WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Private Whois Service
Case No. D2011-0624
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 Private Whois Service of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain names <cialiserfahrungen.com>, <cialisnebenwirkungen.com>, <cialisohnerezeptkaufen.net>, <generikacialis.com>, and <potenzmittelcialis.com> are registered with Internet.bs Corp. (hereinafter referred to as “disputed Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2011. On April 8, 13, and 15, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed Domain Names and reminders. On April 16, 2011, Internet.bs Corp. 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 proceedings commenced on April 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2011.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on June 1, 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.
4. Factual Background
The Complainant, Eli Lilly and Company, is a corporation organized under the laws of the State of Indiana, with a principle place of business in Indianapolis, Indiana. the Complainant is an internationally well-known pharmaceutical company, which introduced the pharmaceutical product named “Cialis” and registered it first within the United States on June 17, 1999. The mark CIALIS comprises a fully invented word. The decision to use the CIALIS trademark to identify a pharmaceutical product was made public in July 2001. In 2009, worldwide sales of CIALIS brand product increased to USD 1.559 billion dollars and most recently, for the full-year of 2010, worldwide sales were USD 1.669 billion dollars.
The Complainant holds exclusive rights in the CIALIS mark. The Complainant has registered CIALIS mark in a variety of forms. In total, the CIALIS mark is the subject of twelve (12) pending applications and the Complainant owns one hundred and sixty-seven registrations for the CIALIS mark covering one hundred and twenty-two countries.
The Complainant’s activity on the Internet is primarily done through the website accessed by the domain name <cialis.com>, wherein the Complainant advertises and provides information regarding its pharmaceutical product. The <cialis.com> domain name was registered by the Complainant’s predecessor-in-interest on August 10, 1999.
The Complainant learned that the Domain Names <cialiserfahrungen.com>, <cialisnebenwirkungen.com>, <cialisohnerezeptkaufen.net> and <potenzmittelcialis.com> were registered by the Respondent on February 10, 2011 and the Domain Name <generikacialis.com> was registered on February 14, 2011. The Domain Names refer to retail pharmacy websites, operated by the Respondent, wherein pharmaceutical products are offered for sale. This website appears to be legitimate, offers online sale, transport services and serves bilingual customer service (English and German).
5. Parties’ Contentions
The Complainant submitted that the Domain Names <cialiserfahrungen.com>, <cialisnebenwirkungen.com>, <cialisohnerezeptkaufen.net>, <potenzmittelcialis.com> and <generikacialis.com> were confusingly similar to the trademarks and domain name over which the Complainant has rights (CIALIS), since it reproduces entirely the mark CIALIS, followed only by some of the German words or phrases.
Further, the Complainant held that the mere word “cialis” has no particular, generic meaning and is highly distinctive. The reproducing of the Complainant’s trademark in its entirety as the dominant part of the disputed Domain Names is confusingly similar to mark CIALIS, regardless of the added German words or phrases.
Moreover, particular German words or phrases have a generic meaning in German, the German word “Erfahrungen” in English means “experiences”, “Nebenwirkungen” means in English “side effects”, “ohne Rezept kaufen” means in English “purchase without a prescription”, “Potenz Mittel” means in English “potency medium” and “Generika” means in English “generic”. Mere addition to the distinctive mark CIALIS any of the above generic German words or phrase do not prevent the disputed Domain Names from being confusingly similar with the CIALIS mark owned by the Complainant (the Complainant refers to Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794, Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 and,Lilly ICOS LLC v. Anwarul Alam / “- -”, WIPO Case No. D2004-0793.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names since the Complainant did not grant the Respondent any license or other authorization to use its mark in relation to the Domain Names. All of the websites associated with the Domain Names ultimately resolve to a website, which is an online pharmacy advertising and selling so-called “generic” versions of pharmaceutical products for the treatment of erectile dysfunction. Among “generic” version of the Complainant’s CIALIS product, the Respondent offers products which are competitive with the Complainant’s product, such as ‘Viagra’ and ‘Levitra’ and “generic” versions of such products. Furthermore, the Complainant relied on previous UDRP panels who have held that “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.” (eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).
