WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Texas International Property Associates
Case No. D2010-1985
1. The Parties
Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America, represented by Baker & Daniels, United States of America.
Respondent is Texas International Property Associates of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <zigris.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 19, 2010, the Center transmitted by email to Compana LLC/Budgetnames.com a request for registrar verification in connection with the disputed domain name. On November 20 and 23, 2010, Compana LLC/Budgetnames.com 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 Respondent of the Complaint, and the proceedings commenced on November 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 14, 2010.
The Center appointed Timothy D. Casey as the sole panelist in this matter on January 24, 2011. 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.
On or about December 5, 2010, as a result of business issues with Compana LLC/Budgetnames.com, the Center became aware that the publicly available InterNic information, indicated that the domain name was now registered with Fabulous.com and was no longer registered with Compana LLC/Budgetnames.com. On December 6, 2010, Fabulous.com confirmed that it had become the Registrar of Record for the disputed domain name.1
4. Factual Background
Complainant has used the trademark XIGRIS since August 5, 1998 for a pharmaceutical preparation, namely, an antithrombotic agent, an anti-inflammatory agent, an anticoagulant agent, and a pro-fibrinolytic agent. The Xigris mark was registered with the United States Patent and Trademark Office on May 28, 2002, Reg. No. 2,574,061. In addition, Complainant owns 73 registrations for the Xigris mark covering more than 70 countries. The XIGRIS brand product was approved by the U.S. Food and Drug Administration (FDA) in November 2001. In the year 2005 alone, sales of the Xigris pharmaceutical preparation were USD 214.6 million dollars.
Complainant owns and has registered the domain name <xigris.com> through which users can obtain information as to the XIGRIS product sold by Complainant. The <xigris.com> domain name was created on May 9, 2001.
Based on the evidence submitted, Respondent does not seem to own any trademarks. The disputed domain name was registered on February 19, 2005. The disputed domain name resolves to a website including a number of web pages, with each of these web pages including a listing of links to third party commercial websites. Numerous domain name dispute complaints have been filed in the past against Respondent.
On or about January 27, 2011, the Center received a letter from an individual, Mr. Cox, notifying the Center of a pending United States District for the Northern District of Texas lawsuit styled Netsphere v. Ondova, Case Number 3:09-cv-0988 (the “Lawsuit”), that allegedly involved the “owner of the above-referenced domain name” along with a copy of a Receivership Order (the “Order”) and a Stay ordered by the arbitrator in an unrelated NAF administrative proceeding (the “Stay”). According to Mr. Cox, the Order of the court stays all other persons and entities aside from the Receiver “from taking any action to establish or enforce any claim, right, or interest for, against, on behalf of, it, or in the name of, the Receivership Party, any of their partnerships, assets, documents, or the Receiver or the Receiver’s duly authorized agents acting in their capacities as such, including, but not limited to, the following actions: 1. Commencing, prosecuting, continuing, entering, or enforcing any suit or proceeding, except that such actions may be filed to toll any applicable statute of limitations.”
On or about January 28, 2011, the Center received further correspondence from Mr. Cox providing a copy of an Order Granting the Receiver’s Motion to Clarify the Receiver Order in the above Lawsuit (the “Clarifying Order”).
On or about January 29, 2011, in response to the Center’s request that Mr. Cox identify himself and his relationship to the Parties, the Center received an email from Mr. Cox identifying himself as an attorney representing the “owners of the domains at issue” and including an attached copy of a Notice of Appearance in the Lawsuit by Mr. Cox, representing Quantec, LLC and Novo Point, LLC.
On or about February 1, 2011, the Center received an email from Complainant’s attorney, indicating that neither the Lawsuit, the Order, the Stay nor the Clarifying Order made any reference to Respondent herein, and indicating that Complainant’s counsel had attempted to contact Mr. Cox requesting clarification of his relationship with Respondent, to which there has been no reply.
