WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Raul Mijares
Case No. D2015-0348
1. The Parties
Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America, represented by Faegre Baker Daniels LLP, United States of America.
Respondent is Raul Mijaresof El Paso, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cialisotc.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing 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 March 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2015. The Response was filed with the Center on March 28, 2015.
On April 1, 2015 the Center received an additional submission from Complainant commenting on Respondent's Response. On April 6, 2015, the Center received an additional submission from Respondent commenting on Complainant's additional submission. The Center indicated to each party that it will be at the Panel's discretion whether to consider these additional submissions.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 9, 2015. 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.
Additional Submissions:
The Panel will consider Complainant's and Respondent's additional submissions in the interest of ensuring that each party has a fair opportunity to present its case. The Panel considers its decision to be in accordance with paragraphs 10 and 12 of the Rules, which in effect grant the Panel discretion to determine the admissibility of supplemental filings received from either party.
4. Factual Background
Complainant is a pharmaceutical company that owns at least 181 registrations for the CIALIS trademark covering 125 countries. Complainant's rights in the CIALIS mark date from June 17, 1999, when its predecessor-in-interest filed for registration of the CIALIS trademark with the United States Patent and Trademark Office. The CIALIS mark was registered on the principal register (Registration No. 2,724,589) on June 10, 2003, giving Complainant a constructive use date of June 17, 1999.
The Domain Name was registered on February 5, 2012.
5. Parties' Contentions
A. Complainant
(i) Identical or confusingly similar.
Complainant states that in 2004, approximately USD 39 million was spent to market and sell CIALIS brand product worldwide. In that year, United States sales of the CIALIS brand product totaled more than USD 206 million, while worldwide sales were in excess of USD 550 million. Complainant provides evidence to show steady and significant increases in annual sales between 2004 until 2014. In 2014, worldwide sales of CIALIS brand product were USD 2.291 billion, with sales in the United States at USD 1.04 billion and sales outside of the United States at USD 1.251 billion. For these reasons, Complainant believes that it is reasonable to infer that the CIALIS trademark is well-known throughout the world.
Complainant asserts that it has both senior and exclusive rights in the CIALIS mark. Because Respondent registered the Domain Name on February 5, 2012, Complainant's rights in the CIALIS trademark predate Respondent's registration date.
Complainant has an Internet presence, primarily through the website accessed by the domain name <cialis.com>, which it uses to advertise and provide information regarding its pharmaceutical product. The <cialis.com> domain name was registered by Complainant's predecessor-in-interest on August 10, 1999. Complainant has used this domain name to identify a website since at least as early as June, 2001.
Complainant submits that the CIALIS mark is an invented word with a high degree of individuality, inherent distinctiveness and no common colloquial use, as was found in a previous UDRP case. See Lilly ICOS LLC v. Clarkepharma Co., WIPO Case No. D2007-0447. An invented word that has acquired a high degree of distinctiveness is a highly distinctive mark. A domain name which differs very slightly from a trademark has a greater tendency to be confusingly similar where that trademark is highly distinctive.
Complainant contends that the Domain Name is confusingly similar to Complainant's CIALIS mark. A prior UDRP panel has held that the addition of the generic phrase "over the counter" to the CIALIS mark in a disputed domain name did not avoid confusing similarity. Eli Lilly and Company v. Elna Mozart, Spun LTD/ Contact Privacy Inc. Customer 0126843271, WIPO Case No. D2014-1030. Moreover, a prior UDRP panel has held that the words "over the counter" did not eliminate the confusing similarity of a mark for pharmaceutical products because patients seeking the medication "are likely to assume that the disputed domain name is used for a website to advertise pharmacies where [the drug] is available over the counter, that is to say without a doctor's prescription." Pfizer v. Evgen Shirko, WIPO Case No. D2013-0056 (determining that the disputed domain name, <overthecounterviagra.com>, was registered in bad faith). In this case, Complainant observes that Respondent has added the letters "OTC," an acronym for the generic phrase "over the counter." As a result, Complainant argues the same rationale should apply here to determine that the letters "OTC" do not eliminate confusing similarity with Complainant's CIALIS mark.
