WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. URDMC LLC
Case No. D2011-0715
1. The Parties
Complainant is Eli Lilly and Company, Indianapolis, Indiana, United States of America, represented by Baker & Daniels, United States of America.
Respondent is URDMC LLC, Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lilycares.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2011. On April 26, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On April 27, 2011, Fabulous.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 April 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. Respondent did not submit any response, but the Center received email correspondence referenced below from a third-party purporting to act on behalf of a receiver appointed to administer the affairs of Respondent, requesting that the administrative proceeding be stayed during pendency of the receivership.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 8, 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.
In response to an email communication with attached documents of May 4, 2011 from a Mr. Cox, not a named party to the dispute, referencing a lawsuit that had been filed in the United States District Court of the Northern District of Texas, the Center informed him that the Center’s practice was not to engage in communication with third parties concerning ongoing UDRP disputes. Further, as he had not provided evidence of the relationship to Respondent on the matter, it would be a matter for the respective administrative panel in accordance with paragraph 18 of the UDRP Rules. The communications from Mr. Cox were included in the record of the proceedings transmitted to the Panel.
The Panel reviewed the documents transmitted by Mr. Cox and issued Administrative Procedural Order No. 1 on June 10, 2011, providing:
The Panel appointed in this matter is in receipt of correspondence and documents from Mr. Joshua Cox asserting he is an attorney retained by the Receiver (Jeffrey Baron) appointed in a federal district court proceeding, Netsphere v. Ondova, case no. 3:09-cv-0988, pending in the US District Court for the Northern District of Texas. The Receiver Order and Receiver Clarification Order concern, inter alia, the assets of Quantec, LLC. Mr. Cox has requested that this administrative proceeding be stayed during pendency of the receivership.
Mr. Cox asserts that Quantec, LLC is registrant-in-fact of the disputed domain name <lilycares.com>. In Mr. Cox’s letter of March 11, 2011 to counsel for Complainant, Stephanie Gumm, he proposed that Complainant might be interested in purchasing the disputed domain name.
The correspondence from Mr. Cox does not include evidence supporting the asserted ownership by Quantec, LLC of registration of the disputed domain name. The correspondence from Mr. Cox does not include evidence of his appointment by the named Receiver.
Paragraph 18(a) of the Rules for Uniform Domain Name Dispute Resolution Policy accord to the Panel discretion to make a determination whether a proceeding should be suspended or terminated during the pendency of litigation involving a domain name dispute.
On the basis of the information so far provided by Mr. Cox, the Panel would not suspend this administrative proceeding. However, in order to clarify matters, the Panel invites Mr. Cox to submit satisfactory evidence of his appointment by the named Receiver in the aforesaid litigation, and satisfactory evidence that Quantec, LLC is current registrant of the disputed domain name. Mr. Cox shall transmit such evidence by email to the Center, which shall forward it to the Panel and Complainant. Mr. Cox has a period of five (5) calendar days from the date of transmittal of this Administrative Order to provide the information.
Following receipt of a responsive submission from Mr. Cox, Complainant shall have a period of five (5) calendar days to address whether, in its view, this administrative proceeding should be suspended or terminated. The Parties are reminded that direct communication with the Panel is not permitted.
The Panel issued Administrative Procedural Order No. 2 on June 21, 2011, providing:
Administrative Panel Procedural Order No. 1 was transmitted by the Center on June 10, 2011. That order provided Respondent and Mr. Joshua Cox five (5) calendar days from the date of transmittal to provide certain information. The Center has transmitted to the Panel an email dated June 21, 2011 received from Mr. Cox that attaches certain documents. Because the communication from Mr. Cox was not transmitted within the time period allotted by Administrative Panel Procedural Order No.1, the Panel does not accept this supplemental submission.
The Panel will transmit to the Center a determination in this proceeding within two weeks of the date of this order. Complainant is welcome to request the suspension or termination of this proceeding should it wish to do so.
