WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. media/broadcasting, Lee Shung
1. The Parties
The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America represented by Baker & Daniels LLP, United States of America.
The Respondent is media/broadcasting, Lee Shung of Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <36cialis.com> (“Domain Name”) is registered with GKG.NET, INC (formerly GK Group LLC).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to GKG.NET, INC (formerly GK Group LLC) a request for registrar verification in connection with the Domain Name. On July 1, 2010, GKG.NET, INC (formerly GK Group LLC) transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 proceeding commenced on July 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2010.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on August 10, 2010. 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
4.1. The Complainant's rights in the CIALIS mark date back to as early as June 17, 1999, when its predecessor-in-interest filed for registration of the CIALIS trademark with the United States Patent and Trademark Office. The CIALIS mark was registered on the principal register (Registration No. 2,724,589) on June 10, 2003, giving the Complainant a constructive use date of June 17, 1999. The Panel has looked at the evidence and is satisfied that the Complainant owns six trademark registrations in Taiwan for the CIALIS mark (Registration Numbers 1065231, 1053130, 01129964, 01129847, 945319 and 987242), as well as the owner of one trademark registration for the CIALIS Swirl Logo (Registration Number 1057012). The Panel has reviewed the early media coverage of the Complainant's products and has satisfied itself that there had been a decision to use the CIALIS trademark to identify a pharmaceutical product which was made public in July 2001. In total, the CIALIS mark is the subject of fifteen pending applications and the Complainant owns one hundred and sixty-two registrations for the CIALIS mark. The Panel has seen some of the certificates of registration for the CIALIS mark which covers one hundred and seventeen countries.
The Complainant had through its predecessor in interest registered the <cialis.com> domain name on August 10, 1999.
4.2. The Complainant had submitted that prior UDRP panels had decided that the CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use (citing Lilly ICOS LLC v. Clarkepharma Co., WIPO Case No. D2007-0447). The Complainant also submitted that an invented word which has acquired a high degree of distinctiveness is deemed to be a highly distinctive mark (Telstra Corporation Limited v. Telsra com /Telecomunicaciones Serafin Rodriguez y Asociados, WIPO Case No. D2003-0247).
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Name is confusingly similar to a trademark in which it holds rights for the following reasons:
(i) The addition of a random number does not prevent a finding of confusing similarity. It referred to an earlier decision in Lilly ICOS LLC v. BM Marketing, WIPO Case No. D2006-0473, which decided that the addition of the number "7" to the Complainant's CIALIS mark did not eliminate the confusing similarity between the disputed domain name and the Complainant's mark. The Complainant further relied upon the decision of Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, which decided that the addition of the numbers "2," "4" and "7" had no impact on whether the disputed domain names were confusingly similar to the CIALIS trademark).
(ii) The Complainant urged the Panel to note that in the present case, the Respondent's mere addition of the number "36" to the Domain Name also does not negate the distinctiveness of the Complainant's CIALIS mark.
(iii) The Complainant further submitted cases to rely upon the principle that when a domain name incorporates a distinctive mark in its entirety, that would create sufficient similarity between a mark and a domain name to render the domain name confusingly similar (Lilly ICOS LLC v. Clarkepharma Co., supra).
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
(i) The Respondent is using the Domain Name in furtherance of fraud and deception as it had no rights or legitimate interests in the Domain Name. It alleged that the website associated with the Domain Name appeared to be a "cloned" copy of material displayed on websites operated by or associated with the Complainant.
(ii) The Respondent has copied, without authorization, an anti-counterfeit ad from the Complainant's website, “www.lilly.com.tw”. The Respondent had also incorporated content regarding the Complainant's disease awareness program with which the Complainant partners with the Taiwanese Association of Andrology ("TAA"). The website claimed to be the official website for the Complainant's Taiwanese Affiliate. Neither the Respondent nor the Domain Name is affiliated with, sponsored by or endorsed by the Complainant. By operating the website associated with the Domain Name, the Respondent is illegally and fraudulently impersonating the Complainant as part of some fraud or deception upon the public and that this deception had already confused the public and the DOH. On or about April 14, 2010, the Complainant had to reply to a complaint letter from the DOH who had demanded that the site associated with the Domain Name to be removed as the site was not permitted in Taiwan. The Complainant had to advise the DOH that the site associated with the Domain Name was not affiliated with the Complainant in any manner.
