WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Marcel Carvalho
Case No. D2013-1475
1. The Parties
The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Marcel Carvalho of North Miami Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <petcomfortis.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2013. On August 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2013, the Registrar 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 Complainant filed an amended Complaint on August 23, 2013.
The Center verified that the Complaint together with the 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 August 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2013. On September 21, 2013, two days after a Response was due, the Center received a late Response from the Respondent via the Center’s English website.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on October 8, 2013. 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, through its Elanco Animal Health Division, is a world leader in developing products and services that enrich animal health, wellness and performance.
Since at least as early as 2007, the Complainant has been using the COMFORTIS trademark in conjunction with the advertising, promotion and sale of its chewable flea protection tablets for dogs. The COMFORTIS packaging includes a notice that “ELANCO and COMFORTIS are trademarks of Eli Lilly and Company.”
The Complainant promotes its COMFORTIS branded products through its website “www.comfortis.com”.
Further, the Complainant has invested many millions of dollars in promoting the COMFORTIS product, and has sold millions of dollars worth of products under the mark.
Moreover, the Complainant owns valid and subsisting trademark registrations in 27 countries for the COMFORTIS mark including the United States trademark registration No. 3370168.
The disputed domain name <petcomfortis.com> was registered on June 20, 2012 and is scheduled to expire on June 20, 2015.
5. Parties’ Contentions
The Complainant, inter alia, asserts as follows:
(i) The disputed domain name <petcomfortis.com> is very similar to the Complainant’s domain name, <comfortis.com>, through which the Complainant promotes its COMFORTIS branded products, and therefore, exacerbates the likelihood of confusion;
(ii) The Respondent has wholly incorporated the COMFORTIS mark into the disputed domain name to attract consumers, for commercial gain, to a website that is not authorized by the Complainant. Such use cannot be considered a bona fide use;
(iii) The Respondent is not commonly known by the disputed domain name and has not acquired any trademark or service mark rights to use that name. Further, to the best of the Complainant’s knowledge, the Respondent has not applied for or obtained any trademark or service mark registrations of the disputed domain name in any jurisdiction in the world;
(iv) Moreover, the Respondent sells products that originate from the Complainant’s competitors on the website of the disputed domain name, which reinforces that the Respondent has no legitimate rights to use the COMFORTIS mark in the disputed domain name; and
(v) Lastly, the Respondent’s registration and use of the disputed domain name were in bad faith because 1) the COMFORTIS mark has a strong reputation and is widely known; 2) the Respondent had actual and constructive notice of the Complainant’s rights in the COMFORTIS trademark when it registered the disputed domain name; 3) the Respondent has used the disputed domain name to intentionally trade on the Complainant’s reputation, goodwill and trademark; and 4) there exists no plausible or contemplated use of the disputed domain name by the Respondent that would be legitimate or lawful.
The Respondent did not formally reply to the Complainant’s contentions. In the late submission received by the Center on September 21, 2013, the Respondent simply indicated that he was not the owner of the disputed domain name and that information of this proceeding had been transferred to the real owner of the disputed domain name.
The Panel notes here that no evidence has been submitted to the Panel on any transfer of the disputed domain name from the currently WhoIs recorded registrant of the disputed domain name.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as the Panel considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
It is undisputed that the Complainant owns the COMFORTIS trademark in 27 countries including the United States.
The Panel holds that the disputed domain name is confusingly similar to the COMFORTIS trademark owned by the Complainant and <comfortis.com> through which the Complainant promotes its COMFORTIS branded products, given that the disputed domain name wholly contains the Complainant’s trademark COMFORTIS. The Panel also holds that the first part of the disputed domain name, “pet,” exacerbates the confusion since the COMFORTIS branded products are chewable flea protection tablets for dogs. Therefore, considering the worldwide reputation enjoyed by the Complainant’s trademark, the Panel finds that the disputed domain name is likely to confuse Internet users.
Moreover, the addition of a generic Top-Level Domain (gTLD) such as “.com” is typically irrelevant in determining whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark (See Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is well established that “once a Complainant establishes prima facie showing that none of the three circumstances in paragraph 4(c) of the Policy establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant asserts that the Respondent had no intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel notes that the disputed domain is used to promote and sell the products of the Complainant’s competitors as well as the Complainant’s COMFORTIS branded products. For instance, an Internet user can purchase products of Rimadyl, which is in direct competition with the Complainant, on the website of the disputed domain name.
Further, the Respondent has no relationship with the Complainant. Not only does the Respondent hold no trademark registrations for COMFORTIS mark in any jurisdiction in the world, he also has never received any license, authorization or consent from the Complainant to use the trademark.
Moreover, the Panel notes that the Respondent submitted a late Response, which did not contain any material relevant to the statements and allegations made in the Complaint by the Complainant. Therefore, the Respondent has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel upholds the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
D. Registered and Used in Bad Faith
In the past UDRP decisions (see, for instance, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), it is well-established that when someone registers a domain name, he or she represents and warrants to the registrar that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In this case, given that the Complainant’s COMFORTIS branded products as well as the Complainant’s competitors’ products are promoted and sold at the disputed domain name, it is highly unlikely that the Respondent failed to notice the presence of the trademark COMFORTIS in the disputed domain name at the time of registration.
Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices in various jurisdictions would have made the Complainant’s registration known to the Respondent.
In addition, the fact that the Respondent uses the disputed domain to sell the products of firms in direct competition with the Complainant is in violation of paragraph 4(b)(iv) of the Policy, since the Respondent misleads and confuses Internet users by making them believe the products on the website of the disputed domain name are associated with or recommended by the Complainant.
Moreover, given the Complainant’s extensive use and registration of the COMFORTIS trademark, the Panel holds that it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name.
In light of the foregoing evidence, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
For 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 <petcomfortis.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: October 28, 2013