5. Parties’ Contentions
Complainant contends that the XIGRIS mark is an invented word that has a high degree of individuality, inherent distinctiveness, and no common colloquial use. Complainant contends that a domain name which differs slightly from a trademark has a greater tendency to be confusingly similar where that trademark is highly distinctive. Complainant further contends that the term “zigris” is substantially similar to the mark “XIGRIS” in its visual representation. Complainant lastly contends that the removal of the letter “x” and the addition of the letter “z” is nearly a phonetic equivalent for the letter “x”.
Complainant contends that the act of typo-squatting a domain name depends upon consumer confusion or mistake, such that consumers who are not sure how to spell a name or make common typing or spelling errors will mistakenly enter the domain name instead of the mark. Complainant contends that in the present case the term “zigris” is arguably a common misspelling of the XIGRIS mark, particularly because the letters “z” and “x” are located next to each other on a standard keyboard.
Complainant contends that the website at the disputed domain name is a page providing several links to commercial websites, including websites that advertise and sell products that allegedly compete with a number of Complainant’s products. Complainant argues that by linking consumers to the sponsored listing websites, Respondent is likely recognizing a financial gain, by likely receiving a payment each time it links a consumer to one of the third-party commercial websites or by using the disputed domain name in connection with a pay-per-click link website. Complainant has not given Respondent permission, authorization, consent or license to use its XIGRIS mark. Complainant contends that the XIGRIS mark is well-known due to the extensive marketing and advertisement of Xigris pharmaceutical product. Complainant lastly contends that the disputed domain name resolves to a website enabling Respondent to cash in on the strength of the XIGRIS mark and the reputation of the product with which the mark is associated.
As indicated in the factual background, Complainant contends that Respondent has a history of engaging in abusive domain name registrations. In addition, Complainant contends previous panels have found the domain names registered by Respondent to have been registered and used in bad faith.
Complainant contends that Respondent’s use of a confusingly similar variation of the XIGRIS mark in the disputed domain name is potentially harmful to the health of unsuspecting consumers, who may purchase unlawfully-sold pharmaceutical products advertised through Respondent’s website under the mistaken impression that they are dealing with Complainant. The XIGRIS product is only available on a physician’s prescription and is manufactured, labeled, and sold in strict compliance with the FDA and other health authority laws and regulations.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent is in default and did not reply to Complainant’s contentions.
6. Discussion and Findings
Before addressing the Panel’s findings under paragraph 4(a) of the Policy, the Panel will address the relevancy and/or effect of the Lawsuit. As correctly noted by Complainant’s counsel, the Lawsuit does not list Respondent, Texas International Property Associates, as a party to the Lawsuit nor does it provide any indication that any of the parties to the Lawsuit own or control Respondent. While Mr. Cox has stated that the disputed domain name is owned by the Receiver in the Lawsuit, there is no evidence in the document provided by Mr. Cox to support such a statement. For example, while the Stay does indicate that Texas International Property Associates is a respondent in an administrative proceeding before the NAF involving a different domain name than the disputed domain name, the Stay does not specify the pending federal litigation related to that administrative proceeding and provides no basis for connecting the respondent in that administrative proceeding with the present administrative proceeding. Further, Mr. Cox has not replied, or no reply was forwarded to the Center, to Complainant’s alleged attempt to clarify the relationship between the parties to the Lawsuit and Respondent. Accordingly, the Panel finds the Lawsuit to be irrelevant to this administrative proceeding and that the Order is without effect. Even if Respondent was identified as a party in the Lawsuit and the disputed domain name was part of the estate in question, the Panel would still have questions about whether the administrative proceeding is subject to the jurisdiction of the court in that Lawsuit, but under the circumstances, there is no need to attempt to answer those questions.