Thirdly, the use of the Domain Names by the Respondent is not made in connection with a bona fide offering of goods or services so as to confer a right or legitimate interest in it as all of the websites resolve to the same online pharmacy operated by the Respondent. However, the websites do not accurately disclose the Respondent’s relationship (or otherwise) with the trademark owner, hence there is no reason to find the disputed Domain Names as being used in good faith.
The Domain Names have been registered in bad faith, for the purpose of attracting Internet users to the Respondent’s website and reaping the unfair benefit of the Complainant’s reputation, by creating a likelihood of confusion between CIALIS trademark and the disputed Domain Names. Media coverage of the CIALIS brand product is dated as early as 2001. The Complainant has extensively marketed and advertised its pharmaceutical product using the CIALIS trademark. In this vein, the Complainant alleged that the Respondent is deliberately trying to gain an unfair benefit on the back of CIALIS mark by using the disputed Domain Names.
Lastly, the Complainant held that the Respondent’s use of the Complainant’s CIALIS mark in the disputed Domain Names is potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold pharmaceutical products advertised through the Respondent’s websites under the misimpression that they are dealing with the Complainant. This is even more alarming since the Complainant’s CIALIS brand 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has proved that the disputed Domain Names are confusingly similar to the trademarks of the Complainant.
The confusing similarity of the disputed Domain Names to the Complainant’s trademarks and service marks is apparent from a simple visual comparison. The disputed Domain Names are a replica of the Complainant’s mark CIALIS, supplemented solely by generic German words or phrases. The phrase “cialis” does not appear to have any generic meaning in any European language, to the contrary it is highly distinctive and innovative and product under this name are advertised worldwide.
All of the disputed Domain Names contain the trademark owned legally by the Complainant. This is sufficient to satisfy the requirement that the disputed Domain Names in question are confusingly similar to a mark in which the Complainant has rights (see also Max Rohr, Inc. v. Puros Dawa HB S.A., WIPO Case No. D2005-0488, wherein the panel found that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”). Additionally the Panel notes in this case, any added German words or phrases do not cure this illegitimate use of the Complainant’s mark CIALIS, neither are they sufficient to establish that the disputed Domain Names are not confusingly similar to the mark CIALIS.
The Panel therefore finds that the disputed Domain Names are confusingly similar to the Complainant’s trademark CIALIS and as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s marks. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed Domain Names or a name corresponding to the disputed Domain Names in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed Domain Names.
Nonetheless, the Respondent was also given the opportunity to challenge the case against him. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the disputed Domain Names.
The Panel therefore infers from the Respondent’s silence and the Complainant’s contentions, supported by a huge number of exhibits, that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the disputed Domain Names.
For the foregoing, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainant is the owner of the trademark comprising of the word CIALIS.
Under paragraph 4(b) (iv) a domain name is considered to be registered in bad faith if a respondent (iv) by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on his website or location.
Based on the evidence submitted by the Complainant, the Panel finds that the disputed Domain Names are being used in bad faith and shares the view of the Complainant that the websites to which the disputed Domain Names refer provide for an online pharmacy, which offers inter alia various drugs which directly compete with the Complainant, are indicative of registration of the disputed Domain Names in bad faith. Such registration is aimed at intentionally attracting for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as well as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and pharmaceutical products advertised for sale on it with the Complainant. The Respondent’s registration of the disputed Domain Names was done with a view to illegitimately taking advantage thereof.
In the absence of evidence to the contrary, the Panel is persuaded that the Respondent knew of, or should have known of the Complainant’s trademark and services at the time the Respondent registered the Domain name, since the registration of the online pharmacy under the disputed Domain Names was done very recently in February 2011, whereas the first trademark registration of CIALIS dates back to June 17, 1999.
As a result, the Panel finds that the disputed Domain Names were registered and are used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <cialiserfahrungen.com>, <cialisnebenwirkungen.com>, <cialisohnerezeptkaufen.net>, <generikacialis.com>, and <potenzmittelcialis.com> be transferred to the Complainant.
Dated: June 8, 2011