Complainant states that several UDRP panels have noted that the addition of generic or descriptive words or phrases to Complainant's CIALIS mark did not negate the distinctiveness of the mark. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (determining that the addition of the words "drug", "online:, "buying" and "guide" to Complainant's CIALIS trademark did not eliminate confusing similarity between the mark and the <cialis-drug-online-buying-guide.com> domain name); and Lilly ICOS LLC v. Anwarul Alam/"- -", WIPO Case No. D2004-0793 (determining that the addition of the descriptive word "city" to the disputed domain name <cialiscity.com> did not eliminate confusing similarity). In the present case, the letters "OTC" have been added to the CIALIS mark in the Domain Name. Complainant urges that the addition of these letters does not negate the distinctiveness of Complainant's CIALIS mark, and, for all of these reasons, the Domain Name is confusingly similar to Complainant's CIALIS mark.
(ii) Rights or legitimate interests.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. To Complainant's knowledge, Respondent has not been commonly known by the Domain Name and is not making a bona fide offering of goods and services in connection with the Domain Name. Further on June 6, 2014, Complainant, through its counsel, sent a letter to Respondent advising Respondent of Complainant's rights in the CIALIS mark and that Respondent did not appear to have any rights or legitimate interest in the Domain Name. Complainant and its counsel did not receive a response from Respondent.
Additionally, Complainant asserts that Respondent had constructive notice of the CIALIS mark, as a trademark search on the date of the registration of the Domain Name would have revealed Complainant's registrations for the CIALIS mark in the United States. Prior UDRP panels have held that, "where a respondent has constructive notice of a trademark, and yet registers a confusingly similar domain name thereto, the respondent cannot be said to have a legitimate interest in the domain name." See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259. Complainant urges that Respondent has no plausible reason to register the Domain Name other than to potentially capitalize on Complainant's goodwill.
Further, Complainant states that while Respondent's website currently defaults to a "parked page", this page is only "parked" in name. Respondent's use of the CIALIS mark in the Domain Name draws consumers to its website where a consumer may click on links found under "sponsored results". One of the sponsored results, "Pote-Mix Products ED Help" directs consumers to a commercial website, which specifically offers products that allegedly treat erectile dysfunction. These products are arguably competitive with Complainant's CIALIS brand product. In addition, another sponsored result, "Erectile Dysfunction Cure", directs a consumer to <topicologist.com>, which contains links to sites offering competitive products such as VIAGRA brand product and products claiming to be "natural ED treatments". By linking consumers to these sites, Respondent is likely recognizing a financial gain. Respondent likely receives a payment each time it links a consumer to these sites and the consumer purchases a product. Thus, it is apparent from the website associated with the Domain Name that Respondent was attempting to capitalize on the reputation and goodwill of the CIALIS mark to direct Internet users to its website for commercial gain.
Further, Complainant maintains that Respondent's use of the Domain Name is not justified by the principle that a mark may be used legitimately without its owner's consent to promote a bona fide offering of goods or services placed on the market by its owner. In accordance with previous UDRP cases, this principle can only be invoked under the Policy if: (i) the respondent is actually offering the goods or services at issue; (ii) the respondent uses the website to sell only the genuine trademarked goods or services; and (iii) the website accurately discloses respondent's relationship (or otherwise) with the trademark owner. Not all of these factors are applicable in this case. Complainant has not given Respondent permission, authorization, consent or license to use its CIALIS mark (or any confusingly similar variations thereof). Despite this, however, the Domain Name resolves to a website enabling Respondent to cash in on the strength of Complainant's mark and the reputation of the product with which the CIALIS mark is associated.
(iii) Registered and used in bad faith.
Complainant's trademark CIALIS has a June 17, 1999 date of constructive use based upon its U.S. trademark rights. Media coverage of the CIALIS brand product is dated as early as 2001. Therefore, because it is reasonable to infer that the CIALIS trademark is well-known, it is highly likely that Respondent knew of Complainant's CIALIS mark at the time of registering the confusingly similar Domain Name in 2012.
