WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Andrew Riegel
Case No. D2006-1088
1. The Parties
The Complainant is Lilly ICOS LLC, c/o Bruce W. Longbottom, Eli Lilly and Company, of Indiana, United States of America, represented by Baker & Daniels, United States of America.
The Respondent is Andrew Riegel, of California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <cialisforwomen.com> and <wwcialis.com> are registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2006. On August 27, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain names at issue. On August 31, 2006, Schlund + Partner transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2006.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on October 9, 2006. 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 is a large joint venture which owns the rights to a popular pharmaceutical product marketed and sold under the mark CIALIS. The CIALIS mark was registered with the U.S. Trademark Office on June 10, 2003. The Complainant has more than 130 other registrations in 117 countries for the mark. The Complainant has also been using the <cialis.com> domain name since 1999. The Respondent registered the <cialisforwomen.com> and <wwcialis.com> domain names on January 14, 2006, used to direct Internet users to a website advertising products that compete with the Complainant’s CIALIS product.
5. Parties’ Contentions
1. Respondent’s <cialisforwomen.com> and <wwcialis.com> domain names are confusingly similar to Complainant’s CIALIS mark.
2. Respondent does not have any rights or legitimate interests in the <cialisforwomen.com> and <wwcialis.com> domain names.
3. Respondent registered and used the <cialisforwomen.com> and <wwcialis.com> domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Panel finds that the Complainant’s registration with the USPTO sufficiently establishes the Complainant’s rights in the CIALIS mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum February 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”).
The Respondent’s <cialisforwomen.com> and <wwcialis.com> domain names are confusingly similar to the Complainant’s CIALIS mark as they merely add the “www” and “for women” generic terms to the Complainant’s mark, which is not enough to distinguish the domain names from the mark. See Disney v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”)
The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant’s assertion constitutes a prima facie case for purposes of the Policy and shifts the burden to the Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy. The Respondent had the opportunity to present the Panel with evidence and arguments in support of its rights or legitimate interests in the <cialisforwomen.com> and <wwcialis.com> domain names by submitting a Response. The Respondent’s failure to do so suggests to the Panel that Respondent lacks those rights or legitimate interests. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum December 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”) Nonetheless, the Panel will evaluate the available evidence to determine whether the Respondent has rights or legitimate interests as outlined in paragraph 4(c) of the Policy.
The Respondent is using the <cialisforwomen.com> and <wwcialis.com> domain names to offer competing products, by hosting a website composed of links to other third-party websites and a generic Internet search engine, many of which also appear to offer products in direct competition with the Complainant. The Respondent no doubt receives pay-per-click referral fees when Internet users click on these links. Because the Respondent is profiting from the links posted at its website, it is not using the disputed domain names in connection with a noncommercial or fair use as contemplated by paragraph4(c)(iii) of the Policy. Because the Respondent is hosting links to websites in direct competition with the Complainant, the Respondent is not involved in a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum December 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum September 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to the Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Additionally, there is no available evidence that the Respondent is commonly known by the <cialisforwomen.com> and <wwcialis.com> domain names. The Complainant states that it has not authorized the Respondent to use the Complainant’s marks in a domain name. See Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Respondent is using the <cialisforwomen.com> and <wwcialis.com> domain names to redirect Internet users to the Respondent’s website, which features numerous links to third-party websites offering products in competition with the Complainant. Internet users seeking the Complainant’s genuine products could unwittingly end up at the site of a competitor of the Complainant. The Panel finds that such use disrupts the Complainant’s business and is evidence of bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum November 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to paragraph 4(b)(iii) [and] (iv) of the Policy.”); see also Puckett, Individually v. Miller, WIPO Case No. D2000-0297 (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of paragraph 4(b)(iii) of the Policy).
The Respondent is presumably profiting from this by receiving the pay-per-click fees generated by the links to third-party websites. The Panel finds that such use is evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum December 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum November 19, 2003) (“Respondent’s prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy because the domain name provided links to the Complainant’s competitors and the Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 names <cialisforwomen.com> and <wwcialis.com> be transferred to the Complainant.
Sandra J. Franklin
Date: October 19, 2006