WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Christina Poe
Case No. D2006-1155
1. The Parties
The complainant is Lilly ICOS LLC (“the complainant”), Wilmington, Delaware, United States of America, represented by Baker & Daniels, LLP, Indianapolis, Indiana, United States of America.
The respondent is Christina Poe (“the respondent”), Philadelphia, Mississippi, United States of America.
2. The Domain Name and Registrar
The disputed domain name <generic-viagra-cialis-cheap-best-price.info> is registered with Moniker Online Services, LLC (“Moniker” or the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2006. On September 8, 2006, the Center transmitted by e-mail to Moniker a request for Registrar verification of the domain name at issue. On September 12, 2006, Moniker transmitted by return e-mail to the Center its response that confirmed the respondent is the Registered Name Holder (“RNH”).1 Moniker also provided the RNH’s administrative, billing, and technical contact details.
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 September 20, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 10, 2006. The respondent did not submit any response. Accordingly, the Center notified the respondent’s default on October 13, 2006.
The Center appointed Craig Edward Stein as the sole panelist in this matter on November 29, 2006. The panel finds that it has been properly constituted and, therefore, 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.
Because the respondent did not reply to any attempted communication, the panel reviewed whether the Center had discharged its responsibility in transmitting the Complaint to the respondent. The file shows that the Center sent the Complaint, via the Internet to the e-mail address and by courier to the physical address, listed in the WHOIS database. In addition, the Center attempted to transmit the Complaint via facsimile to the phone number that is listed in the WHOIS database for facsimile communications. All three modes of delivery were unsuccessful.
Because the Center utilized the three available means provided by the respondent when she registered the domain name in dispute, the panel is satisfied that the Center has discharged its responsibility “to employ reasonably available means calculated to achieve actual notice to [the] respondent”. See, Rules at paragraph 2(a).
4. Factual Background
This case presents yet again another challenge to a domain name that has incorporated the complainant’s trademark: “CIALIS.” In fact, by the panel’s count, over the past two years Lilly ICOS has established in over forty (40) UDRP proceedings that one or more2 disputed domain names that included the term “Cialis” had been both abusively registered and used.3 Because of these previous UDRP proceedings, there are now many well-reasoned UDRP panel decisions that have examined and addressed the contentions that the complainant, once again, raises here.
Of course, these prior UDRP decisions are not precedential. See, Policy at paragraph 4(k) and Tata Sons Limited v. Hasmukh Solanki, WIPO Case No. D2001-0974 (September 25, 2001) (“the Uniform Policy and the Uniform Rules do not provide that an Administrative Panel is bound by or required to follow precedent”). Nevertheless, many of the published decisions recite facts that are materially indistinguishable from the evidence submitted in this proceeding. Thus, rather than repeat what has already been articulated several times before, where appropriate, this panel will provide citations to the applicable UDRP decisions and the principles that they support. This methodology is analogous to the practice of adhering to the consensus views that have developed among UDRP Panel members. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Decision Overview”)4 at § 4.1 (The consensus view is that “[t]he UDRP does not operate on a strict doctrine of precedent. However, panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective, and predictable manner for all parties”). Accord, Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 (March 21, 2005).
Accordingly, only those few issues that merit special consideration will be discussed in detail. See, Part 6. Discussions and Findings, infra.
B. The Complainant
(i) Corporate Identity and Product Associated with Trademark
The complainant, a Delaware limited liability company, is the corporate entity formed to conduct business on behalf of a joint venture between ICOS Corporation and Eli Lilly & Co. The joint venture markets CIALIS, a pharmaceutical preparation for the treatment of erectile dysfunction (“ED”).
(ii) Complainant’s registered trademark “CIALIS”
On June 17, 1999, complainant filed its CIALIS trademark for registration with the United States Patent and Trademark Office (“USPTO”).5 On June 10, 2003, the CIALIS mark was assigned Registration No. 2,724,589 and placed in the USPTO Principal Register. Because of its inclusion on the Principal Register, the CIALIS mark is incontestable and has priority over any claim that postdates its filing in 1999. See, 15 U.S.C. § 1057(c).
The complainant has also taken action to protect its intellectual property rights in the CIALIS mark on a world-wide basis. By the time the Complaint in this matter was filed, Lilly ICOS had obtained more than one-hundred and thirty (130) registrations for the CIALIS mark covering more than one-hundred and seventeen (117) countries. Currently, the CIALIS trademark is the subject of pending registration applications in thirteen (13) remaining jurisdictions.
(iii) Sales and advertising of CIALIS
On January 22, 2003, the complainant first sold CIALIS in the European Union. Sales of CIALIS followed soon thereafter in Australia, New Zealand, and eventually, in the United States of America. The initial United States sales commenced in November 2003. In 2004 alone, the complainant spent in excess of thirty-nine million ($39,000,000) U.S. dollars to market and sell its CIALIS brand product worldwide. As of the filing of the Complaint in this proceeding, worldwide sales of CIALIS have exceeded one billion ($1,000,000,000) U.S. dollars.
