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WIPO Arbitration and Mediation Center


Eli Lilly and Company v. Perfect Privacy, LLC, Henry Smith / Callie Martz, Henry Smith

Case No. D2015-2014

1. The Parties

Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America ("United States"), represented by Faegre Baker Daniels LLP, United States.

Respondent is Perfect Privacy, LLC, Henry Smith of Jacksonville, Florida, United States / Callie Martz, Henry Smith of Seattle, Washington, United States.

2. The Domain Name and Registrar

The disputed domain name <lillylatinoamerica.com> is registered with Eagle Eye Domains, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2015. On November 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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. The Center sent an email communication to the Complainant on November 17, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 19, 2015.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 11, 2015.

The Center appointed Martin Schwimmer as the sole panelist in this matter on December 16, 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

Complainant, Eli Lilly and Company, a pharmaceutical company, was founded by Colonel Eli Lilly in 1876. It owns incontestable trademark registrations in the United States for the LILLY trademark (the "Trademark"), some of which state first use dates of 1895. Complainant owns trademark registrations in 148 countries, including Latin American countries.

The date of creation of the disputed domain name is June 22, 2015.

The Panel has no information about Respondent other than the registrant information contained in the WhoIs, which shows that the registrant's name is Callie Martz and the registrant's organization is Henry Smith.

5. Parties' Contentions

A. Complainant

Complainant alleges that its Trademark is well known and notorious. It provides various trademark registrations and citations of prior UDRP decisions in support of its contentions. It provides evidence of its use of the Trademark, as well as of its domain name <lilly.com>.

Complainant denies that Respondent has any license, permission, or authorization to use the Trademark. Furthermore, in support of Complainant's contention that Respondent is "impersonating" Complainant, Complainant attaches a print-out of the home page of the website to which the disputed domain name resolves, which prominently displays Complainant's house logo alongside its full company name. The page contains text suggesting that the site originates with Complainant.

B. Respondent

Respondent did not respond to Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to Complainant's Trademark. Complainant easily establishes ownership of rights in the Trademark. The disputed domain name incorporates the Trademark in its entirety. The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to such registered trademark (see AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758).

The addition of the descriptive term "latinoamerica" does not diminish the confusing similarity. See NUBE, S.L. v. Alexandre Deckleva, WIPO Case. No. D2013-1675 (finding inter alia that the domain name <pachalatinoamerica.com> is confusingly similar to the trademark PACHA).

Furthermore, it is standard practice by UDRP panels to disregard the generic Top-Level Domain ("gTLD") suffix ".com", which does little if anything to change the connotation of the second-level name. Therefore, the Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant's Trademark.

B. Rights or Legitimate Interests

The second ground to be demonstrated by Complainant, according to the provisions of the Policy, is Respondent's absence of any rights or legitimate interests in the disputed domain name, per paragraph 4(c) of the Policy.

Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.

The Panel is satisfied that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the Trademark in a domain name or in any other manner. Complainant alleges that there is no such connection here. The Panel confirms that the disputed domain name resolves to a page that evidences no legitimate noncommercial or fair use. Furthermore, Respondent's prominent use of Complainant's logo and company name suggest, to use Complainant's term, "impersonation" of Complainant, which would exceed any imaginable fair use.

In addition, Respondent has not submitted any reply to Complainant's contentions.

Therefore, in light of Complainant's prima facie case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As previous panels have found, Complainant's Trademark is famous. See, e.g., Eli Lilly and Company v. WhoisGuard Protected, WIPO Case. No. D2007-0162. Even if that had not been the case, Respondent's reproduction of Complainant's logo and its company name would establish Respondent's knowledge of Complainant's rights beyond doubt, as well as intent to trade off those rights.

Complainant has provided evidence that Respondent is utilizing the disputed domain name to solicit transactions relating to used medical equipment. If medical equipment is not precisely within Complainant's range of pharmaceutical products, it can be viewed as related in the sense that there is some overlap as to target customers and channels of trade.

This Panel is satisfied that the Respondent used the disputed domain name to divert Internet traffic to a website displaying Complainant's house logo and company name, but not authorized by Complainant, for the purpose of achieving commercial gain. The Panel also notes that the Respondent apparently supplied inaccurate WhoIs information, which in this instance is not a determinative fact but certainly consistent with Respondent's overall behavior. In total, such conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.

The third element, registration and use in bad faith, is satisfied.

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 disputed domain name <lillylatinoamerica.com> be transferred to Complainant

Martin Schwimmer
Sole Panelist
Date: December 21, 2015