WIPO Domain Name Decision: D2005-1177

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Ivan Petrov

Case No. D2005-1177

1. The Parties

The Complainant is Lilly ICOS LLC of Wilmington, Delaware, United States of America, represented by Baker & Daniels LLP of Indianapolis, Indiana, United States of America.

The Respondent is Ivan Petrov, of Sofia, Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <cialisinfo.biz> (the “Domain Name”) is registered with Wild West Domains, Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 11, 2005, and in hard copy on November 17, 2005. The Center transmitted its request for registrar verification to the Registrar on November 14, 2005. The Registrar replied the same day, confirming that it had received a copy of the Complaint, that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction at the location of the principal office of the Registrar; and providing the contact details for the registration on its Whois database.

The Center verified that 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 November 17, 2005. The tracking records indicate that the notification by courier could not be delivered to the postal address in the contact details on the Registrar’s Whois database, but that the notification by email was successfully transmitted. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2005.

The Center appointed Jonathan Turner as the sole panelist in this matter on December 16, 2005. 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 Panel is satisfied that the Complaint complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant supplies a pharmaceutical product for the treatment of erectile dysfunction under the trademark CIALIS. The generic name of the product is Tadalafil. The Complainant applied for registration of the mark CIALIS in the United States on June 17, 1999, and now has registrations for this mark in respect of over 117 countries, including the United States.

The Complainant announced its intention to sell the product under this mark in July 2001, and its first sales were made under it in the European Union on January 22, 2003. The domain name <cialis.com> has been used for a website promoting the product since June 2001. There has been extensive worldwide publicity relating to the Complainant’s launch and sales of the product under the mark. In 2004, the Complainant spent in excess of US $39 million on marketing the product under the mark and its worldwide sales of the product under the mark exceeded US $550 million.

The Respondent registered the Domain Name on April 22, 2004, and is using it for a website which offers for sale “Cialis” under the heading “Brand” and what it describes as “Tadalafil – Generic Cialis” under the heading “Generic”. “BUY NOW” buttons for the latter link to an online pharmacy at the web address “www.rx-mex.com”. The website at “www.rx-mex.com” also describes an affiliate program under which owners of websites which provide links to the pharmacy’s websites are paid commissions on sales to Internet users who access this website via these links.

The homepage of the Respondent’s website is also headed with the web address “www.usa-rx-pharmacy.com” and has a footer in small type which states “All trademarks and registered marks are the properties of their respective companies. / Copyright © 2003-2004 USA-rx-pharmacy.com | All Rights Reserved.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its well-known and distinctive mark CIALIS, in which it has rights antedating the Respondent’s registration of the Domain Name. The Complainant submits that the addition of the generic term “info” to its mark in the Domain Name does not avert confusion.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not authorized the Respondent to use the CIALIS trademark. Complainant alleges that the Respondent is using the Domain Name to promote competing goods, which may be untested and whose sale in the United States infringes the Complainant’s patent. According to the Complainant, this does not constitute a bona fide offering of goods or services or legitimate or fair use within the meaning of paragraphs 4(c)(i) or 4(c)(iii) of the Policy.

The Complainant further contends that the Domain Name was registered and is being used in bad faith. It alleges that the Respondent is obtaining a commercial gain in the form of click-through commissions through diverting Internet users attracted to the Respondent’s website by the use of the Complainant’s mark in the Domain Name to the website of a supplier of competing generic products. The Complainant also asserts that the Respondent’s use of the Domain Name is potentially harmful to the health of unsuspecting consumers, who may purchase the generic products advertised on the Respondent’s website in the mistaken belief that they are dealing with the Complainant and that they will therefore receive products approved by regulatory authorities in the United States and other countries.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

As mentioned above, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove that the Domain Name is identical or confusingly similar to a mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith. Each of these requirements will be considered in turn:

A. Identical or Confusingly Similar

It is clear that the Complainant has registered rights in the mark CIALIS in numerous countries.

The Panel is satisfied that the Domain Name is confusingly similar to this mark. The addition of the generic term “info” and the generic top level domain suffix “.biz” do not avoid confusion, since at least some Internet users are liable to assume that the Domain Name identifies a website of or approved by the Complainant providing information about the Complainant’s product sold under the mark CIALIS.

The Panel accordingly concludes that the first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel considers that the use made of the Domain Name by the Respondent has not been in connection with a bona fide offering of goods or services so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy.

The Respondent’s use of the Domain Name is not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods or services placed on the market by its owner (as to which, see Koninklijke Philips Electronics N.V. v. Cun Siang Wang, WIPO Case No. D2000-1778). In accordance with the propositions laid down in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903, and followed in many subsequent cases (see particularly Deutsche Telekom AG v. Mighty LLC/Domain Admin, WIPO Case No. D2005-0027), this principle can only be invoked under the Policy if (i) the Respondent is actually offering the goods or services at issue; (ii) the Respondent uses the website to sell only the trademarked goods or services; and (iii) the website accurately discloses the Respondent’s relationship (or otherwise) with the trademark owner.

In this case, the Respondent’s website promotes an online pharmacy which supplies products of the Complainant’s competitors, as well as offering products of the Complainant: In addition, it does not contain any clear indication that it is not authorised by the Complainant, and exacerbates confusion by its use of the term “Generic Cialis” for products which have not been sold or approved by the Complainant.

The Panel is satisfied that the Respondent has not been commonly known by the Domain Name and that he is not making legitimate non-commercial or fair use of it. On the contrary, the Panel finds that the Respondent is using the Domain Name to obtain commercial gain by misleadingly diverting consumers seeking the Complainant’s website or product to his website which promotes a supplier of competing products.

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 Panel is satisfied by the undisputed evidence that the Respondent is using the Domain Name to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark in order to obtain commercial gain in the form of click-through commissions.

The Panel considers that Internet users are liable to assume that the Domain Name indicates a website authorized by the Complainant, and to be diverted through the sponsored links on that website to a supplier selling products which have not been sold or approved by the Complainant.

This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy. This evidence stands unrebutted.

The Panel concludes that the third requirement of the Policy is satisfied.

7. Decision

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 <cialisinfo.biz> be transferred to the Complainant.

Jonathan Turner
Sole Panelist

Dated: January 3, 2006