(iv) Complainant’s Internet Presence
Lilly ICOS asserts that Eli Lilly & Co., one of complainant’s two joint venture partners, registered the domain name <cialis.com> on August 10, 1999.The <cialis.com> domain name resolves to a website where an Internet user can review information concerning complainant’s pharmaceutical, CIALIS.
C. The Respondent
The domain name in dispute was registered on November 12, 2004. March 5, 2005, is the first date for which there is a record of the disputed domain name resolving to a website. On August 31, 2006, the complainant conducted a WHOIS search seeking information on the domain name in dispute. That search disclosed the name that identifies the respondent in this matter: “Christina Poe.” This proceeding commenced shortly thereafter.
There is no submission in the case file that contains any information about the respondent, except we do know the following facts. The respondent appears not to reside at the physical address contained in the WHOIS database. Similarly, the phone number for facsimile communications that the respondent provided for inclusion in the WHOIS records is inoperative. So too, the respondent cannot be contacted by e-mail at the e-mail address contained in the WHOIS database.
D. Website to which <generic-viagra-cialis-cheap-best-price.info> resolved on August 31, 2006
As a part of its proof, the complainant attached to its Complaint a copy of a computer screen-shot of the initial webpage to which the domain name in dispute resolved on August 31, 2006. The image on that document shows a web page that contains the following heading:
“Best buy cialis as well as viagra cialis cheap in the market…
Buy Online Generic Viagra Cialis Cheap, Didrex / No Prescription Needed!!!”6
What follows this introduction is a chart entitled “Top Online Pharmacies”. The page is organized into twenty horizontal rows intersected by four vertical columns that run down the length of the webpage. Complainant focuses on the first two columns that bear the respective headings of “MEDICATION” and “PHARMACY”. The first column labeled “MEDICATION” contains photographs and graphics that appear to have been used in advertisements. In the column marked “PHARMACY” is a word or phrase that either describes a medical condition, e.g., “Anxiety” or, identifies a pharmaceutical product’s well-known, brand name, such as “CIALIS”.
In a box next to that which contains the single word, “CIALIS”, is a graphic that combines a photo and slogan, the latter of which also contains the trademarked term CIALIS. Both the graphic in the first box, and the trademarked term CIALIS in the second box, are actually click-through buttons7 that take the Internet user to the website of an Internet pharmacy named “Pharmacy4u.us”. The spelling of the domain name for this on-line pharmacy, however, is slightly different from that presented on its website. The domain name, <pharmacy-4u.us>, contains a hyphen between the word “pharmacy” and the number-letter combination “4u”.
The specific webpage on the Pharmacy4u.us website to which the Internet user is directed when either of the two “CIALIS” buttons is activated contains a description of the three major ED medications that this Internet pharmacy sells: CIALIS, and its two competitors, VIAGRA and LEVITRA. In addition, the webpage offers for sale purported generic versions for all three medications.
The homepage for the “www.pharmacy-4u.us” website also contains a click-through button for its Affiliate Program (“AFP”), Pills-Deal.net. At the “www.pills-deal.net” linked website,8 the AFP claims that it will pay an RNH with active websites a commission for each sale Pharmacy4u.us makes to a visitor that arrived via the affiliate’s web pages. The commissions, according to the information contained on the Pills-Deal.net web pages, range from a minimum of twenty (20%) percent upwards to twenty-eight (28%) percent.
Pills-Deal.net is also an on-line pharmacy itself, selling the same medications as Pharmacy-4u.us. However, if an Internet user needs service, the website for Pills-Deal.net directs the customer to send an e-mail message to firstname.lastname@example.org. The domain name <pharmacy-4u.net> resolves back to the Internet pharmacy, Pharmacy4u.us, although the URL remains “http://www.pharmacy-4u.net”.
5. Parties’ Contentions
A. The complainant
I. The complainant contends that the disputed domain name is confusingly similar to a trademark in which the complainant has rights
(a) The complainant’s use and registration of the CIALIS trademark pre-dates respondent’s registration of the domain name
According to the complainant, the CIALIS trademark was (i) filed and registered; and (ii) the drug that bears its name was marketed and sold internationally before the disputed domain name had been registered. The complainant claims that its rights to the CIALIS mark are superior to those that could be claimed by the respondent.
(b) The CIALIS mark is distinctive
The complainant argues that the term CIALIS is a unique, arbitrary, invented mark with a high degree of individuality and no colloquial use. So too, the complainant maintains that its CIALIS mark has no logical or suggestive relation to the pharmaceutical to which it is associated. That connection has occurred only because of the advertising and marketing efforts of the complainant. Accordingly, the complainant contends that these characteristics make the CIALIS mark one that is particularly strong. See, 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:78 (4th ed. 2005) and Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101 (March 16, 2005).
(c) The domain name is confusingly similar to the CIALIS mark
The complainant contends that the disputed domain name is confusingly similar because it incorporates the CIALIS trademark in its entirety. The complainant argues that the addition of generic or descriptive words, or even other marks, does not change the fact that as to the CIALIS mark, the domain name is similarly confusing. See, Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694 (September 8, 2005); Lilly ICOS LLC v.The Counsel Group, LLC, WIPO Case No. D2005-0042 (March 29, 2005); Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891 (January 28, 2005); Lilly ICOS LLC v. Anwarul Alam/”- -”, WIPO Case No. D2004-0793 (November 26, 2004); and Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004). Accord, G.D. Searle & Co. v. Fred Pelham, NAF Claim No. FA0208000117911 (Sept. 19, 2002) (“The addition of the other drug names does not create a distinct mark capable of overcoming a claim of confusingly similarity; it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain. This type of confusion is exactly the type that Policy ¶ 4(a)(i) is intended to prevent.”).