Complainant acknowledges that Respondent's conduct cannot be said to come squarely within any of the examples of bad faith registration and use set out in Paragraph 4(b) of the Policy. However, the examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. The Telstra decision established that "inaction" can constitute bad faith use, and the decision has since been cited for that proposition and followed by many subsequent UDRP panels. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case. In this case, Complainant contends that where: (1) the CIALIS mark is widely known throughout the world and was widely known at the time Respondent registered the Domain Name; (2) Respondent failed to respond to Complainant's communications regarding this matter; (3) Respondent registered the Domain Name, which is substantially similar to a domain name registered by Complainant; and (4) Respondent has made no real active use of the Domain Name, Respondent's passive and misleading use of the Domain Name constitutes bad faith registration and use.
Respondent's registration and misleading use of the Domain Name is disrupting to Complainant's business. Moreover, as stated in Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, "because Respondent is contributing no value-add to the Internet – it is merely attempting to exploit a general rule of registration – the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." In this case, Complainant states that, since registering the Domain Name, Respondent has not made legitimate use of the website associated with the Domain Name. Internet users would be better served if the Domain Name was transferred to Complainant.
Complainant also emphasizes that Respondent has failed to respond to Complainant's attempt to contact him, and indicates that "the failure to respond positively to a Complainant's efforts to make contact provides strong support for a determination of 'bad faith' registration and use." See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259.
Lastly, Complainant contends that Respondent's use of Complainant's CIALIS mark in the Domain Name is potentially harmful to the health of many unsuspecting consumers who may be seeking assistance from Complainant and go to Respondent's website under the mistaken impression that they are dealing with Complainant or an authorized representative or licensee of Complainant. Since Complainant is not responsible for the content or links offered through Respondent's website, Complainant cannot guarantee that the information consumers receive is accurate. For all of the foregoing reasons, Complainant believes that the Domain Name has been registered and used in bad faith.
B. Respondent
Respondent states that he registered the Domain Name with the intention of creating a noncommercial blog/gripe website that will allow users to post their experiences and opinions regarding the prescribed usage of the pharmaceutical product named CIALIS. Respondent claims he intends to name the blog "CIALIS Our True Conclusion[s]."
Respondent states that he was prescribed CIALIS to help with symptoms related to an overactive bladder. He states the treatment was successful and he wants to share his experience with other people who might be experiencing similar symptoms. This idea to inform the public about using CIALIS is important to Respondent because he feels that there is a lack of information regarding overactive bladder syndrome. Respondent also feels that the Internet community is not aware that this medication can be prescribed to women to treat pulmonary arterial hypertension.
Respondent does not contest that the CIALIS mark is distinctive, but states that he will prove that the Domain Name is not confusingly similar to a trademark in which Complainant has rights; that he has rights and/or legitimate interests in respect of the Domain Name; and that the Domain Name is not being used in bad faith.
(i) Identical or confusingly similar.
Respondent does not dispute that Complainant's use and registration of the CIALIS trademark pre-dates Respondent's registration of the Domain Name. Respondent urges that this dispute is unlike the dispute in the case cited by Complainant, Lilly ICOS LLC v. Clark pharma Co., WIPO Case No. D2007-0447. In that case the complainant was granted a transfer because the registrant failed to respond. If the registrant had given a legitimate response, the outcome could have been possibly different. If the respondent had been able to prove that the domain name was being used for noncommercial purposes, the respondent could have possibly retained the domain name.
Respondent responds to Complainant's statement that it owns 181 trademark registrations for the CIALIS mark covering 125 countries. According to Respondent, this statistic should indicate that the Domain Name is immaterial to Complainant and its CIALIS mark. If this Domain Name was critical to the CIALIS brand, Complainant would have registered it prior to Respondent. Complainant had plenty of time to do so.
Respondent seeks to distinguish the case, Eli Lilly and Company v Elna Mozart, Spun LTD/ Contract privacy Inc.Customer 0126843271, WIPO Case No. D2014-1030, where Complainant highlighted that a UDRP panel held that the addition of the generic phrase "over the counter" to the CIALIS mark in a domain name did not avoid confusing similarity. In that case, the respondent did not respond. Moreover, the domain name <cialisoverthecounter.com> is different from the Domain Name in this case, because <cialisotc.com> does not contain the phrase "over the counter" as Complainant would like the Panel to believe. The acronym OTC is intended to abbreviate the words, "Our True Conclusion[s]", in connection with the noncommercial blog/gripe website that is in the mid-level stages of development.
