities, with information about the product and its sale on the website. On the right hand side of the home page there are various links, including ‘Generic Cialis’ and also the logos of two other pharmaceuticals for the treatment of erectile dysfunction, namely VIAGRA and LEVITRA. The ‘Generic Cialis’ link goes to a page that begins: “Generic Cialis is nothing but Cialis only with same cemical [sic] combination. A Generic Cialis drug by any other name would contain Taladafil as its main active ingredient. The Generic Cialis medication works with the same efficacy as the brand name drug.” This page has a ‘click here to buy’ link which leads the user into an independent website of ‘USA Medical Store’. This site offers generic CIALIS and also generic VIAGRA for sale online. The lower part of the USA Medical Store’s web page contains an ‘Affiliates’ link which serves as a link to ‘AffiliatePharmacyNetwork.com’. The site contains the following heading: ‘Make 22% on all products sold as an Affiliate Pharmacy Network Member. Join Today!’. This site includes an agreement between the Agent/Affiliate and Affiliate Pharmacy Network.com with the object of attracting customers via the Agent’s website to pharmaceutical sales. The Agent is paid 22% of the orders made if the purchaser is tracked from the Agent’s website to the sale.
On the home page of the website of the disputed domain name the logos of VIAGRA and LEVITRA provide links to pages within the same website enabling the user to purchase these brands of pharmaceuticals.
The foot of each page on the website contains the statement (in red): “The products mentioned are trademarks of their respective owners.”
5. Parties’ Contentions
The Complainant has invested millions of dollars marketing its CIALIS brand product worldwide, especially in the United States. Its sales to date exceed $1 billion dollars, and it is reasonable to infer that the CIALIS trademark is well known.
The Complainant states that the disputed domain name is confusingly similar to the CIALIS mark because it incorporates the mark in its entirety. The addition of the term ‘drugmart’ to the domain name does not eliminate their confusing similarity.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the <cialis-drugmart.com> domain name. It claims that the Respondent is making use of CIALIS trademark’s valuable reputation to induce consumers to buy generic CIALIS from the USA Medical Store website. The Respondent is likely to receive a payment from USA Medical Store through its Affiliates programme. Further, the Respondent’s website advertises the products of Complainant’s competitors (VIAGRA and LEVITRA). The Complainant states that the Respondent was never authorized to use the CIALIS trademark.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. It states that it is highly likely that the Respondent knew of the Complainant’s CIALIS trademark at the time of registering the disputed domain name, which it is using in bad faith to divert internet users to its website for commercial gain. It states that the Respondent’s use of the CIALIS trademark wrongfully implies that the Complainant is endorsing and/or supporting the Complainant’s website and the products advertised thereon. It argues that the Respondent is following a pattern of registering domain names containing trademarks of others, and refers to examples. Further, the Complainant warns of the potential harm to consumers’ health by unlawfully sold pharmaceutical products advertised on the Respondent’s website under the mistaken impression that they are dealing with the Complainant and therefore will be receiving safe and effective pharmaceuticals approved by health authorities around the world.
For these reasons, the Complainant requests that this Administrative Panel issues a decision ordering the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4 (b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainant’s Trademarks:
The Panel accepts that the Complainant owns the CIALIS trademark in the United States and throughout the world.
The disputed domain name is not identical with the CIALIS trademark, but does incorporate this trademark entirely. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).
In the present case, the disputed domain name is confusingly similar to the CIALIS trademark for the following reasons: (i) CIALIS is an invented word with a high degree of inherent distinctiveness; (ii) the evidence demonstrates that the CIALIS trademark has an established reputation throughout the world as a treatment for erectile dysfunction; (iii) the suffix ‘drugmart’ is a common word for a place of the retail sale of pharmaceuticals; (iv) the suffix emphasises rather than contradicts the trademark element of the disputed domain name, suggesting a place of retail sale of a pharmaceutical called CIALIS (that is, the Complainant’s product); and therefore, (v) Internet users will associate the disputed domain name with the Complainant’s trademark.
Accordingly, the first element required by the Policy is satisfied.
B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name:
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registration of a CIALIS trademark; (ii) the Respondent is not authorised or licensed by the Complainant to use the CIALIS trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) the Respondent is using the word CIALIS in its disputed domain name and in the content of its website in a trademark sense to refer to the Complainant’s pharmaceutical; (v) the Respondent is using the disputed domain name to sell the Complainant’s product as well as two competing products (VIAGRA and LEVITRA), and to advertise generic CIALIS with a link to a site where users can buy this generic product; and (vi) the Respondent is using the disputed domain name for commercial gain (as the Respondent is offering for sale the Complainant’s product and the products of two competitors, and also providing a link to a site with an Affiliates programme from which Respondent can be presumed to benefit).
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. Paragraph 4(c)(ii) and (iii) of the Policy are not applicable in this case, because the Respondent is not commonly known by the disputed domain name, and there is a use with the intention of commercial gain of the disputed domain name.
Further, paragraph 4(c)(i) does not apply because the Respondent is not using the domain name in connection with “a bona fide offering of goods or services”.
The Respondent is offering for sale not only the Complainant’s genuine product, but also a generic competitor, and two branded competitors. It is therefore using a domain name confusingly similar to the Complainant’s trademark to attract customers, who are then offered the choice of the Complainant’s product and competing products. The facts that the disputed domain name is confusingly similar with the Complainant’s trademark and is used to sell competing products deprive the Respondent’s offering of services of the bona fide character required to satisfy paragraph 4(c)(i) of the Policy: see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870. “The use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch’ selling”: See Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946 (referring to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088).
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Whether the Respondent has Registered and is Using the Disputed Domain Name in Bad Faith:
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(b)(iv) refers to circumstances indicating the use of the domain name with the intention to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the website or location.
The Respondent’s choice of domain name was made with the intention to sell the Complainant’s product, and therefore to profit from the reputation and goodwill of the Complainant’s trademark. The Respondent’s website contains a disclaimer that “The products mentioned are trademarks of their respective owners”, which suggests that the Respondent is not the owner of any trademarks referred to on its website, but is not an explicit disassociation from the Complainant or of a connection with the Complainant’s trademark. Accordingly, the Panel is satisfied that the Respondent registered and is using the disputed domain name to attract, for commercial gain, Internet users to its own website in the belief that its website has some connection with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement, when in fact there is no such connection.
Secondly, as already explained, the Respondent is using the disputed domain name in bad faith by offering for sale or directing customers to the products of the Complainant’s competitors on a website incorporating the CIALIS trademark in its domain name.
Thirdly, the Panel is satisfied that the Respondent has engaged in a pattern of registering domain names containing trademarks of others, including a previous instance of a domain name including the trademark CIALIS: See Lilly ICOS LLC v. megasys email@example.com, WIPO Case No. D2005-0376.
For these reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith by Respondent.
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 <cialis-drugmart.com> be transferred to the Complainant.
David J.A. Cairns
Dated: June 1, 2006