II. The complainant contends that the respondent has no rights or legitimate interests in respect of the domain name
(a) The respondent is using the domain name for commercial gain
The complainant maintains that the respondent is using the CIALIS mark in the domain name to draw consumers to its website and then direct them to another website that advertises and sells what is purported to be “generic Cialis,” in addition to competitive ED medications such as Viagra and Levitra. As its evidentiary support, the complainant points to the screen shots of the websites to which the Internet user is redirected that are included in its Annex. According to the complainant, these websites promote and link to affiliate programs to which the respondent most likely belongs. Moreover, the complainant maintains that as an affiliate, the respondent would receive a commission each time a paying consumer arrives at an affiliated Internet pharmacy website through its webpage. According to the complainant, both of these inferences are reasonable given the circumstances that have been presented. See, Lilly ICOS v. Megasys, WIPO Case No. D2006-0429 (June 1, 2006); Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042 (March 29, 2005).
Moreover, the complainant protests that none of the pages on these websites contains a statement that effectively disclaims an affiliation with the complainant or that the complainant has not authorized the respondent to speak on its behalf or sell its products. The complainant submits that because there is no plain disclaimer the website raises the erroneous impression that the complainant endorses the activities of the respective Internet pharmacy. See generally, Lilly ICOS v. Self, WIPO Case No. D2005-1098 (December 4, 2005).
(b) The complainant did not give the respondent any authority to use the CIALIS trademark
The complainant has not given respondent permission, authorization, consent, or license to use its CIALIS mark. Despite this fact, however, the complainant contends that the domain name resolves to a website enabling respondent to “cash in” on the strength of the CIALIS mark and the reputation of the pharmaceutical product with which the CIALIS mark is associated.
III. The complainant maintains that the domain name was registered and used in bad faith
(a) The trademark predates the domain name registration
The complainant contends that its trademark registration relates back to the June 17, 1999 filing date. Moreover, extensive media coverage of “Cialis” began as early as 2001. Finally, the CIALIS trademark was placed on the USPTO Principal Register in June 2003. All three dates precede the registration of the disputed domain name. Thus, the complainant argues that the panel should infer that the respondent knew of its trademark at the time the disputed domain name was registered. See, Lilly ICOS v. Cybernet Marketing/Antoine Tardiff, WIPO Case No. D2006-1123 (November 13, 2006).
(b) The CIALIS mark is well-known throughout the world
Similarly, the complainant submits it has extensively marketed and advertised its pharmaceutical product using the CIALIS trademark. Because the CIALIS trademark is well known around the world, the complainant contends that it is reasonable to infer that the respondent must have known of the CIALIS mark at the time that the respondent registered the domain name in dispute. See, Sanofi-Aventis v. Impact Healthcare, WIPO Case No. D2006-1102 (November 7, 2006).
(c) The domain name trades upon CIALIS’ well-known trademark to attract Internet users for commercial gain
The complainant also claims that evidence contained in its Annex shows that the respondent is using the CIALIS mark to attract Internet users, who would otherwise be searching for the complainant’s official CIALIS website, and redirects them to Internet pharmacies to obtain commission payments for any products that the misdirected Internet user purchases. See, Hoffmann-LaRoche Inc. v. WhoisGuard, WIPO Case No. D2005-1288 (February 1, 2006) (“[R]edirection of [I]nternet users to a commercial website selling the very same product identified by the mark [manifests bad faith]. To [hold] otherwise would allow respondent … to trade off the goodwill of trademark owners with impunity.”). Accord, F. Hoffmann-La Roche AG v. Stoyan Stoyanov, WIPO Case No. D2006-0197 (March 16, 2006).
(d) The respondent misrepresents CIALIS in a manner that tarnishes its trademark
The complainant further submits that the webpage portal to which the disputed domain name directly resolves leads Internet users to websites that represent to be Internet pharmacies, which, among other activities, sell both brand-name Cialis and an alleged “generic” version of the medication. However, the complainant contends that in either instance, these Cialis sales are most certainly illegal. With regard to “generic” Cialis,9 the complainant maintains that it neither markets nor sells such a pharmaceutical in the United States and that doing so is against the law. As for the sale of brand name Cialis, the complainant asserts that various statements contained in the webpages demonstrate that what is represented as its branded medication is suspect and more than likely was obtained from outside the legitimate channels of pharmaceutical distribution. Thus, respondent’s misrepresentations mislead the public into believing that Lilly ICOS endorses and supports these illegal activities. See generally, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001).