The third-party alleging representing a receiver has failed to substantiate facts represented in his correspondence with the Center and Complainant. Without making any determination regarding the conclusions that might be drawn by the Panel had such facts been substantiated, the Panel does not take further account of correspondence from that third party in rendering its determination.
4. Factual Background
Complainant has registered the word trademark LILLY on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1,226,434, dated February 8, 1983, in international class (IC) 5, covering "medicines, pharmaceutical preparations and drugs", claiming date of first use and first use in commerce of February 1, 1895, and; has registered the word and design trademark LILLY (cursive script within rectangular box), registration number 1,318,867, dated February 12, 1985 in IC 5, covering "house mark for a full line of pharmaceutical preparations", claiming date of first use and first use in commerce of February 1, 1895. Complainant has submitted evidence of registration of the LILLY trademark in a substantial number of countries other than the United States of America.
Complainant is a major originator pharmaceutical company based in the United States of America that develops, markets and sells its products in numerous countries. Complainant has been in business in the United States of America since the late 1800s. Although Complainant's pharmaceutical products typically are sold under individual trademark names (e.g., Prozac, Zyprexa and Cialis), the product packaging and promotional materials for such products often includes the LILLY trademark. Based on the wide registration and global usage of the LILLY trademark, the volume of sales of Complainant's products and the extent of advertising and promotion of the LILLY brand, it is reasonable to conclude that the LILLY trademark is well-known among persons familiar with the pharmaceutical industry.
Complainant operates a patient assistance program in the United States of America intended to enable eligible individuals to receive its medications free of charge. That program is operated by the Lilly Cares Foundation, Inc. and is referred to as Lilly Cares. According to Complainant, "[i]n 2008, the Lilly Cares program assisted more than 142,000 patients and distributed medications manufactured by Complainant valued at over $185 million to eligible patients. Complainant has used the Lilly Cares name since at least as early as 2004. As of the date of this administrative proceeding, Complainant's registered domain name <lillycares.com> redirects Internet users to a website headed "Lilly TruAssist" that provides information concerning a number of Complainant's assistance programs.1 Navigating within that website brings Internet users to an internal webpage on which the Lilly Cares program is described. Complainant registered the <lillycares.com> domain name on January 7, 2002, and claims to have operated a website associated with that domain name since as early as April 2004. As of the date of this administrative proceeding, Complainant's main corporate website at <lilly.com> refers to the Lilly Foundation, but does not appear to refer to Lilly Cares directly.2 Complainant has provided three examples of news reports that make some reference to the Lilly Cares program.
According to the Fabulous.com verification report, Respondent is registrant of the disputed domain name. According to a Fabulous.com WhoIs report generated by the Center, the record of registration of the disputed domain name was created on February 4, 2005.
Respondent has used the disputed domain name to direct Internet users to a standard format pay-per-click link farm parking page. That parking page generates links to Complainant's Lilly Cares Program and Lilly Cares Foundation. It also generates links to third parties including fee-based prescription medicine support programs not associated with Complainant. Clicking through on Lilly Cares on Respondent’s parking page generates additional links, including to a prescription assistance program at “www.myrxadvocates.com” which offers fee-based third-party services for individuals seeking low-cost pharmaceuticals.
The registration agreement in effect between Respondent and Fabulous.com subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it has rights in the trademarks LILLY and LILLY CARES based on use in commerce in the United States and other countries and, with respect to LILLY, as evidenced by registration at the USPTO.
Complainant contends that each of the LILLY and LILLY CARES trademarks is well-known.
Complainant argues that the disputed domain name is confusingly similar to its LILLY and LILLY CARES trademarks.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is using the disputed domain name in connection with a pay-per-click parking page for commercial gain; (2) Respondent’s pay-per-click parking page is promoting products or services not associated with Complainant, and; (3) Respondent has not been authorized to use Complainant's trademarks in the disputed domain name.
Complainant alleges that Respondent registered and has used the disputed domain name in bad faith because it is using Complainant's well-known trademarks for commercial gain to attract Internet users to its pay-per-click website by creating confusion as to Complainant as source, sponsor, affiliate or endorser of Respondent's website. Moreover, Complainant argues that "typo-squatting" is recognized as a form of bad faith registration and use. Complainant finally argues that Respondent's website presents a risk to the health of Internet users who may mistakenly receive services other than from Complainant.
