WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Ryma Nynyore / Domain Directors Pty. Ltd.
Case No. D2011-0478
1. The Parties
The Complainant is Eli Lilly and Company of Indiana, United States of America, represented by Baker & Daniels of United States of America.
The Respondent is Ryma Nynyore of Tel Aviv, Israel / Domain Directors Pty. Ltd of Melbourne, Australia..
2. The Domain Name and Registrar
The disputed domain name <thegeneric-cialis.net> is registered with Instra Corporation Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2011. On March 15, 2011, the Center transmitted by email to Instra Corporation Pty Ltd.. a request for registrar verification in connection with the disputed domain name. On March 17, 2011, Instra Corporation Pty Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 18, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on March 18, 2011.
The Center verified that the Complaint amended 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 proceedings commenced on March 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2011. The Center has received email communications from the Respondent on March 19, 2011 and March 28, 2011. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on April 12, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on April 18, 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.
Having regard to the evidence that on March 18. 2011, the Respondent Ryma Nynyore confirmed by email to the Complainant: “I am the owner of thegeneric-cialis.net. My registrar instra.com informed me that you have started some dispute on my domain name” the Panel finds that the Respondent has received appropriate notice of this proceeding and that the Center has discharged its responsibility under paragraph 2(a) of the Rules.
4. Factual Background
The Complainant operates a pharmaceuticals business with operations in more than 100 countries. The Complainant holds 167 registrations for the trademark CIALIS in 122 countries including the United States of America and Australia, which it uses to designate a pharmaceutical and medicinal preparation or preparations for prevention of sexual dysfunction. The Australian and United States registrations have been in effect since 1999. Approximate global revenue for sales of CIALIS brand product in 2010 was USD1.6 billion. The Respondent’s predecessor in interest registered the domain name <cialis.com> on August 10, 1999.
The Respondent registered the domain name <thegeneric-cialis.net> (the “Disputed Domain Name”) on August 8, 2006 which has resolved to a website operated by the Complainant (and its predecessors in interest) since June 2001.
The Respondent uses the Disputed Domain Name to advertise for sale generic versions of Cialis product.
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark CIALIS in various countries as prima facie evidence of ownership.
The Complainant submits that the mark CIALIS is well-known a highly distinctive invented word (citing Telstra Corporation Limited v Telsra/Telecomunicaciones Serafin Rodriguez y Asociados, WIPO Case No. D2003-0247). The Complainant submits that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <thegeneric-cialis.net>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the CIALIS trademark (citing Lilly Icos LLC v. Jay Kim, WIPO Case No. D2004-0891) and that the similarity is not removed by the addition of the words “the” and “generic”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to an online pharmacy advertising and offering for sale generic versions of the Complainant’s CIALIS branded product for the treatment of erectile dysfunction in addition to products bearing the brands Viagra and Levitra which are arguably competitors to the Complainant’s product and thereby attempting illegitimately to trade for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark CIALIS.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3), as by using the Complainant’s CIALIS mark in the Disputed Domain Name, the Respondent is intentionally attempting for commercial purpose to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. The Complainant further contends that the alleged conduct 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 Respondent did not file a substantive reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark CIALIS in Australia, the United States and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark CIALIS in Australia pursuant to Australian Trade mark Registration No. 814577. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country: (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark CIALIS.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the CIALIS trademark, the Panel observes that the Disputed Domain Name comprises (a) the definite article “the” (b) conjoined with the word “generic” (c) followed by a hyphen (d) followed by an exact reproduction of the Complainant’s trademark and (e) the top level domain suffix “.com”.
It is well established that the top level designation used as part of a domain name should be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The word “generic” is descriptive in the drug industry (see Lilly ICOS LLC v. Kevin Adelman, WIPO Case No. D2006-0305). The relevant comparison to be made is with the second level portion of the Disputed Domain Name: “thegeneric-cialis”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, the definite article, a descriptive word and a hyphen: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
This Panel finds that the additional elements, including the word “generic”, after the Complainant’s registered trademark do not serve to adequately distinguish the Disputed Domain Name which therefore remains confusingly similar to the registered trademark: (see Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750; Lilly ICOS LLC v. Emilia Garcia, WIPO Case No. D2005-0031; Lilly Icos LLC v. Silagra World, WIPO Case No. D2005-0211; Eli Lilly and Company v. media/broadcasting, Lee Shung, WIPO Case No. D2010-1079).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the CIALIS trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.)
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v.Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is legitimate vis-a-vis the Policy only if the disputed domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see National Trust for Historic Preservation v. Barry Preston, supra; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview of WIPO Panel Decisions, Second Edition, paragraph 2.2)
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a webpage advertising and offering for sale products in connection and competition with the Complainant’s mark and thereby attempting illegitimately to trade “for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark CIALIS”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant provided a statutory declaration that the use of its trade mark is unlicensed and evidence that typing in the Disputed Domain Name diverts traffic to a website advertising for sale pharmaceutical and medicinal preparations for sexual dysfunction, including competitor brands Viagra and Levitra.
In Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101, the panel stated: “While mere resale of genuine branded products might give rise to a legitimate debate over whether the use of the mark was ‘nominative’, any such contention is undermined by Respondent’s sale of products directly competing with Complainant’s through the same web site. This principle may have particular weight in the pharmaceutical context, where risks to the public may be enhanced by the lack of regulatory safeguards assuring the safety or efficacy of the purported “generic” version of Complainant’s CIALIS brand product, thus further undermining any argument (had Respondent made such an argument, which it did not) that it was making a bona fide offering of goods. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750.”
In Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, the panel found that “the Respondent is making a non-legitimate commercial use of the disputed domain names that misleadingly diverts consumers (for the reason) because the Respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the Respondent was opportunistically using Complainant’s mark in order to attract Internet users to its website.”
The Panel finds for the Complainant on the second element of the Policy
C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. evidence of registration and use in bad faith. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
i. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
ii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iii. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) of the Policy are not exhaustive of all circumstances from which such bad faith may be found; (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
On March 28, 2011, the Center received an email from the Respondent’s email address stating as follows ”so I do not understand what I need to do now(.) I offered what I can do in order not to hurt trademark of lilly what is their answer?”. It follows that the Respondent had likely no reasonable grounds to attest under paragraph 6 of the Instra Corporation’s Terms and Conditions that its website “does not infringe the intellectual property rights of any person”. The lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademark, may support a finding of bad faith: (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The Respondent’s use of the Disputed Domain Name is apparently for domain name monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case, is twofold. On the one hand, the Respondent advertises for sale various products in connection with sexual dysfunction including the brands CIALIS, Viagra and Levitra. On the other hand, through its “affiliate” program, the Respondent also passively collects click through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s Cialis products. Exploitation of the reputation of a trademark to obtain click through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Lilly ICOS LLC v. The Counsel Group LLC, WIPO Case No. D2005-0042; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; and Hoffmann La Roche Inc. v Samuel Teodorek, WIPO Case No. D2007-1814). The obvious danger of consumers being afforded inaccurate, incomplete or misleading information about medical products and the probable diversion of actual sales reinforces the Respondent’s bad faith (see Roche Products Inc. v. Michael Robert, WIPO Case No. D2008-1155; Parrot S.A. v. Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474). The egregious nature of the Respondent’s bad faith is highlighted by evidence that CIALIS is a medication typically available only by prescription (see also Lilli ICOS v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794).
This Panel finds that the Respondent has taken the Complainant’s trademark CIALIS and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <thegeneric-cialis.net> be transferred to the Complainant.
Dated: April 29, 2011