(ii) Rights or legitimate interests.
Respondent claims that he has a right or legitimate interest in respect to the Domain Name. Respondent indicates that he was prescribed CIALIS by his physician related to an overactive bladder diagnosis in 2011. Respondent states he registered the Domain Name to create a noncommercial blog/gripe website named "CIALIS Our True Conclusion[s]", and combined the CIALIS name with the acronym OTC added, as it is intended to stand for "our true conclusion[s]", as opposed to "over the counter", as Complainant asserts. This noncommercial blog/gripe site is intended to be used as an information sharing site where other CIALIS patients would be able to share their experiences about the medication. Respondent claims that there is not enough public information regarding the use of CIALIS for erectile dysfunction, over-active bladder syndrome, and pulmonary arterial hypertension. Respondent claims that many men and women using the medication are ashamed because CIALIS is primarily known for erectile dysfunction syndrome. Most women are not aware that they can be prescribed the medication to treat pulmonary arterial hypertension. Respondent expresses a desire to learn from people who will be more willing to express their experiences in an online forum, and believes that the noncommercial blog/gripe website will be beneficial to the Internet community by educating the public through unbiased testimonials posted by patients.
Respondent acknowledges that although the Domain Name currently defaults to a "parked page", he does not obtain financial gain. Respondent states he purposely did not have the Domain Name listed on a personal cash parking option. Any parked page was put up automatically, by default, by Godaddy.com, and any financial gain was received by Godaddy.com. Respondent did not have choice or control over the default parking page that Godaddy.com used. Respondent indicates that the Domain Name has been locked for the duration of this dispute. Respondent is not familiar with the sites at <pote-mix.com> or <topicologist.com>, to which Complainant refers.
In light of these points, Respondent contends that he is not attempting to capitalize on the reputation and goodwill of the CIALIS mark to direct Internet users to his website for commercial gain. Further, there has never been a functioning website associated with the Domain Name. Respondent states that he did not and will not try to promote a bona fide offering of goods and services placed on the market by Complainant because Respondent does not want to risk forfeiting his right to control of the Domain Name.
(iii) Registered and used in bad faith.
Respondent registered the Domain Name on February 5, 2012 and states that, at that time, he was not aware that Complainant would make CIALIS available for over the counter purchases. Respondent states that he had no interest in developing a website that would communicate over the counter sales of CIALIS. His intention was to create a noncommercial blog/gripe website named CIALIS Our True Conclusion[s]. While Complainant claims that Respondent has no plausible reason to register the Domain Name other than to potentially capitalize on Complainant's goodwill, Respondent argues this is not true. Respondent was not aware of Complainant's intention to sell CIALIS over the counter until he came across a news article in May 2014. This was about the same time that Complainant sent a cease and desist letter demanding that Respondent transfer the Domain Name.
While Complainant claims that Respondent is using the Domain Name for commercial gain, Respondent states that he has never built a website for the Domain Name. Respondent states that the reason why he has not completed his site is because he has been learning about the rights of a domain name holder in regards to creating a noncommercial blog/gripe site that will not infringe the rights of the CIALIS mark. Respondent claims he is still researching the laws and regulations to determine what needs to be done to build and maintain a noncommercial blog/gripe website. According to Respondent, the only thing that is currently stopping him from creating a site for the Domain Name is Complainant's frivolous claim infringing on Respondent's freedom and progress.
Additionally, while Complainant did not receive from Respondent a response to Complainant's cease and desist letter, Respondent argues that this is because the letter insisted that Respondent immediately transfer the Domain Name to Complainant. The language in Complainant's letter can be construed as demanding and intimidating. Complainant did not offer to compensate Respondent for the minimal fees associated with registering and maintaining the Domain Name. Further, Respondent never asked to be compensated in regards to the Domain Name, and never tried selling it to Complainant or any other third party.
Respondent highlights that Complainant admits that Respondent's conduct cannot be said to come squarely within any of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy. While Complainant cites Telstra Corporation Limited when explaining that "inaction" can constitute bad faith use, in this case Respondent has not created a noncommercial blog/gripe website associated with the Domain Name because he was being cautious not to infringe on the rights of the CIALIS mark. The Internet community would be better off if Respondent created an educational, noncommercial blog/gripe website geared toward patients who are prescribed CIALIS for one of three known and marketed uses.