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings by means set forth in the Rules. There is no indication in the record of communications transmitted by the Center to the Panel that any difficulties were encountered in the notification process. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s 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 respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of the registration of the trademark LILLY on the Principal Register of the USPTO and of use of that trademark in commerce in the United States of America and other countries. The Panel determines that Complainant has rights in the trademark LILLY.
Complainant has provided evidence sufficient to establish that the trademark LILLY is well-known among persons in the United States familiar with the pharmaceutical industry (see Factual Background, supra).
Complainant has provided evidence of use in commerce in the United States of the combination term LILLY CARES. Although Complainant has referred to a substantial number of participants in the LILLY CARES program and substantial dollar value of pharmaceutical products provided without charge under that program, the evidence provided concerning actual use of the term as a trademark or service mark is limited. At present, Internet reference to the Lilly Cares program is provided within a website denominated “TruAssist", and the Lilly Cares program as such is not referred to on Complainant's main corporate web page. Nonetheless, because Complainant's LILLY trademark is well-known and distinctive, and because LILLY CARES combines that well-known trademark with a term the public would reasonably associate with a corporate contribution program, the Panel considers that Complainant has established common law or unregistered trademark rights in the LILLY CARES combination in the United States. This is based on the strength of the dominant term “lilly”. The Panel does not consider the combination LILLY CARES to be well-known.
The disputed domain name, <lilycares.com> represents a typographical variation on the LILLY and LILLY CARES trademarks. A single letter "l" is missing from the term LILLY in the disputed domain name. Although the term "lily" refers to a flower in the English language,3 there is no common meaning associated with the combination "lily cares". There is little room for the possibility that Respondent registered <lilycares.com> to refer to a flower evidencing empathetic characteristics. The disputed domain name is nearly identical to Complainant's LILLY CARES trademark in visual impression and sound, and constitutes a likely Internet user misspelling of Complainant's trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant's LILLY CARES trademark within the meaning of the Policy.
Complainant has established that it has rights in the LILLY and LILLY CARES trademarks and that the disputed domain name is confusingly similar to the LILLY CARES trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent has not made bona fide use of the disputed domain name prior to notice of the dispute, because Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, and because Respondent has not been authorized by Complainant to use its trademark in the disputed domain name. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent’s sole use of the disputed domain name has been in connection with a link farm parking page that advertises goods and services of Complainant and third parties, including goods and services of third parties that are competitive with those of Complainant. Operating a link farm parking page using a trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests. See, e.g., Development Credit Bank Limited v. Direct Privacy ID ED191, WIPO Case No. D2011-0786; Editorial Armonia, S.A, de C.V. v. Cagri Sadik Bayram, WIPO Case No. D2010-1963; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v.Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.
Respondent has provided no justification for its registration and use of the disputed domain name that might establish rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent registered and has used a minor typographical variation of Complainant's LILLY and LILLY CARES trademarks in the disputed domain name to direct Internet users to a pay-per-click parking page that includes links to parties offering goods and services competitive with those of Complainant's patient assistance program. Although Complainant presumably does not operate its patient assistance program for a direct profit, the program likely promotes Complainant's corporate image and thereby serves a commercial purpose. Internet users entering a typographical variation of Complainant's trademarks in a web browser and expecting to be directed to its patient assistance program are instead directed to Respondent's pay-per-click parking page with links to third-party for-profit service providers and pharmaceutical vendors. Respondent has intentionally used Complainant's trademarks in the disputed domain name for commercial gain to create Internet user confusion regarding Complainant as source, sponsor, affiliate or endorser of Respondent’s link farm website.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <lilycares.com>, be transferred to Complainant.
Frederick M. Abbott
Dated: July 6, 2011
1 Panel visit of July 6, 2011.
3 See http://www.merriam-webster.com/dictionary/lily.