WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Private Registration, WhoisGuardService.com
Case No. D2016-1737
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 Private Registration, WhoisGuardService.com of Nanjing, Jiangsu, China
2. The Domain Names and Registrar
The disputed domain names <cialis-buy20mg.com> and <cialis-canada20mg.com> (the "Domain Names") are registered with Nanjing Imperiosus Technology Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2016. On August 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 30, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 2, 2016, the Center transmitted by email in both English and Chinese to the Parties a request for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in both English and Chinese, and the proceeding commenced on September 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 3, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on October 7, 2016. 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 pharmaceutical company with its head office in the United States of America ("USA"). The Complainant uses the trade mark CIALIS in connection with a pharmaceutical product used for the treatment of erectile dysfunction. The earliest trade mark registration for CIALIS in the USA dates back to June 10, 2003 under Trade Mark Registration No. 2724589. Sale of the Cialis product in the European Union ("EU") began in January 2003, followed by sales in Australia and New Zealand. Sales in the USA started in November 2003. The Complainant has now got at least 190 trade mark registrations for CIALIS covering 132 countries. This includes Canada. In 2004, approximately USD 39 million was spent to market and sell the CIALIS brand worldwide. US sales of the CIALIS brand totaled more than USD 206 million and worldwide sales were in excess of USD 550 million. By 2013, worldwide sales of Cialis product increased to USD 2.159 billion. This was increased by 6% to USD 2.291 billion in 2014 and in 2015 worldwide sales increased to USD 2.31 billion.
The Domain Names were registered on March 9, 2015. They are both registered to a privacy protection service. The Registrar in its verification response did not reveal the underlying party or parties. The Domain Names are connected to websites which are identical in appearance. They both resolve to the same online pharmacy, Trust Pharmacy and serve as hyperlinks selling generic versions of the Complainant's Cialis product (the "Websites"). The Websites bear the Cialis name and also offers to sell different version of Cialis including Cialis Super Active, Cialis Soft, Cialis Professional, Cialis Black, Cialis Extra Dosage and Cialis Jelly. Other competing brands are also sold on the Websites.
5. Parties' Contentions
The Complainant contends that the Domain Names are identical to the trade mark CIALIS, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and being used in bad faith. The Complainant requests transfer of the Domain Names, both of which it believes are related and under management and control of a single, unknown owner/registrant.
The basis of its belief that the registrants are related and under management and control of a single unknown owner/registrant is as follows:
1. Both Domain Names are registered to the Registrar on the same day.
2. Both Domain Names are registered to the same privacy protection service.
3. The Websites are identical.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
B. Preliminary Procedural Issue - Consolidation of Proceedings
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent's cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Complainant's well-known CIALIS trade mark and each has been used in an identical manner to divert consumers from the Complainant's website. The evidence shows that both Domain Names resolve to identical Websites. They were registered on the same day to the same privacy protection service and the same Registrar. Further the Registrar has not provided details of an underlying registrant or registrants when it sent its verification. All of these points to the Complainant being the target of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Complainant's rights in the CIALIS mark. Furthermore, the Complainant's claims against the Domain Names involve common questions of law and fact.
The Respondent had the opportunity but did not respond to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant's claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
C. Language of Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits in paragraph IV of the Complaint and confirmed in an email on September 2, 2016 that the language of the proceeding should be English.
The Complainant contends that the Websites are in English and the Registrar has registration agreements both in English and Chinese. For the Complainant to conduct the proceeding in Chinese would significantly add to the Complainant's costs and cause delay and inconvenience.
The Panel accepts the Complainant's submissions regarding the language of the proceeding and is satisfied that the Respondent appears to understand English. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the Complaint. The Respondent also chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
D. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the CIALIS trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Names comprise the Complainant's distinctive trade mark CIALIS in its entirety which is identical to the trade mark, a hyphen and the descriptive terms "buy20mg" for one and the geographical and descriptive terms "canada20mg" for the other. The addition of these terms which are apt to describe the Complainant's products does nothing to minimize the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD").
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
E. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that the Respondent is advertising and selling illegal, counterfeit versions of the Cialis product on the Websites. There can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572). Further the Websites also advertise and sell competing products like Viaga. The consensus view under paragraph 2.3 of WIPO Overview 2.0 says this:
"Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trade mark holder. The respondent must also not try to 'corner the market' in domain names that reflect the trade mark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trade mark."
In this case, the products offered for sale are counterfeits, there is nothing on the Websites explaining the relationship between the Complainant and the Respondent. The Websites are selling competitor's goods. It seems to this Panel that the content of the Websites is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
F. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant's trade mark marks when it registered the Domain Names. The Complainant has provided sufficient evidence that the Domain Names registration post dates the CIALIS trade mark registrations.
The very incorporation of the Complainant's trade mark in the Domain Names and the display of the Complainant's trade mark and counterfeit products on the Website confirm the Respondent's awareness of the trade mark. Thus, the Panel concludes that the Respondent deliberately registered the Domain Names in bad faith.
The Panel also finds that the actual use of the Domain Names is in bad faith. The products offered for sale on the Websites are counterfeit or generic versions of the Cialis product for the reasons set out above. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
In addition, the Websites were set up to deliberately mislead Internet users that they are connected to, authorised by or affiliated to the Complainant. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent's Websites are and the product sold on them are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) 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 Domain Names <cialis-buy20mg.com> and <cialis-canada20mg.com> be transferred to the Complainant.
Date: October 11, 2016