Lastly, Respondent rejects Complainant's claim that Respondent's use of Complainant's CIALIS mark in the Domain Name is potentially harmful to the health of unsuspecting consumers who may be seeking assistance from Complainant. This allegation contradicts the claim made previously by Complainant that Respondent has made no active use of the Domain Name. For the forgoing reasons, Respondent has shown that the Domain Name has not been registered in bad faith.
C. Complainant's Additional Submission
Complainant emphasizes that, for argument's sake, even assuming the acronym "OTC" is not intended to have the common "over-the-counter" meaning ascribed to it, the addition of the letters "OTC" does not negate the distinctiveness of the CIALIS mark, which is incorporated in the Domain Name in its entirety. Further, if Respondent was truly planning to build a blog/gripe website on the topic of overactive bladder or overactive bladder syndrome, the acronyms "OAB" or "OBS" would have been more obvious choices than "OTC". The addition of generic words and letters to a trademark do not prevent a finding of confusingly similarity. In the present case, the distinctive part of the Domain Name is "CIALIS," which is identical to Complaint's well-known CIALIS mark.
Complainant observes that Respondent does not deny Complainant's rights in the CIALIS mark or its trademark registrations throughout the United States and the world. Complainant's trademark registrations demonstrate the strength and validity of Complainant's CIALIS mark. Complainant's trademark registrations are separate and apart from Complainant's domain name registrations. The fact that Complainant did not previously seek to register the Domain Name does not demonstrate that the Domain Name is "immaterial" or that Respondent's actions are justified. Trademark owners are not required to register every variation of a trademark in domain names in order to protect their rights.
As to Respondent's claim that he registered the Domain Name to create a noncommercial blog/gripe website named "CIALIS Our True Conclusion[s]", Complainant asserts that this claim appears suspect. First, Respondent registered the Domain Name on February 5, 2012 and had three years to start this alleged blog and yet failed to do so. While Respondent alleges the delay is attributed to his researching of laws and regulations to determine what needs to be done to build and maintain a noncommercial blog/gripe website, Complainant maintains it is highly unlikely that it would take someone over three years to research this topic. Additionally, at any point during the past three years, Respondent could have posted a site that indicated "BLOG Coming Soon" or "Future Home of an Informational Blog;" however, there is no direct evidence supporting Respondent's current allegations.
Complainant reached out to Respondent prior to initiating this UDRP proceeding through its counsel and Respondent did not respond. Instead, Respondent now claims that this correspondence was "demanding and intimidating" and that Complainant did not offer to compensate Respondent. Complainant is under no obligation to offer to compensate an individual who is infringing its trademark rights. If Respondent had legitimate intentions with respect to the Domain Name, then Respondent had no reason to be intimidated. Instead, it was not until Respondent was faced with a deadline in this case that he has alleged legitimate use for the Domain Name. Respondent has not made and is not currently making a legitimate noncommercial or fair use of the Domain Name. Respondent's claim that he wants to make a legitimate noncommercial use in the future does not cure the fact that he has failed to provide any credible evidence to support his contention that he has a legitimate interest in the Domain Name.
Finally, in response to Respondent's argument that he had no control over the content of the website linked to the Domain Name because the links were provided by Godaddy.com and any financial gain was received by Godaddy.com, Complainant emphasizes that prior UDRP panels have noted that whether this revenue accrues directly to Respondent or to the host, or to both, is immaterial. Respondent remains responsible for the uses to which the Domain Name is put. The proper analysis is whether users are attracted to the website for commercial gain. Respondent cannot hide behind Godaddy.com when he is responsible for registering the Domain Name and is ultimately responsible for the content on the website linked to the Domain Name.
C. Respondent's Additional Submission
Respondent emphasizes that the acronym "OTC" in the Domain Name stands for "Our True Conclusion[s]," as opposed to "over the counter". The Domain Name does not contain the phrase "over the counter" and therefore the UDRP case cited by Complainant on this point is distinguishable.