(e) The CIALIS mark is abused because the domain name in which it is embedded resolves to a portal through which the Internet user can illegally obtain pharmaceuticals, the safety of which cannot be assured, and ultimately, this puts the public’s health and safety at risk
Lastly, the complainant contends that the respondent’s use of the complainant’s CIALIS mark in the domain name is potentially harmful to the health of many unsuspecting consumers. According to the complainant, these individuals will labor under the mistaken impression that they are dealing with the complainant, i.e., two companies that have a reputation of manufacturing and marketing safe, efficacious drugs that are approved and monitored by the United States Food and Drug Administration (“FDA”). Instead, they may be buying pharmaceutical products that are unlawfully sold and physically harmful.
IV. Relief Requested
In accordance with Paragraph 4(i) of the Policy, Lilly ICOS requests that the panel transfer the contested domain name <generic-viagra-cialis-cheap-best-price.info> to the complainant.
The respondent did not reply to the complainant’s contentions.
6. Discussion and Findings
A. Panel’s review of website to which disputed domain name resolves or redirects
The panel visited the site to which the disputed domain name resolved and viewed the same initial webpage, a copy of which the complainant submitted in its Annex as Exhibit 13. Similarly, by clicking on either the trademarked word “CIALIS”, or on the “CIALIS” graphic, the website for Pharmacy4u.us appeared. However, during this review, the panel’s computer security system reported that it was blocking a “pop-up” and requested whether to display the blocked webpage.
Upon deactivating the pop-up blocker, the webpages for XLPharmacy.com, another Internet pharmacy, appeared in a separate “pop-up” window. The domain name of XLPharmacy.com is <xlpharmacy.com> and its website appears to have been discussed in two previous UDRP decisions. See, Lilly ICOS LLC v. Ronald Bode, WIPO Case No. D2006-0366 (May 16, 2006) and Lilly ICOS LLC v. Private Domain Trust, Ltd., WIPO Case No. D2005-0462 (June 21, 2005) (“Inputting the disputed domain name in the Internet browser, an Internet user is immediately redirected to the website “www.xlpharmacy.com.”). Moreover, a few seconds later another Internet pharmacy’s webpage appeared as a separate “pop-up” screen: Wholesale Generics with a domain name of <wholesale-generics.com>.
The “XLPharmacy.com” webpage that is first displayed focuses on a comparison between VIAGRA and its active ingredient, sildenafil citrate (which is misleadingly labeled as “generic Viagra”), both of which are offered for sale. Cialis, Levitra, and their respective active ingredients, otherwise referred to by their INN,10 appear on two separate click-through buttons near the top of the page. Clicking the respective drug’s button takes the Internet user to a webpage that contains a price list and other information to begin the purchase process for the pharmaceutical selected.11 The Wholesale Generics website has content that is similar to that found on XLPharmacy’s web pages except that its focus is exclusively on the sale of “generic” as opposed to “brand name” pharmaceuticals.
B. UDRP Administrative Proceedings: Elements that Complainant Must Prove
(i) The Elements
Under Paragraph 4(a) of the Policy, the complainant must establish each of the following three elements in order to state a claim for transfer or cancellation of a domain name:
(1) That the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) That the respondent has no rights to or legitimate interests in the domain name;12 and
(3) That the respondent registered and used the domain name in bad faith.13
(ii) Standard of Review
Because respondent has failed to file a response, the panel accepts as true all reasonable statements of fact made by the complainant in its submissions. See, Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972 (January 7, 2003).
Notwithstanding a respondent’s default, pursuant to the Rules, paragraphs 5(e) and 14(a), the panel must still review the arguments of the complainant and the evidence it submitted in support of its request for relief.
When the panel does undertake its review of the evidence, paragraph 14(b) of the Rules allows the panel to consider the respondent’s default and draw an appropriate negative inference if the specific circumstances warrant. See, Scotsman Publishing, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0228 (April 15, 2005) quoting WIPO Decision Overview at § 4.6 “[a] respondent’s default does not automatically result in a decision in favor of the complainant”. Rather, “the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding”. Id.
C. Application of the Policy to the Facts
(i) Identical or Confusingly Similar
The panel agrees with and therefore adopts the legal principles that the complainant contends govern this matter and that are set forth in Section 5. A. I. (a) through (c), supra. Similarly, the panel concurs with the complainant’s application of these principles to the facts that it proved in this proceeding.
Accordingly, the panel finds that the complainant has met its burden of proof and determines that the disputed domain name is confusingly similar to the complainant’s registered trademark CIALIS. Therefore, the first element of the Policy has been proven.
(ii) Rights or Legitimate Interests
The panel agrees with and therefore adopts the legal principles that the complainant contends govern this matter and that are stated in Section 5. A. II. (a) and (b), supra. Similarly, the panel concurs with the complainant’s application of these principles to the facts that it proved in this proceeding. In addition, the following factors have been established.
With regard to paragraph 4(c)(i) of the Policy, the respondent’s failure to respond or participate in this proceeding suggests that there is no evidence that the respondent was using or making any “demonstrable preparations to use” <generic-viagra-cialis-cheap-best-price.info> “or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. See, Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (August 22, 2003) (“[B]y defaulting and failing to respond, respondent has failed to offer the panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the panel might conclude that respondent has any rights or legitimate interest in the domain name.”).
