WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Whois Agent, Domain Protection Services, Inc. / Sedef Bulutlu, Privacy Administrator, Anonymize, Inc.
Case No. D2021-3872
1. The Parties
The Complainant is Eli Lilly and Company, United States of America (“US”), represented by Faegre Drinker Biddle & Reath, US.
The Respondent is Whois Agent, Domain Protection Services, Inc., US / Sedef Bulutlu and Privacy Administrator, Anonymize, Inc., Turkey.
2. The Domain Names and Registrars
The disputed domain name <e-cialis.com> is registered with Epik, Inc (the “Registrar”). The disputed domain name <originalcialis.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 19, 2021 and November 22, 2021, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 23, 2021.
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 Respondents of the Complaint, and the proceedings commenced on December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 27, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on January 7, 2022. 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.
The Complainant seeks permission in its Amended Complaint to proceed against the two Respondents; Sedef Bulutlu in respect of <originalcialis> and Anonymize,Inc in respect of <e-cialis.com> pursuant to paragraphs 3(c) and 10(e) of the UDRP Rules. The Complainant submits that consolidation of the two Respondents is appropriate provided it can show that the disputed domain names or the websites to which they resolve are subject to common control and that the Panel, having regard to all the relevant circumstances determines that consolidation would be procedurally efficient, fair and equitable to all parties. This is supported by previous authority including, for example; Eli Lilly and Company v. Darren K, Headley et al. WIPO Case No. D2013-1303.
The Complainant relies upon the evidence contained in Annex 3 to the Complaint where the domain name <originalcialis.com> automatically redirects Internet visitors to the website associated with the other domain name in dispute <e-cialis.com>. The Panel deals with this evidence in section 6B below .In the Panel’s view this evidence supports consolidation. The Panel also considers it procedurally efficient to do so and does not detract from the fairness of the proceedings. It takes into account that the Respondents have chosen not to participate by submitting a Response. The Panel therefore agrees to consolidate the registrants as a single Respondent in the proceedings.
Accordingly, the Respondents are referred to in the singular as Respondent in the decision.
4. Factual Background
The Complainant is an international pharmaceutical company, which has owned rights in the trade mark CIALIS since June 17, 1999 when its predecessor in interest filed for registration of CIALIS as a trade mark with the US Patent and Trade Mark Office. The mark was registered as No.2,724,589 on June 10, 2003.
The Complainant also specifically relies upon Turkish registration No.99/020073 for the mark CIALIS dated November 26, 1999.
Sales of pharmaceutical products under the mark CIALIS began in the European Union on January 22, 2003, followed thereafter by sales in Australia and New Zealand. Sales also began in the US and Turkey in 2003. Examples of media coverage of the launch of the product are set out in Annexes 5 and 6 to the Complaint.
The present position is that the Complainant owns at least 138 registrations for CIALIS and five pending applications covering 128 countries around the world. In addition, the Complainant owns 83 registrations of the CIALIS Tablet Design trade mark covering 75 countries and three pending applications. Copies of some of the certificates of registration for the CIALIS mark are set out in Annex 7 to the Complaint.
In 2004 the Complainant spent approximately USD 39 million marketing and selling products under the CIALIS brand. As set out in Annex 8 to the Complaint US sales in 2004 of the CIALIS brand product totaled over USD 206 million and worldwide sales were in excess of USD 550 million. Since 2004 sales have steadily and significantly increased so that in 2016 worldwide sales increased to USD 2472 billion, USD 2323 billion in 2017 and USD 1852 billion in 2018. Sales were over USD 890 million in 2019 and USD 605 million in 2020. The Complainant therefore submits that the mark CIALIS has become well-known throughout the world.
The Respondent registered the two domain names in dispute; <originalcialis.com> and<e-cialis.com> on September 27, 2018 and June 27, 2021 respectively so that the Complainant’s trade mark rights predate the registration of the disputed domain names. According to the documents provided by the Complainant, the disputed domain name <originalcialis.com> served as a hyperlink to the other disputed domain name <e-cialis.com> seemingly promoting pharmaceutical products under the brand CIALIS. At the time of the decision, the disputed domain names no longer resolve to active websites.
The Complainant has also had an Internet presence primarily through its website “www.cialis.com” which it has used since at least June 2001 to promote its pharmaceutical product. Its domain name was registered by its predecessor in interest on August 10, 1999, (Annex 9). A printed portion of the Complainant’s website as of January 2021 is set out at Annex 11 which shows that <cialis.com> now redirects to a webpage within the Complainant’s corporate website; “www.lilly.com”.
In the absence of a Response the Panel accepts the above evidence adduced by the Complainant in the Complaint and accompanying annexes to be true.