(iii) The Complainant makes the point that the Domain Name links to a website that includes the ability to purchase unauthorized versions of the Complainant’s products and/or counterfeit reproductions of the Complainant’s products, and that these details, reviews, and advice related to the Complainant’s products, would confuse consumers as to the ownership of the CIALIS mark as well as to the source of products bearing the CIALIS mark. The Complainant submitted that 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.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) The Respondent is fraudulently impersonating the Complainant by creating a counterfeit website that claims to be an official Taiwanese site of the Complainant. The Domain Name intentionally deceives Internet users as to its ownership and trades off the valuable goodwill established by the Complainant in its CIALIS mark.
(ii) By using the Domain Name, it is conceivable that the Respondent may attempt to use this website in the future to advertise and sell counterfeit CIALIS products. Such use of the website is potentially harmful to the health of many unsuspecting consumers who may purchase 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 drugs that have been approved by the United States Food and Drug Administration ("FDA") or other health authorities around the world.
The Complainant requests the Panel to order that the Domain Name <36cialis.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. The Panel finds that the proceeding has been conducted in accordance with the Rules and the Policy. The Panel finds that the Respondent has received appropriate notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has employed reasonably available means to notify the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.2 The Panel has reviewed the Complaint together with its annexes and, in light of this material, the Panel finds as set out below.
6.3 This Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel deciding the dispute based upon the Complaint.
6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
6.5 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to submit a response, a panel may draw negative inferences from that respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
6.6 Where the respondent chooses not to present any such evidence to dispute the claims of the complainant, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the factual claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See Caterpillar Inc. V. Spiral Matrix/ Kentech, Inc.,/Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808.)
A. Identical or Confusingly Similar
6.7 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.8 In line with such provision, the Complainant must prove two limbs, i.e., it enjoys the trademark right; and the Domain Name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.9 The Complainant has provided proof as to its registered trademark rights in CIALIS. Given this, the Panel has little difficulty in concluding that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the number “36” does not dispel confusing similarity with the Complainant’s protected CIALIS mark.
6.10 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.11 At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the name of the Complainant with a view to attracting Internet users to the Respondent’s website, where it offers the same or similar services as those offered by the Complainant. The Panel accepts here that such activity does not provide the Respondent with a legitimate interest in the Domain Name.
6.12 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name.
6.13 Paragraph 4(c) of the Policy provides examples of circumstances that shall demonstrate rights or legitimate interests to a disputed domain name for purposes of paragraph 4(a)(ii). However, it is the prevailing consensus view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent is deemed to have no rights or legitimate interests in the domain name.
6.14 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [c]omplainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001)
6.15 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent has made a legitimate noncommercial or fair use of the Domain Name. The Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services but instead has assertedly sold unauthorised or counterfeit products of the Complainant. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name which is confusingly similar to the Complainant’s mark which showing has remained unrebutted.
6.16 Under the current record, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
6.17 The Panel accepts the Complainant’s contention that the Respondent registered the Domain Name with the knowledge of the Complainant’s business and its use of the CIALIS trademark. This is inherently probable in the view of the fact that the Respondent only registered the Domain Name on March 16, 2010 after the Complainant had had many years of registration and use of the CIALIS trademark and in view of the subsequent use of the Domain Name.
6.18 Given this finding, the Panel also infers and accepts the Complainant’s undisputed contention that the Respondent registered the Domain Name with a view to diverting Internet users with an interest in the CIALIS products to its website for its own commercial gain.
6.19 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of the website.
6.20 Given that the Respondent has failed to show (for the reasons set out under the heading of legitimate interests above) that it was using the Domain Name exclusively to deal in genuine the CIALIS products and has also failed to disclose on the site any relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.21 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. Considering the Complainant has established all three elements of the Policy, the Panel finds in favour of the Complainant.
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 <36cialis.com> to be transferred to the Complainant.
Dr. Colin Yee Cheng Ong
Dated: September 14, 2010