Moreover, the respondent would not be able to come within the protection of this safe-harbor provision because the respondent’s website does not actually offer any “bona fide genuine goods or services”. Rather, the respondent’s website is merely a conduit or portal for the websites of third parties from whom the respondent is paid a commission. The payment to the respondent depends on two factors: (i) whether the redirected visitors purchase any pharmaceuticals from the third party and, if so, then (ii) the total dollar amount the third party collects for such purchases during a 30-day period. The panel finds that in the circumstances of this case this is not a bona fide offering of goods or services. See, Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington, WIPO Case No. D2005-1287 (January 30, 2006); Societe des Hotels Meridien v. Modern Limited-Cayman Web Development, WIPO Case No. D2004-0321 (June 14, 2004). See also, Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099 (December 4, 2005); Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123 (November 13, 2006).
Concerning paragraph 4(c)(ii), there is no evidence that the respondent is or was “commonly known by the domain name”. So too, there is no evidence in the submissions; the WHOIS database; the respondent’s portal webpage; or those websites to which an Internet user is either automatically redirected or reaches via the portal to which the disputed domain name resolves, which provides any credible information concerning the respondent’s identity or whether the respondent even exists. See, Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615 (August 9, 2005). In fact, the panel finds that from the information available, it appears more likely than not that the respondent is a fictitious creation.
Paragraph 4(c)(iii) only applies if the respondent is “making a legitimate noncommercial …use of the domain name, without intent for commercial gain or misleadingly divert consumers” and that the disputed domain name does not “tarnish the trademark or service mark at issue”. Here, the opposite has been established and, thus, this exception is inapplicable.
In sum, the respondent does not come within any of the exceptions of paragraph 4(c) of the Policy. Therefore, the panel determines that the complainant has established that the respondent has “no rights or legitimate interests in respect of the domain name” as that phrase is used in paragraph 4(a)(ii) of the Policy, and that therefore, the second element necessary to obtain relief pursuant to the UDRP has been established.
(iii) Registered and Used in Bad Faith
The panel agrees with and therefore adopts the legal principles that the complainant contends govern this matter and that are set forth in Section 5. A. III. (a) through (e), supra. Similarly, the panel concurs with the complainant’s application of these principles to the facts that it proved in this proceeding. However, a few additional factors deserve further discussion.
First, the respondent has provided inaccurate information for inclusion into the WHOIS database, thus frustrating any attempt to communicate with the respondent. Such actions have previously been seen as a factor that tends to prove the bad faith of respondents when they register domain names. See, Symark International, Inc. v. Gary McCurty, WIPO Case No. D2005-0235 (June 15, 2005); Bank for International Settlements v. BFIS, WIPO Case No. D2003-0984 (March 1, 2004) and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
In addition, the complainant briefly alludes to the fact that selling or purchasing prescription medication from these various websites is illegal and presents a genuine danger to the public’s health. This panel and other UDRP panels have accepted these allegations as true, and for good reason. As explained in Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 (November 30, 2003),
“Where a complainant alleges facts tending to prove that the respondent offers products in a fashion that puts the public health at risk, it is especially appropriate to draw adverse inferences against a respondent who fails to respond. Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet, WIPO Case No. D2003-0721 (Unrebutted allegation that respondent offered complainant’s ACCUTANE without a prescription, even though strongly contraindicated for pregnant women)”.
Here, however, the allegations of illegality are also supported by evidence that can be found in statements posted on the web pages of the Internet pharmacies to which the disputed domain is linked. From the websites, it is evident that a customer can obtain from these “pharmacies” prescription medications without a doctor’s examination or prescription. Because “[c]omplainant’s Cialis14 product is available only with a physician’s prescription, and is manufactured, labeled, and sold in strict compliance with US Food and Drug Administration (FDA) and other health authority laws and regulations…[t]he products sold on respondent’s website are…illegal and potentially dangerous”. Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794 December 20, 2004. See, 21 U.S.C. §§ 801-971 (“Controlled Substances Act”); 21 U.S.C. §§ 301-399 (“Federal Food, Drug, and Cosmetic Act”); and 21 C.F.R. §§1312 and 1360.04(a).
In light of the above discussion, the complainant has established the requisites of paragraph 4(a)(iii). Thus, the panel finds that the respondent has registered and used the disputed domain name in bad faith.
Having satisfied all three elements set forth in the paragraphs 4(a)(i) through (iii) of the Policy, the complainant is entitled to relief as provided for by the Policy.
Where, as here, the disputed domain name also contained a trademark owned by a non-party, unless the complainant secured the written consent from the non-party to a transfer, some UDRP panels have directed cancellation of the disputed domain name’s registration. See, e.g., Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794 (December 20, 2004); Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313 (June 21, 2005); Lilly ICOS LLC v. idesigns, WIPO Case No. D2005-0482 (July 26, 2005); and Lilly ICOS LLC v. Insight Ventures/James Connell, WIPO Case No. D2006-1057 (January 17, 2007).15
These decisions rely upon a sporadic line of cases that stand for the same proposition. See, Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782 (October 4, 2002); Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions, WIPO Case No. D2003-0725 (November 17, 2003); Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 (December 30, 2004); McWhinney Holding Company, LLLP v. wayne volack, NAF Claim Number: FA0607000748034 (September 6, 2006); F. Hoffmann-La Roche AG v. Internet Climate, WIPO Case No. D2006-1205 (December 11, 2006).