Respondent responds to Complainant's argument that for the topics of overactive bladder or overactive bladder syndrome, the acronyms "OAB" or "OBS" would have been more obvious choices than "OTC". Respondent argues that this suggestion shows Complainant would find it acceptable for a third party to register, for example, the domain names <cialisoab.com> or <cialisobs.com>. Respondent further argues that Complainant is confused or unfamiliar about the difference between the three distinct marketed uses of CIALIS: CIALIS has been proven to help people with symptoms related to erectile dysfunction, over-active bladder syndrome and pulmonary arterial hypertension. Respondent is creating a noncommercial blog/gripe website that is to be used by patients that are prescribed CIALIS for a number of uses. Any domain name suggested by Complainant would not accurately describe "true conclusions" from patients with one of these symptoms.
Respondent provides reports from the website at Alexa.com (a site providing commercial web traffic data) to show that the sites being visited immediately before and after users visit Complainant's website at "www.cialis.com" do not include the site linked to Respondent's Domain Name, thereby proving that patients seeking medication will not confuse the Domain Name with Complainant's site. Respondent also includes a chart of keywords for Complainant's website, observing that "cialisotc", "OTC", and "over the counter" are not listed as key terms. According to Respondent, this data proves that the Domain Name is not confusingly similar to Complainant's CIALIS mark.
Respondent re-emphasizes that he registered the Domain Name to create a noncommercial blog/gripe website in reference to CIALIS named "Our True Conclusion[s]". Respondent asserts he is not aware of any time limit to start a noncommercial blog/gripe website associated with the Domain Name. Respondent reiterates that he has taken a long time because he was being cautious so as to avoid infringing Complainant's CIALIS mark. Further, life events have postponed the progress of the website. Respondent claims the site was in the mid-level stages of production when he received a cease and desist letter on June 6, 2014, which indicates a shorter period following the registration date than Complainant would have the panel believe. The letter insisted that Respondent immediately transfer the Domain Name, and Respondent stands by his initial claim that the tone and verbiage of the letter can be construed as demanding and intimidating. During this time, Respondent did not use the Domain Name for commercial gain. Respondent is currently a first year law student at a law school experiencing its inaugural year. Respondent had to wait until he was exposed to Internet law to proceed with his plans for the website. Respondent understands that Complainant is under no obligation to offer to compensate an individual who has control over a Domain Name, but raised this point to emphasize that Respondent did not ask to be compensated.
In sum, Respondent urges the Domain Name is not confusingly similar to Complainant's CIALIS trademark; he has a legitimate interest in the Domain Name; and he did not register the Domain Name in bad faith and is not using it for commercial gain or in bad faith. The Internet community will benefit from a noncommercial blog/gripe website that informs and educates the general public about the uses of CIALIS through unbiased testimonials by actual patients.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has strong trademark rights in its distinctive and well-known CIALIS mark, including in the United States where Respondent is located.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name…."). One way to assess confusing similarity is to consider whether it is likely that, because of similarity between the Domain Name and Complainant's trademark, people will wonder whether the Domain Name is associated in some way with Complainant.
Respondent has sought to distinguish the UDRP cases cited by Complainant and urged that "OTC" is intended to stand for the phrase "our true conclusion[s]". However, the Panel finds that the CIALIS mark, which is incorporated in the Domain Name in its entirety, is highly distinctive, well-known and the predominant feature of the Domain Name. Adding the acronym "OTC" does not negate the distinctiveness of the CIALIS mark in the Domain Name. Instead, the Panel finds that it is likely consumers would wonder whether the Domain Name is associated in some way with Complainant. Moreover, the acronym "OTC" brings to mind the phrase "over the counter", particularly when it is combined with Complainant's CIALIS mark.
Accordingly, the Panel concludes that the Domain Name is confusingly similar to Complainant's CIALIS mark.
B. Rights or Legitimate Interests
The Panel finds that despite Respondent's detailed arguments, he has no rights or legitimate interests in the Domain Name. Complainant has confirmed that it did not license or otherwise permit Respondent to use its CIALIS trademark or to register a domain name incorporating the mark. Complainant has also demonstrated that Respondent is not commonly known by the Domain Name. Respondent's name is Raul Mijares. The Domain Name was linked to a parking site that contained sponsored links to sites offering competing products that allegedly treat erectile dysfunction.