5. Parties’ Contentions
The Complainant submits on the evidence;
i. That it owns trade mark rights in the mark CIALIS which predate the date of registration of the disputed domain names in contention and that the disputed domain names are confusingly similar to the mark CIALIS.
ii. The Respondent has no right or legitimate interests in the disputed domain names. In particular there is no evidence that the Respondent is commonly known by the disputed domain names. Moreover the disputed domain name <originalcialis.com> serves as a hyperlink to the other disputed domain name <e-cialis.com> which promotes counterfeit pharmaceutical products under the brand CIALIS.
iii. The Respondent registered the disputed domain names and is using them in bad faith. The Complainant submits that it is highly likely that the Respondent would have been aware of the Complainant’s mark CIALIS at the date of registration and has used the disputed domain names in offering counterfeit products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
On the evidence of the Complainant’s trade mark rights in the mark CIALIS set out in section 4 above, the Panel is satisfied that the Complainant owns trade mark rights for the mark CIALIS which predate the dates of registration of the disputed domain names.
The disputed domain name <originalcialis.com> consists of the mark CIALIS in its entirety together with the term “original”. It is well established that the addition of such terms does not prevent a finding of confusing similarity particularly when the trade mark is reproduced in its entirety.
The disputed domain name <e-cialis.com> consists of the mark CIALIS in its entirety together with the prefix “e-” which consist of a lower-case letter, “e” together with a hyphen. In the Panel’s view this prefix is descriptive and as submitted by the Complainant implies e-commerce or online activity. Again, the addition of a prefix to the mark CIALIS does not prevent a finding of confusing similarity.
The Panel is supported in its view by the cited earlier decision in Lilly ICOS LLC v Jay Kim, WIPO Case No. D2004-0891 which found that the addition of the generic word “generic” and the letter “a” to the Complainant’s mark CIALIS did not prevent a finding of confusing similarity.
Both disputed domain names incorporate the generic Top-Level Domain (gTLD) “.com”. It is well-established that gTLDs can be disregarded in finding confusing similarity.
Accordingly the Panel finds that the disputed domain names are confusingly similar to the trade mark CIALIS in which the Complainant has rights within paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. It relies upon the following;
i. There is no evidence that the Respondent is commonly known by the name CIALIS. The active website associated with <originalcialis.com> serves as a hyperlink to the second domain name <e-cialis.com> which resolves to a webpage which promotes and appears to sell a CIALIS brand product. This is shown by the screenshots exhibited at Annex 3 to the Complaint.
The Complainant submits that the CIALIS brand products promoted at the webpage are infringing and counterfeit pharmaceutical products. The Panel accepts this submission in the absence of a Response and contrary evidence from the Respondent. It is well-established that the marketing of illegal products evidences no rights or legitimate interests.
ii. The evidence contained in the screenshots exhibited at Annex 3 demonstrates that the Respondent is using the Complainant’s marks CIALIS and CIALIS with a Swirl logo, which is the subject of trade mark registration throughout the world as evidenced in Annex 7 to the Complaint.
iii. The Respondent also claims on the web pages exhibited at Annex 3 that it is, contrary to the fact the Complainant’s official distributor and representative for the Complainant’s CIALIS products in Turkey.
iv. The Complainant confirms that the Respondent is not permitted, authorized or licensed by the Complainant to use the mark CIALIS either to promote the sale of its products or as a constituent element of the disputed domain names.
On the basis of the above and in the absence of a Response the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain names within Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that the evidence of the Complainant’s use of the trade mark CIALIS since 1999 and media promotion since 2001 creates a reasonable inference that the trade mark CIALIS is well-known and because of that the Respondent would have known of the Complainant’s rights in the mark at the date of registration of the disputed domain names.
Given the absence of evidence to the contrary and the subsequent use of CIALIS made by the Respondent as shown by the web pages exhibited at Annex 3, the Panel finds that the disputed domain names were registered in bad faith.
The Complainant also relies upon the evidence contained in exhibit Annex 3 to show that the disputed domain names are being used by the Respondent to utilize the Complainant’s trade mark CIALIS by attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s mark within paragraph 4(b)(iv) of the Policy. In summary, the Respondent is using the CIALIS mark as part of the disputed domain names to attract Internet users to its websites from which the Respondent derives a financial benefit by promoting and selling counterfeit products under the mark CIALIS.
The Complainant draws attention to the fact that unsuspecting customers may purchase pharmaceutical products sold on the Respondent’s website under the mistaken impression that they are purchasing from an authorized distributor of the Complainant and that the drugs are safe and effective and sold as required by health regulations. This is not so and the drugs sold are potentially harmful to health.
The Panel having considered the Complainant’s evidence and in the absence of a Response finds that the Complainant has established that the domain names were registered by and are being used by the Respondent in bad faith within Paragraph 4(a)(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 names; <e-cialis.com> and <originalcialis.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: January 19, 2021