The reasons offered in support of this theory have varied. For example, one case determined the complainant did not prove the element of confusing similarity because the complainant did not own all the trademarks included in a domain name and failed to submit any documented authorization from the non-party trademark owners establishing that the complainant could act on their behalf. Nokia Group v. Mr. Giannattasio Mario. Some decisions express a concern that ordering the transfer of a multi-mark domain name when one of the trademarks belongs to one of the complainant’s competitors would foster additional UDRP Administrative Proceedings. Yahoo! Inc. v. Registrant (187640). Most, however, have generally concluded that a transfer of a multi-trademark domain name without a non-party’s authorization could “violate a third party’s right”. Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions; McWhinney Holding Company, LLLP v. wayne volack; and F. Hoffmann-La Roche AG v. Internet Climate.
In contrast, the vast majority of UDRP decisions where the disputed domain name included one or more non-party trademarks have determined that transfer was the appropriate remedy. As one UDRP panel made clear when faced with a complainant’s converse request that the disputed domain name be cancelled,
“The panel is concerned that cancellation will only place the domain name back into the public domain from which [the] respondent or others can re-register it, hence perpetuating the problem which complainant now faces…the panel considers that transfer is the only effective remedy that will prevent repetition of the particular act of cybersquatting in this case. Accordingly… [t]he panel will direct transfer rather than cancellation. If complainant so wishes, it may thereafter cancel the registration.”
National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (January 21, 2003).
The same practical concern about the fate of a cancelled domain name runs throughout these UDRP decisions. See, e.g., ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No D2000-0034 (April 3, 2000) (“the fact [is] that the remedy of cancellation leaves open the possibility for anyone - including the [r]espondent or a party related to the [r]espondent - to subsequently obtain registration of the domain name following the cancellation. An outcome in which a respondent to a successful Complaint subsequently reapplied for and obtained registration of the just cancelled domain name would frustrate the intent of the [UDRP]).” See also, America Online, Inc. v. David Nasi, NAF Case Number: FA0111000102525 (February 1, 2002); World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499 (December 29, 2000).
The decisions also reflect that non-parties suffer no prejudice when a multi-mark domain name is transferred in a UDRP proceeding. See, Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 (December 13, 2001) (“The panel is aware that [the non-party] might object to the [complainant] having sole ownership of a domain name containing both companies’ marks. However … [the non-party will] have the same recourse to a proceeding under the Policy or to court action that complainant … had in this proceeding”). See also, Yahoo! Inc., v. CIPC NET and Syed Hussain, WIPO Case No. D2001-0195 (May 8, 2001) (transfer ordered “without prejudice to any rights [that] might be asserted by [non-party]”).
Many UDRP panels have analogized the transfer remedy as simply the first request to register the previously misused domain name after the panel terminates the respondent’s previous registration. As explained in Braunstone Community Association v. Alan Davie, WIPO Case No. D2005-1279 (January 28, 2005) “[b]y requesting transfer of the domain name to itself, complainant has effectively requested registration of the…domain name…[c]omplainant’s request for registration should reasonably take precedence under a general first-in-time principle applicable to legitimate requests for registration” quoting Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (March 6, 2000). This viewpoint actually finds support in the First WIPO Domain Name Process Report. See, The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the First WIPO Internet Domain Name Process, April 30, 1999 at Paragraph 184 (because “remedies [are] limited to [the] status of the domain name registration … mean[s] that the remedies available under the procedure would be the cancellation of the domain name registration and its transfer to the third party complainant”) (Emphasis added).
Moreover, the UDRP Rules and Policy do not contain any provision that requires a complainant to obtain the consent of a non-party trademark owner before filing a complaint or as a condition to obtaining the transfer of a disputed domain name. Accord, Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 (November 30, 2003) (“[C]onsent of other trademark owners with a potential interest in the transferred domain [name might] seem to be the better practice [however] neither the Policy nor the Rules expressly require such consent once a prima facie case for transfer has been made”).
