WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Sedef Gul / Elit Medical Dis Tic Ltd Sti
Case No. D2015-0432
1. The Parties
The Complainant is Eli Lilly and Company of Indiana, United States of America, represented by Gün & Partners, Turkey.
The Respondent is Sedef Gul of Izmir, Turkey / Elit Medical Dis Tic Ltd Sti of Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <cialis-turkiye.com> is registered with GoDaddy.com, LLC. (the "Registrar").
3. Procedural History
The Complaint was filed in Turkish with the WIPO Arbitration and Mediation Center (the "Center") on March 11, 2015. On March 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name to FBS Inc. Following a series of emails, on March 17, 2015, FBS Inc. confirmed that the domain name registration had been transferred to the registrar GoDaddy.com, LLC. On March 19, 2015, the Center sent a request for registrar verification to GoDaddy.com, LLC. On March 20, 2015, 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.
As indicated in emails from the Registrar com, LLC, the registration of the disputed domain name was transferred to it on March 14, 2015. On March 20, 2015, the Registrar confirmed that the disputed domain name was registered with it, but in the name of Elit Medical Dis Tic Ltd Sti, rather than Sedef Gul. The latter was named as the Respondent in the originally filed Complaint. The WhoIs details (as provided by the Registrar) confirmed that the "creation date" for the disputed domain name was however August 19, 2013. The response from the Registrar also indicated that the language of the registration agreement is English. On March 23, 2015 the Center accordingly notified the Complainant that the Complaint should be submitted in English, unless there was evidence of an agreement with the Respondent that the Complaint should remain in Turkish. The Complainant submitted an amended Complaint in English on March 25, 2015.
On March 27, 2015, the Center received an email communication from the Respondent.
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 April 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2015. The Respondent did not file a formal response.
The Center appointed James A. Barker as the sole panelist in this matter on May 6, 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.
4. Factual Background
The Complainant is a company incorporated in the State of Indiana in the United States of America (the "US").
The Complainant is the owner of numerous registrations worldwide for the trade mark CIALIS, the earliest dating from June 17, 1999 with the filing for registration with the United States Patent and Trademark Office ("USPTO"). That mark was registered on the principal register of the USPTO in 2003.
The Complainant uses its mark for CIALIS in connection with the identification of pharmaceutical products. The Complainant holds registrations for that mark covering 126 countries, including in Turkey where the Respondent has its address. The Complaint annexed a copy of its Turkish trademark registration, in Turkish, in addition to copies of registration certificates from other jurisdictions. The Complainant's Turkish trademark has effect from 1999. The Complainant has spent considerable resources in marketing its CIALIS brand worldwide. CIALIS is a pharmaceutical product that treats erectile dysfunction.
The disputed domain name was registered to the Respondent since at least March 14, 2015 (as confirmed by the Registrar). The WhoIs details list a "creation date" for the disputed domain name of August 2013.
5. Parties' Contentions
The Complainant says that its mark is distinctive and predates the Respondent's registration of the disputed domain name. The distinctiveness of the Complainant's mark has been recognized in previous decisions under the Policy.
The Complainant says that the disputed domain name is confusingly similar to its CIALIS mark. The addition of a country name or generic term does not eliminate that confusion. The addition of the descriptive and or generic term "turkiye" in this case does not avoid confusing similarity with the Complainant's mark.
The Respondent has no rights or legitimate interests in the disputed domain name, and is not authorized by the Complainant. The Respondent does not appear to be commonly known by that term, and is not making a legitimate noncommercial use of it. Rather, the Respondent's website advertises (in Turkish) generic CIALIS brand products. When users click on "Order Now" links, they are taken to another page where they enter their order and shipment details. The Complainant says that counterfeit CIALIS tablets are advertised via this website, and that the website falsely claims that the products are 100% genuine; approved by the Turkish Minister of Health; and sells the products under an official agreement. The Complainant says that generic versions of its CIALIS product have not been approved by any health organization and do not come in any of the forms advertised on the Respondent's website. As such, those versions are illegal, counterfeit products. The Complainant refers to previous decisions under the Policy which found that domain names being used to sell unauthorized or counterfeit products do not demonstrate a right or legitimate interest. Neither can the Respondent claim to have a bona fide offering of goods or services, based on the principles laid down in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903.
The Complainant, lastly, says that the disputed domain name was registered and is being used in bad faith. The Complainant's mark is well-known and the Respondent was highly likely to have been aware of it when it registered the disputed domain name. The Complainant is clearly attempting to deceive and mislead consumers.
The Respondent did not submit a formal Response. However on March 27, 2015 the Respondent sent an email to the Center (in the name of Onur Keser) which said in relevant part:
"We do not accept the allegations. There are not Similitude brand associated with CIALIS or any of work. Cialis-Turkiye Our brand is registered in the name of our company by the Institute of Patent on our behalf. CIALIS brand does not have anything to do with us or our relationship. We have been operating our brand Cialis-Turkiye. CIALIS can be a brand. With Cialis-Turkey does not have any similarity. Cialis-Turkiye is a separate brand."
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove 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 was registered and is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
The Complainant is the owner of a registered mark for CIALIS, at least in Turkey. The Complainant provides a copy of a registration certificate apparently to this effect.
The Complaint also attaches other registration certificates which, without explanation, include another Turkish trademark certificate. Those registrations however were in the name of "Lilly ICOS LLC", a different legal entity to the Complainant. The Complaint gives no further detail on how the Complainant came to inherit rights in that mark. Past UDRP decisions have however recognized that the Complainant in this case "is a joint venture between ICOS Corporation and Eli Lilly and Company". See Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891. As such, the Complainant would also have rights in that larger portfolio of registered marks.
The disputed domain name is not identical to that mark because it adds the apparent geographic reference "turkiye". However, the Panel finds that it is confusingly similar to the Complainant's mark. This is because the Complainant's mark is entirely incorporated in the disputed domain name. Further, although the Complaint does not explain the origin of its mark, previous UDRP decisions have recognized that the mark CIALIS "has been created by Complainant, is highly distinctive and has no common colloquial use." See, Lilly ICOS LLC v. Jay Kim, supra. The addition of a geographic reference to the Complainant's distinctive mark does not avoid confusion. Such an addition would potentially increase confusion – suggesting a particular geographic marketing of the Complainant's product. The Complaint also references a series of UDRP panel decisions to the effect that the addition of generic terms to the Complaint's mark did not avoid findings of confusing similarity.
For these reasons, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to its CIALIS mark.
B. Rights or Legitimate Interests
The Respondent has not provided any evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The Respondent's email to the Center claims that "cialis-turkiye" is a separate brand. The Respondent provided no supporting evidence for this bare assertion.
As noted above, the Complainant's mark is distinctive and registered in a large number of countries, including in Turkey. The Complainant has given the Respondent no permission to use it. The Complaint indicates that the Respondent is using the disputed domain name to market counterfeit products. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
An example of bad faith in paragraph 4(b)(iv) of the Policy is that: "by using the domain name, [the Respondent has] 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." The evidence outlined above indicates that this is squarely what the Respondent has done.
The Complainant's mark is well-known and distinctive, and the Respondent has registered a confusingly similar domain name to market products purporting to be associated with the Complainant. This evidence clearly suggests that the Respondent intentionally sought to create confusion and profit from it. The use of the disputed domain name in this connection provides for a clear finding of bad faith registration and use under paragraph 4(b)(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, <cialis-turkiye.com>, be transferred to the Complainant.
James A. Barker
Date: May 20, 2015