In view of the default and the absence of any reply to the Complaint by Respondent, the discussion and findings will be based upon Complainant’s contentions and any reasonable position that can be attributable to Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before Complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
As noted above, Complainant owns a registered trademark in the XIGRIS mark in over 70 countries. The XIGRIS mark was in use prior to registration of the disputed domain name. The fact that the disputed domain name has replaced the letter “x” with the letter “z” is of no merit, as the use of the letter “x” and “z” is phonetically equivalent in the English language when either letter is used as the first letter of a word. Specifically, the terms “Xigris” and “Zigris” in the English language are phonetically equivalent. The Panel also agrees with Complainant that due to the fact that the letters “Z” and “X” are located next to each other on a standard keyboard, combined with the phonetical equivalence of the letters “X” and “Z”, the use of the term “Zigris” seems to be an attempt to confuse consumers who make common typing or spelling errors via typo-squatting. As a result, “Xigris” and “Zigris” are confusingly similar.
Also, the fact that Respondent’s website includes specific references to “Sepsis,” “Drug Xigris,” “Xigris Therapy,” and “Anticoagulation,” indicate to the Panel that Respondent attempted to create a likelihood of confusion between the terms “Xigris” and “Zigris.” Nothing in Respondent’s website attempts to clarify this confusing similarity. Finally, the Panel agrees with Complainant that the XIGRIS mark is distinctive and has no meaning other than to function as the XIGRIS mark.
The Panel finds the disputed domain name to be confusingly similar to the XIGRIS mark and that this element of the Policy has been met by Complainant.
B. Rights or Legitimate Interests
Respondent does not allege it has any rights or legitimate interests in the disputed domain name or any parts thereof. As indicated in the previous element of the Policy, the disputed domain name used by Respondent is confusingly similar to the XIGRIS mark. Respondent has not been authorized by Complainant to utilize the XIGRIS mark in the website associated with the disputed domain name. Respondent is not personally identified with, or commonly known by, the term “Xigris” in any fashion. The website associated with the disputed domain name appears to exist for the primary purpose of diverting legitimate consumers of Xigris to Respondent’s website and consequently to divert such consumers to third-party commercial websites via the links provided in Respondent’s website. Respondent’s use is clearly commercial and does not appear to constitute any form of fair use.
The Panel finds that Respondent does not have any rights or legitimate interest in the disputed domain name and this element of the Policy to be met by Complainant.
C. Registered and Used in Bad Faith
It is highly unlikely that Respondent was not aware of the XIGRIS mark, which has been in constructive use since 1998 and federally registered in the United States since 2002, prior to registering the disputed domain name. Respondent has used the disputed domain name for the bad faith purpose of driving commercial business to its website which presents users with a number of “sponsored listings,” which subsequently redirect the user to third-party commercial websites. Based on the fact that Respondent’s website includes these sponsored listings, the Panel agrees with Complainant that Respondent is likely deriving a financial benefit from posting the sponsored listings, either from the number of Internet users that visit Respondent’s website or by the number of Internet users that are redirected from Respondent’s website to one of the third-party commercial websites.
As indicated above, the disputed domain name is confusingly similar to the XIGRIS mark, with the disputed domain name creating confusion by using a domain name that is phonetically equivalent to the XIGRIS mark. The use of the XIGRIS mark throughout Respondent’s website strengthens the association between the terms “Xigris” and “Zigris”. Finally, the history of Respondent of registering domain names in bad faith reinforces the Panel’s finding that, in the present case, Respondent registered and used the disputed domain name in bad faith. This element of the Policy has been met by 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 disputed domain name, <zigris.com>, be transferred to Complainant.
Timothy D. Casey
Dated: February 7, 2011
1 During the course of its inquiry as to the change of registrars, it came to the Center’s attention that Compana LLC was no longer an ICANN accredited registrar. The Center has received independent verification from Fabulous.com that it was acting as the concerned Registrar in this matter. Fabulous.com has confirmed that the registrant details for the disputed domain name have been restored to those previously confirmed by Compana LLC, and that the domain name will remain under registrar lock throughout the remainder of these proceedings.