|Kläger||Lilly ICOS LLC|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. BM Marketing
Case No. D2006-0473
1. The Parties
The Complainant is Lilly ICOS LLC, Indianapolis, Indiana, United States of America, represented by Baker & Daniels, United States of America.
The Respondent is BM Marketing, Kelowna, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <7cialis.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2006. On April 18, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 19, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 25, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May15,2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2006.
The Center appointed Adam Samuel as the sole panelist in this matter on May19,2006. 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 joint venture between ICOS Corporation and Eli Lilly and Company. The Complainant filed for the registration of the CIALIS trademark with the United States Patent and Trademark Office in 1999. The mark was registered on the principal register on June 10, 2003. The Complainant has marketed pharmaceutical products identified by the CIALIS mark since 2003.
Respondent registered the domain name on August 10, 2004.
5. Parties’ Contentions
The Complainant owns rights to the trademark CIALIS by virtue of its registration with the United States Patent and Trademark Office and 87 registrations of the same mark covering 117 countries. Its sales of CIALIS brand products exceed $1 billion. In 1999, it registered the domain name <cialis.com> to advertise and provide information on its product. It has used <cialis.com> for this purpose since 2001.
CIALIS is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use. The addition of a descriptive word or random number to Complainant’s CIALIS trademark does not prevent a finding of confusing similarity. This does not negate the distinctiveness of Complainant’s CIALIS mark. The disputed domain name is confusingly similar to the CIALIS mark because it incorporates the mark in its entirety. With the exception of the number “7”, the domain name consists of Complainant’s CIALIS mark. It is confusingly similar to Complainant’s CIALIS trademark.
Respondent has no rights or legitimate interests in the domain name. The Complainant has not given the Respondent permission, authorization, consent or any license to use its CIALIS mark.
The CIALIS trademark is well-known and it is highly likely that the Respondent knew of the Complainant’s CIALIS mark at the time it registered the domain name in issue. Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s well-known trademark to attract internet users to a website for commercial gain. The Respondent is using Complainant’s CIALIS trademark in the domain name to attract Internet consumers to its website on which the Respondent advertises and sells “Generic” CIALIS brand product as well as medications that compete with the Complainant’s product. Respondent’s use of the Complainant’s CIALIS trademark wrongfully implies that the Complainant is endorsing and/or supporting the website and the products advertised thereon. The website does not state that the website is not authorized or affiliated with the Complainant.
The Respondent’s use of Complainant’s CIALIS mark in the domain name is potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold pharmaceutical products advertised on Respondent’s website under the mistaken impression that they are dealing with Complainant and, therefore, will be receiving safe and effective drugs approved by the U.S. Food and Drug Administration (“FDA”) or other health authorities around the world. Complainant’s CIALIS product is only available on a physician’s prescription and is manufactured, labeled, and sold in strict compliance with the FDA and other health authority laws and regulations. Respondent’s inclusion of a “FDA Approved” seal on its website also misleads consumers by adding an appearance of authenticity to the products that Respondent sells on the website. The Complainant does not make its CIALIS brand product in a “soft tab” form which is marketed through the domain name. Accordingly, that product has never been approved by the FDA.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the trademark CIALIS by virtue of its registration in the USA and elsewhere. The addition of the random number “7” does not remove the confusing similarity between the disputed domain name and the trademark in question.
A different Panel in Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No.D2005-0313 assumed that the addition of the numbers 1, 2 and 4 had no impact on whether the domain name was confusingly similar to the CIALIS trademark. This makes obvious sense.
There is a lengthy string of UDRP decisions concluding that the addition of generic words to a registered trademark does not render the domain name concerned any less confusingly similar to the Complainant’s mark. For the same reasons, the Panel finds that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not called ‘Cialis’ and does not appear to trade under that name. There is no evidence that the owner of the trademark in question, the Complainant, has authorized it to use the trademark. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the case file, and in view of the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The domain name apparently used to lead to a website selling CIALIS and Viagra, a product manufactured by one of the Complainant’s competitors. It has effectively now been vacated and is marked “Parked Free”. Whatever, the website does not indicate that CIALIS has no connection with the Respondent.
It is hard to believe that the Respondent could have selected this domain name without knowing of the Complainant’s product, ‘Cialis’, since the word has no independent meaning in any language. At best, the Respondent must have suspected that the Complainant would have registered trademark rights in the name. Nevertheless, the Respondent used that name to attract visitors to its site knowing that the Complainant had not authorized it to do so. This provides clear evidence of bad faith registration of the domain name.
Since the Respondent has not replied to the Complaint, one has to assume that the facts contained in it were true at the time of filing. At that time, the Respondent was using and knowingly infringing the Complainant’s trademark in order to attract visitors to a website to purchase drugs from it, rather than the Complainant. It is irrelevant to the question of bad faith as to whether this was likely to be successful. The drugs that could be bought through the domain name included those of the Complainant’s competitors. This just makes the absence of good faith even more apparent.
On the basis of what has been set out above, the Panel concludes that the domain name has been registered and was being used in bad faith until at least after the complaint was filed. Changing the content of a website after a complaint has been filed does not operate as a defence here. Otherwise, it would be open to any cybersquatter to remove the offending material in order to resist the complaint and then put it back up as soon as the case was concluded. Even now, the Respondent is attracting internet users to its website by knowingly using the Complainant’s trademark. For all these reasons, the Panel concludes that the domain name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <7cialis.com>, be transferred to the Complainant.
Dated: May 29, 2006