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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eli Lilly and Company v. Kazim Kestor

Case No. D2021-0319

1. The Parties

The Complainant is Eli Lilly and Company, United States of America, represented by Faegre Drinker Biddle & Reath, LLP, United States of America.

The Respondent is Kazim Kestor, Turkey.

2. The Domain Name and Registrar

The disputed domain name <cialis.site> (“Domain Name”) is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was initially filed in Turkish with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 3, 2021, 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.

The Registrar also indicated that the language of the Registration Agreement was English. The Center sent an email communication in English and Turkish, to the Parties on February 5, 2021, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for Turkish to be the language of the proceeding, a Complaint translated into English, or a request for Turkish to be the language of the proceeding. The Complainant filed a Complaint translated into English on February 5, 2021. The Respondent did not comment on the language of the proceeding.

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 February 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2021.

The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on March 22, 2021. 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 trademark CIALIS in connection with a pharmaceutical product used for the treatment of erectile dysfunction. The earliest trademark 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 138 trade mark registrations for CIALIS covering 128 countries. Sales began in the USA and in Turkey in 2003 and sales began in China in 2005.

Complainant also owns Registration No.99/020073 for the CIALIS mark registered in Turkey on November 26, 1999.

The Domain Name was registered on August 26, 2020 and was resolving, at the time the Complaint was filed, to a website what sells allegedly CIALIS brand products and some pharmaceutical products. The Domain Name does not currently resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant has registered trademark rights in CIALIS. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s CIALIS trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks.

The term “cialis” in the Domain Name is used to direct consumers in search of CIALIS brand products to a website which advertised CIALIS products as well as competitive products. Also; according to the Complainant, the Respondent’s web page exacerbates confusion by its unauthorized use of Complainant’s CIALIS trademark and the Complainant's distinctive CIALIS tablet and Swirl logo (which tablet appearance and Swirl logo are also registered trademarks owned by the Complainant in many countries throughout the world).

The Complainant argues that the Respondent had knowledge of the Complainant and its products at the time of registration of the Domain Name. The Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered CIALIS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on his website or location. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

Lastly, the Complainant adds that the Respondent’s use of the Complainant’s CIALIS mark in the Domain Name is potentially harmful to health of many unsuspecting consumers who may purchase products advertised through the Respondent’s website under the mistaken impression that they are dealing with the Complainant and, therefore, will be receiving safe and effective drugs approved by health authorities around the world. The Complainant’s CIALIS brand product is only available on a physician’s prescription and is manufactured, labeled, and sold in strict compliance with the health authority laws and regulations.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name <cialis.site> contains the Complainant’s well-known trademark CIALIS.

The generic Top-Level Domain (“gTLD”) extension “.site” is generally not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the Domain Name.

Therefore, the Panel finds that the Domain Name is confusingly similar to the trademark CIALIS in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.

It is clear that the Respondent has not demonstrated any bona fide offering of goods and services for its use of the Domain Name, nor has the Respondent shown that it has been commonly known by the Domain Name. Rather, the evidence of the Complainant suggests that the Respondent has used the Domain Name in an attempt to trade off the goodwill associated with the Complainant’s trademark.

The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Name or otherwise.

The Respondent’s website has the look and feel to be an official site of the Complainant and is selling what appears to be CIALIS products.

A reseller or distributor can be making a bona fide offering of goods or services and thus have a right or legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, WIPO Overview 3.0, section 2.8.1): (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

These requirements are not cumulatively fulfilled in the present case. The Domain Name suggests that it is an official site of the Complainant. The website associated with the Domain Name extensively reproduces without authorization by the Complainant the Complainant’s trademarks and its official product images, while not including any disclaimer, without any statement as to the true ownership of the website under the Domain Name or the ownership of the trademarks by the Complainant and its (or lack of) relationship to the Respondent. The website under the Domain Name does not include any information regarding the identity of the provider of the associated website.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Taking into account the Respondent’s use of the Domain Name, the Panel concludes that the Respondent was aware of the Complainant and its business when the Respondent registered the Domain Name.

The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. By reproducing the Complainant’s trademarks in the Domain Name and on the web page, the Respondent’s website suggests to be an affiliated dealer of the Complainant. This is supported by the Respondent’s use of the Complainant’s official product images.

The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

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, <cialis.site> be transferred to the Complainant.

Dilek Ustun Ekdial
Sole Panelist
Date: April 7, 2021

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