Cases where the disputed domain name includes trademarks of pharmaceutical products consistently follow the majority of decisions that have addressed this issue and have concluded that, notwithstanding the presence of another trademark, transfer is the preferred remedy. See, F. Hoffmann-La Roche AG v. Ric Deleon, WIPO Case No. D2006-0135 (March 23, 2006); F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751 (July 20, 2006). See also, G.D. Searle & Co. v. Caroline Street Clinic, NAF Claim Number FA0303000151543 (April 30, 2003); G.D. Searle & Co. v. Entertainment Hosting Services, Inc., NAF Claim Number: FA0204000110783 (June 3, 2002); G.D. Searle & Co. v. Montgomery Byers, NAF Claim No. FA0204000110778 (June 3, 2002); G.D. Searle & Co. v. Mahoney, NAF Claim No. FA0204000112559 (June 12, 2002); G.D. Searle & Co. v. 24-7-Commerce.com, NAF Claim No. FA0206000114707 (July 31, 2002); G.D. Searle & Co. v. Paramount Mktg., NAF Claim No. FA0208000118307 (September 27, 2002); G.D. Searle & Co. v. 24-dollars-for-3-pill-viagra-trial-pack.com, NAF Claim No. FA0208000117905 (October 2, 2002); G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, NAF Claim No. FA0209000124508 (October 16, 2002); G.D. Searle & Co. v. Cory Christensen, NAF Claim Number: FA0110000100647 (December 4, 2001).16
Additionally, the application of the remedy of cancellation in any UDRP proceeding is extremely rare. Indeed, because cancellation was both misunderstood and infrequently applied, an ICANN Domain Name Supporting Organization (“DNSO”) UDRP Review Task Force examined whether the remedy of cancellation should be abolished. As the ICANN Staff Managers Issues Report on UDRP Review (August 1, 2003) succinctly states:
“Some complainants have mistakenly appeared to assume that an order ‘canceling’ a domain registration will prevent any future registration of a name by anybody. Eliminating ‘cancellation’ as an available remedy would eliminate this possible source of confusion.” … “However, [e]fforts to educate complainants about what happens when a domain registration [is] ‘cancelled’ have led to cancellation being ordered only in rare circumstances.”
The numbers have changed little since the Report was issued. A summary review of current UDRP case statistics shows that of the 10,323 disputes submitted to WIPO, only 64 decisions have ordered cancellation. When the disputes administered by other providers are included in the tabulation, the number of submitted cases increases to approximately 17,400; the decisions that order cancellation reach about 85.
The infrequent use of the cancellation remedy together with an understandable emphasis on issues related to the three UDRP elements have apparently led to these inconsistent results. Compare, e.g., State Farm Mutual Automobile Insurance Company v. Biad Corp a/k/a Nina Biad, NAF Claim FA0410000348900 (December 9, 2004) (<allstatefarminsurance.com>, transferred) with State Farm Mutual Automobile Insurance Company v. BIAD Corp. a/k/a Nina Biad, NAF Claim FA0412000384787 (February 7, 2005) (<allstatefarminsurance.info>, cancelled). However, the reliability of the process compels the uniform application of the Policy and Rules.
“Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts.”
Tendzin Jigmey Drakpa, also known as His Holiness Phakchok Rinpoche v. Kim Joe, WIPO Case No. D2006-0328 (June 7, 2006) quoting Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004).
Thus, so too here, the remedy applied by a substantial majority of UDRP panels when a disputed domain name contains multiple trademarks, not all of which belong to the complainant, is both the correct and most acceptable solution. The reality is that, in circumstances such as these, cancellation is an ephemeral remedy at best. Once cancelled, there is no guarantee that another misdirected RNH (or worse, the same respondent) would not seize upon the newly available domain name and begin the process all over again. This is especially probable where, as here, rogue Internet pharmacies pay their affiliates significant monetary remuneration to attract potential customers to their websites.
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-viagra-cialis-cheap-best-price.info> be transferred to the complainant.
Craig Edward Stein
Dated: January 29, 2007
1 The ICANN Registrar Accreditation Agreement (17 May 2001) (“RAA”) defines what is commonly referred to as the Registrant as a Registered Name Holder. See, RAA at Section 1, Definitions, Sub-section 1.8. This defined term of ‘Registered Name Holder’ is sometimes used interchangeably with the appellations “domain holder”, “registrant” or “domain owner”. The last term, however, is a misnomer. See, Gaylord Entertainment Company v. Nevis Domains LLC, at ft. n. 4, WIPO Case No. D2006-0523 (September 6, 2006).
2 One example of a single proceeding addressing multiple domain names is Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891 (January 28, 2005), in which thirty-nine (39) domain names were ordered transferred to the complainant.
3 As the facts in the case file shows and the UDRP Panel decisions demonstrate, this complainant began to file challenges to domain names that contained its trademark “CIALIS” only a few months after its CIALIS pharmaceutical preparation became available for purchase in the United States.
4 The WIPO Decision Overview is located at the following Internet address: “http://www.wipo.int/amc/en/domains/search/overview/”.
5 ICOS Corporation holds the patent for the CIALIS drug formulation (U.S. Patent No. 5,859,006).
6 Any language derived from the websites to which the disputed domain name either resolves or redirects is quoted here verbatim. There are no revisions to correct misspellings or grammatical errors.
7 Two other click-through buttons bear mentioning. One is for the brand name pharmaceutical, Vicodin; the other is labeled “hydrocodone,” which is Vicodin’s INN. See, footnote 10, infra. Vicodin is a Schedule II controlled substance opioid pharmaceutical, unless it is combined in one pill with another medication. Depending on the respective medications strength and concentration, these hydrocodone-combination pills are elevated to either Schedule III or V drugs.
8 When the Affiliate Program button on the homepage of the Pharmacy4u.us is clicked, the viewer is unable to tell that the page has resolved to another website, “www.pills-deals.net” because the graphics and other features of the two sites are practically identical.
9 CIALIS contains tadalafil, a phosphodiesterase that creates an increase in blood flow to certain blood vessels to treat and ameliorate ED. Tadalafil is also CIALIS’ active ingredient. The Internet pharmacies, however, misleadingly advertise tadalafil as “generic” CIALIS.