Moreover, there is no dispute that Respondent specifically had in mind Complainant and its CIALIS mark and related products when he registered the Domain Name. Respondent, however, has maintained that he did not register the Domain Name for commercial gain, but instead registered it with the intention of creating a noncommercial blog/gripe website that would allow users to post their experiences and opinions regarding use of CIALIS. Although Respondent has stated his website is in the mid-level stages of production, he has provided no evidence in support of this claim. Instead, more than two years passed following registration of the Domain Name in February 2012, until Respondent received Complainant's cease and desist letter in June 2014. During this period, the Domain Name was linked to the parking page, as described above.
On this record, the Panel finds that Respondent has not yet been "making" any substantial noncommercial or fair use of the Domain Name that would give rise to any rights or legitimate interest in it. See e.g., Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. Moreover, the right to express one's views (or provide a forum for others to do so) is not the same as the right to use another's well-known trademark in a confusing manner (in a domain name) to identify one's self as the source of those views. See e.g., Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Monty & Pat Roberts Inc. v. J. Bartell, WIPO Case No. D2000-0300. Thus, in balancing the rights of Complainant in its well-known CIALIS mark, and the rights of Respondent to choose freely a domain name for expressing views on a blog/gripe site on subjects yet to be identified, the Panel concludes that Respondent has impermissibly taken advantage of Complainant's commercial interests in its mark. The Panel is of the view that Respondent registered the Domain Name because of its connection to Complainant, its trademark and products.
In view of all of the facts and circumstances in this case, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Finally, the Panel determines that the Domain Name has been registered and used in bad faith. In this case, where Complainant's CIALIS trademark is so strong and distinctive, including in the United States where Respondent is located, the Panel finds that Respondent registered the Domain Name in order to exploit Complainant's goodwill in its CIALIS mark. In so doing, he registered the Domain Name in bad faith. Red Bull GmbH v. Maxwell Arnold, WIPO Case No. D2014-1589; Red Bull GmbH v. Paul Battista, WIPO Case No. D2010-0353; David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472.
With regard to use, the Domain Name, which falsely conveys an association with Complainant, has been used to lead Internet users to a parking website with sponsored links offering products that compete with Complainant's pharmaceutical product. In this way, Respondent has used the Domain Name for the bad faith purpose of attracting, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant's trademark. Despite Respondent's arguments that he was not responsible, the Panel agrees with those UDRP panels that have found that a registrant cannot disclaim responsibility for the various links on a website linked to a disputed domain name where they are concerned either with the complainant or with the field of commercial activity in which the complainant operates. Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. Respondent had more than two years to re-direct the Domain Name to a website that did not feature these sponsored links, but failed to do so.
Even if, as Respondent alleges, he intends to create a blog/gripe website, the inevitable consequence is that there will be confusion, as a substantial proportion of Internet users visiting the site will be doing so in the expectation of reaching a site of, or authorized by, Complainant. When they reach the site they may realize that they have been mistaken, but in any event the objective of bringing them there will have already been achieved. As discussed in the analysis in David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472, this amounts to an impersonation of sorts of the mark owner with a view to expanding coverage of the respondent's views. If Respondent wishes to develop an educational blog/gripe website to publish his views (or allow for the exchange of others' views) on various topics related to Complainant's CIALIS branded product, he can do so in any number of ways without taking advantage of Complainant's CIALIS trademark; in other words, the Respondent's claims appear pretexted. See David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472 (the manipulation of the complainant's name as a domain name is an abuse within the broad ambit of the Policy, where the intentions of respondent are to cause initial interest confusion with a view to expanding coverage of the respondent's views; the panel sees no reason why the right to free speech should justify the deception of Internet users); see also Red Bull GmbH v. Maxwell Arnold, WIPO Case No. D2014-1589.
Thus, the Panel finds that in this case, by using the Domain Name, Respondent has intentionally attempted to attract Internet users to a website by creating a likelihood of confusion with Complainant's well-known CIALIS mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. This amounts to bad faith use within the broad ambit of the Policy.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
7. Decision
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, <cialisotc.com>, be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: April 28, 2015