WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Elena Mozart, Spun LTD / Contact Privacy Inc. Customer 0126843271
Case No. D2014-1030
1. The Parties
The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America, represented by Faegre Baker Daniels LLP, United States of America.
The Respondent is Elena Mozart, Spun LTD of Kyiv, Ukraine / Contact Privacy Inc. Customer 0126843271 of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <cialisoverthecounter.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2014. On June 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2014, 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 Center sent an email communication to the Complainant on June 19, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 20, 2014.
The Center verified that 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 June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2014.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 28, 2014. 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 has proved that the trademark CIALIS enjoys thorough protection through numerous registrations worldwide. Indeed, the Complainant has more than one hundred registrations for the CIALIS trademark covering nearly one hundred and twenty countries.
The Complainant appears to be the holder amongst an impressive number of domain names, of the domain name <cialis.com> (registered in the year 1999).
The disputed domain name <cialisoverthecounter.com> was registered on October 5, 2009.
On the website “www.cialisoverthecounter.com”, the CIALIS logo, trademark and (alleged Cialis) products are prominently displayed. In addition, Internet users (when trying to order the alleged Cialis product) are directed to an online pharmacy where apparently illegal and counterfeit Cialis drugs as well as competitors’ products such as Viagra are sold, possibly also counterfeit.
The Complainant’s trademark registrations date back to as early as 1999 thus long predate the registration of the disputed domain name.
5. Parties’ Contentions
The Complainant claims that the CIALIS trademark is a well-known trademark with strong reputation, that the disputed domain name is confusingly similar to the Complainant’s renowned CIALIS registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, the Policy paragraph 4(a) requires that the Complainant must demonstrate to the Panel that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Complainant has established to have rights to the CIALIS trademark.
The Complainant has argued that CIALIS is an extremely well-known trademark inherently distinctive and that it forms the first, dominant, most significant and distinctive element of the disputed domain name. The Complainant further submits that the additional words “over the counter” in the disputed domain name are generic words, expressing the concept that there is no need of a doctor’s prescription to buy the product (Cialis).
In support of this the Complainant refers to Pfizer Inc. v. Evgen Shirko, WIPO Case No. D2013-0056 (domain name <overthecounterviagra.com>) where it was affirmed that: “The disputed domain name incorporates the mark VIAGRA and is preceded by the words ‘over the counter’. Patients seeking VIAGRA are likely to assume that the disputed domain name is used for a website to advertise pharmacies where VIAGRA is available ‘over the counter’, that is to say without a doctor’s prescription or even for a website that sells VIAGRA online”.
This Panel agrees with the Complainant’s contention that “cialis” is the only distinctive part within the disputed domain name and that the addition of the generic terms “over the counter”, as explained by the panel in the above quoted decision, does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademark CIALIS.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark CIALIS in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case. The Respondent has no connection or affiliation with the Complainant which has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6C below. In addition, the Respondent does not appear to be commonly known by the name “Cialis over the counter” or by a similar name. Finally, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent registered the disputed domain name well aware of the Complainant’s trademark registrations and rights in the CIALIS mark.
In fact, considering that the Complainant’s trademark is a renowned trademark that has been registered and widely used for more than a decade and in the absence of contrary evidence, the Panel finds that the Respondent knew of the Complainant’s products and trademarks and intentionally intended to create an association with the Complainant and its business; that the Respondent must have had actual knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name; and that the above described use of the disputed domain name, i.e., to divert Internet traffic to an online pharmacy, that prominently displays the CIALIS logo, where apparently illegal and counterfeit Cialis drugs as well as competitors’ products such as Viagra are sold, possibly also counterfeit, falls clearly within the example of bad faith set out in 4(b)(iv) of the Policy: “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.”
Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in this proceeding. It is therefore reasonable to assume that if the Respondent did have legitimate purposes in registering and using the disputed domain name it would have responded.
Further inference of bad faith is given by the Respondent’s use of a privacy service.
Finally, this Panel agrees with previous UDRP panels that have noted that the obvious danger of consumers being afforded inaccurate, incomplete, or misleading information about medical products may further demonstrate bad faith.
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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 disputed domain name <cialisoverthecounter.com> be transferred to the Complainant.
Date: August 1, 2014