10 “INN” is the acronym for International Nonproprietary Names for Pharmaceutical Substances. An INN is a unique name used to identify a pharmaceutical substance or active pharmaceutical ingredient. See, Teva Pharmaceutical Industries Limited v. BLTC Research, WIPO Case No. D2005- 0113 (April 22, 2005).
11 Because the panel’s review of the website to which the disputed domain name resolved was somewhat different than that experienced by the complainant, the panel examined (i) past entries for the disputed domain name in the WHOIS database, and (ii) past webpages to which <generic-viagra-cialis-cheap-best-price.info> resolved as documented in the Internet Archive. The review showed that, among other matters, the disputed domain name, the web page portal to which it resolves and the Internet pharmacies with which it is affiliated, have connections with several other domain names, including: <pharmacy4u.us>; <pharmacy-4u.us>; <pharmacy4-u.net>; <pills-deal.net>; <generic-viagra-pill-best-price-info>; <generic-soft-viagra-best-price.info>; <e-z-diet-pills.com>; <dietpills-123.com>; <e-pills-4u.com>; <value-pharm.com>; <wholesale-generics.com>; <xlpharmacy.com>; <tramadol-facts-special-offers.info>; <pharmacy-corner.us>; <top-pharmacy.us>; <pharmacy-24x7.net>; <mypill.biz>; <pharmacy-team.com>; <marketing-support.info>; <support-2000.net>; <support24x7.biz>; <team-support-24x7.net> and <top-support.net>.
12 Paragraph 4(c) of
the Policy lists the following defenses that, if proved, demonstrates that the
respondent has a legitimate interest or right in the domain name in dispute:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] 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.
13 Paragraph 4(b) of the Policy lists four non-exclusive circumstances that if the Panel determines to be present “shall” be “evidence of the registration and use of a domain name in bad faith”.
14 CIALIS is a “prescription drug” within the meaning of 21 U.S.C. § 353(b)(l)(A) and (B). See also, footnote 7, supra.
15 Some of the cited decisions conclude with an order of cancellation. In others, a transfer eventually was ordered because the complainant secured from the non-party whatever documentation the panel directed was necessary. However, the premise underlying these decisions is the same.
16 In transferring a multiple trademark domain name, some UDRP panels have included in their decisions language similar to the following which was first articulated in G.D. Searle & Co. v. Martin Marketing, NAF Claim Number FA0208000118277 (October 1, 2002):
“PROCEDURAL ISSUE – MARKS OF MULTIPLE PARTIES
Due to practical difficulties inherent in the UDRP, cooperative complaint initiation is unlikely and unfeasible. Because complainant initiated this dispute prior to any other interested, party it has the opportunity to acquire the domain name, while seeking to protect its …mark from an infringing use. However, due to the procedural complexities presented by the current dispute the following issue must be addressed: that complainant seeks acquisition of the subject domain name in good faith, and will forfeit its interest in the contested domain name if the other represented marks are infringed upon following a transfer of the domain name registration to complainant.”
See also, G.D. Searle v. Dunham, NAF Claim No. FA123901 (Oct. 9, 2002); G.D. Searle & Co. v. Innovative Solution Technologies a/k/a Vedavyasa Alapati, NAF Claim Number: FA0208000123927 (October 23, 2002); G.D. Searle & Co. v. unknown, NAF Claim Number: FA0208000123920 (November 8, 2002); G.D. Searle & Co. v. Erica Amane, NAF Claim Number: FA0210000126838 (November 25, 2002); G.D. Searle & Co. v. !!!#1 Celebres Xenical Online, NAF Claim Number: FA0210000126837 (December 2, 2002); G.D. Searle & Co. v. 24-7-Commerce.com, NAF Claim Number: FA0210000126657 (December 5, 2002); America Online, Inc. v. Edmund Janas II a/k/a Destiny Design, NAF Claim Number: FA0310000203173 (November 24, 2003); Citigroup Inc. v. LaPorte Holdings, Inc., NAF Claim Number: FA0501000404547 (March 4, 2005); V&S Vin & Sprit Aktiebolag (publ) v. Pride Not Profit, Inc., NAF Claim Number: FA0504000452057 (May 16, 2005); FMR Corp. v. LaPorte Holdings c/o Admin, NAF Claim Number: FA0504000453838 (May 26, 2005); Kerbeck Motors, Inc. v. Admin c/o LaPorte Holdings, NAF Claim Number: FA0504000462905 (May 31, 2005); The PNC Financial Services Group Inc. v. Unasi Inc., NAF Claim Number: FA0508000535925 (September 20, 2005); Bank of America Corporation v. Whois Privacy Protection Service Inc. c/o Whois Agent, NAF Claim Number: FA0512000604717 (January 27, 2006); Bank of America Corporation v. Spiral Matrix, NAF Claim Number: FA0512000612013 (February 2, 2006); Klein-Becker IP Holdings, LLC v. muscledrive c/o Bill Warehouse, NAF Claim Number: FA0603000654468 (April 25, 2006). This precatory statement seems designed to caution potentially errant complainants against abusing the domain name that the UDRP panel has ordered transferred.