WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Domain Magic, LLC
Case No. D2007-0144
1. The Parties
The Complainant is Eli Lilly and Company, c/o Robert E. Lee, Jr., Lilly Corporate Center, Indianapolis, Indiana, United States of America, of United States of America, represented by Baker & Daniels, United States of America.
The Respondent is Domain Magic, LLC, Lutz, Florida, United States of America, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <pulmotilac.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2007. On February 7, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On February 7, 2007, Intercosmos Media Group d/b/a directNIC.com 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, 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 February 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2007.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on April 12, 2007. 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, Eli Lilly and Company (“Lilly”), is a well-known pharmaceutical company that sells pharmaceuticals and related products world-wide. In particular, Lilly sells PULMOTIL medicated feed and water additives for swine. Lilly has used the PULMOTIL mark in commerce since March 29, 1993, and received a registered trademark on November 16, 1993. Lilly also has obtained seventy (70) registrations for PULMOTIL in at least sixty-seven (67) countries.
Additionally, Lilly began using the mark PULMOTIL AC in December 1999, for a water soluble version of its PULMOTIL product. Total sales of PULMOTIL AC totaled over US$17 million by the end of 2006.
Lilly registered the domain name <pulmotilac.com> on August 19, 1998. The domain name expired on August 10, 2002. Complainant states that the registration for <pulmotilac.com> was inadvertently allowed to lapse.
Respondent registered the disputed domain name on November 3, 2004.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s PULMOTIL and PULMOTIL AC marks. Complainant further contends that Respondent has no rights or legitimate interest in the disputed domain name.
Complainant also alleges that the disputed domain name was registered and is being used in bad faith. Complainant states that Respondent is using Complainant’s PULMOTIL and PULMOTIL AC marks to provide links to various pornographic websites including, but not limited to, links entitled “Video Porn,” “Adult Video Chat,” “Adult Sex Toy,” and “Sex Toy Store.” Some of these links require a consumer to pay a fee to view portions of the sites.
Complainant states that Respondent is using Complainant’s PULMOTIL and PULMOTIL AC marks by capitalizing on Lilly’s reputation and goodwill, and then realizing financial gain through “click-through” revenues when the consumers are diverted to web pages selling these pornographic products and services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraphs 4(a)(i)-(iii) of the Policy, for Complainant to prevail and have the disputed domain name transferred to it, Complainant must show that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the Respondent has registered and are using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the PULMOTIL registered mark and the PULMOTIL AC mark. Even though more relevant under the second and third element, the Panel notes that Complainant’s use of the PULMOTIL and PULMOTIL AC marks and the related domain name precedes Respondent’s registration of the disputed domain name.
The Panel also finds that the disputed domain name, <pulmotilac.com>, is identical to the domain name previously registered by Complainant.
Respondent’s registration and use of the disputed domain name suggests to Internet consumers that the domain name is owned by or affiliated with Complainant. This suggestion is particularly strong in light of the fact that Complainant previously owned and operated a web site with the identical domain name.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered mark, and identical to Complainant’s previous domain name, and that Complainant meets the first criterion of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Respondent has not been granted any rights by Complainant to use Complainant’s PULMOTIL and PULMOTIL AC marks, which are contained in their entirety in the disputed domain name. On the evidence before the Panel, Respondent does not appear to make any legitimate non-commercial or fair use of the domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent has not rebutted this.
Based on the foregoing and considering Respondent’s use of the domain name explained further below under 6.C., the Panel finds that Respondent does not have any rights or legitimate interests in respect of the domain name and that Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Respondent is located in the United States of America, where Complainant has registered its PULMOTIL mark and has used its PULMOTIL AC mark for many years. This Panel finds that the Respondent had constructive notice of Complainant’s marks, which are used in their entirety in the disputed domain name. Accordingly, this Panel infers that Respondent was aware of Complainant’s marks when Respondent registered the disputed domain name. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests.”
The Panel has also considered whether the Complainant’s failure to renew and the resulting expiration of Complainant’s registration of <pulmotilac.com> should have any bearing on the issue of whether Respondent registered the domain name in bad faith. Complainant has stated under oath that it inadvertently allowed the registration to lapse, and by filing this Complaint has demonstrated its lack of intent to abandon the domain name, to the satisfaction of the Panel. Moreover, Respondent has failed to file a Response to the Complaint and thus has not rebutted Complainant’s statements.
Paragraph 4(b)(iv) of the Policy states that there is bad faith if Respondent has attempted to attract, for commercial gain, Internet users to its 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 their website or of a product or service on their website or location.
Respondent has used the disputed domain name, which contains Complainant’s PULMOTIL and PULMOTIL AC marks in their entirety, to direct visitors to other vendors. It is likely that Respondent receives “click-through” revenue by directing those visitors to the other websites. This Panel finds that Respondent has used the disputed domain name for commercial gain and with the intent to misleadingly divert consumers to other websites.
Furthermore, the Respondent’s use of the disputed domain name causes consumers to be diverted to pornographic websites via links such as Video Porn,” “Adult Video Chat,” “Adult Sex Toy,” and “Sex Toy Store.” Previous decisions have held that the use of a disputed domain name to divert consumers to a pornographic site is evidence of registration and use in bad faith, regardless of the registrant’s motivation. See, e.g., Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich, WIPO Case No. D2006-0743, citing Six Continents Hotels v. Seweryn Nowak, WIPO Case No. D2003-0022. See also Angus Sholto-Douglas v. Kwandwe Private Game Reserve v. Sergey Fedorov, WIPO Case No. D2006-1184, finding bad faith “where the disputed domain name itself has no pornographic or erotic connotations, and as such, the Respondent’s use of the disputed domain name has the effect of harming the Complainant’s reputation and tarnishing its business and its valuable marks.”
Finally, Respondent’s bad faith is also evidenced in its pattern of abusive registration, infringement, and cybersquatting. Domain names of Respondent incorporating famous and distinctive marks have recently been the subject of UDRP proceedings and in each case, the panel ordered Respondent to transfer the disputed domain name to the complainant. See Weather Shield Mfg., Inc. v. Domain Magic, LLC, WIPO Case No. D2007-0052, citing Albert Einstein Healthcare Network v. Domain Magic, LLC, Claim No. FA0611000846808 (Nat’l Arb. Forum, January 11, 2007); Greg Young Publishing v. Domain Magic, LLC, Claim No. FA0701000886337 (Nat’l Arb. Forum February 16, 2007); Deason v. Domain Magic, LLC, Claim No. FA0612000869574 (Nat’l Arb. Forum, January 30, 2007). Panelists have long held that the registration of multiple domain names that are confusingly similar to established marks is deemed to be evidence of bad faith. See, e.g., CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith, in violation of paragraph 4(b)(iv) of the Policy.
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 <pulmotilac.com> be transferred to the Complainant.
Sandra A. Sellers
Date: April 26, 2007