WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. P F
Case No. D2007-0357
1. The Parties
The Complainant is Lilly ICOS LLC, a limited liability company organized under the laws of the State of Delaware, United States of America, represented by Baker & Daniels, United States of America.
The Respondent is P F, Box 15, FT Laud, FL 33033, United States of America, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <cialisfocus.com> (hereinafter the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2007. On March 9, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 15, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 March 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2007.
The Center appointed Andrew Mansfield as the sole panelist in this matter on April 30, 2007. 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
Complainant owns the United States Federal trademark CIALIS. The CIALIS mark was registered on the principal register (Registration No. 2,724,589) on June 10, 2003, giving Complainant a constructive use date of June 17, 1999. In addition, Complainant has approximately 130 trademark registrations and applications in approximately 117 nations around the world. The trademark CIALIS designates a pharmaceutical preparation intended for the treatment of erectile dysfunction.
5. Parties’ Contentions
A. Complainant
Complainant alleges that Complainant’s decision to use the CIALIS trademark to identify its pharmaceutical product was made public in July 2001.
Complainant alleges that Complainant began selling pharmaceutical products identified by the CIALIS mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand. Complainant began sales in the United States in November 2003. Complaint states that the product introduction received significant press coverage worldwide.
Complainant alleges that in 2004, Complainant spent approximately $39 million (U.S.) to market and sell its CIALIS brand product worldwide, U.S. sales of the CIALIS brand product totaled more than $206 million (U.S.), and worldwide sales of CIALIS brand product were in excess of $550 million (U.S.). Complainant’s alleged sales of CIALIS brand product exceed $1 billion (U.S.).
Complainant alleges that it has an Internet presence, primarily through the website accessed by the domain name <cialis.com>, that it uses to advertise and provide information regarding its pharmaceutical product. The <cialis.com> domain name was registered by Complainant on August 10, 1999. Complainant alleges that it has used this domain name to identify a website since at least June 2001.
Respondent registered the Domain Name on January 2, 2006.
Complainant submits that the CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use.
Complainant further alleges that the Domain Name is confusingly similar to the CIALIS mark. Complainant argues that the addition of a descriptive term to the trademark CIALIS does not lessen the confusing similarity. Further, Complainant presents prior Panel decisions that found that the incorporation of a distinctive mark in its entirety into a domain name creates sufficient similarity between a mark and a domain name to render the domain name confusingly similar. Complainant urges this Panel to find in accord with those prior Panels.
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name. Complainant points out that the Domain Name appears linked to various commercial websites advertising and selling “Generic” CIALIS brand products, in addition to products which are competitive with Complainant’s product, such as VIAGRA® brand product and LEVITRA® brand product. Complainant alleges on information and belief that Respondent is financially compensated for these links to products that compete with CIALIS.
Complainant draws the attention of the Panel to prior Panel decisions that limit the circumstances under which an unaffiliated party may market and sell goods on a website located at a domain name that incorporates or includes a trademark. 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), Respondent could find a safe harbor for the sale of CIALIS® on the website at the Domain Name only if: (i) Respondent is actually offering CIALIS®; (ii) Respondent uses the website to sell only the trademarked goods or services; and (iii) the website accurately discloses Respondent’s relationship (or otherwise) with the trademark owner. Complainant alleges that none of these factors are applicable in this case.
Complainant alleges that Respondent registered and is using the Domain Name in bad faith. Complainant relies in part on Paragraph 4(b)(iv) of Policy which provides that 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 by attracting Internet users to a website for commercial gain. Complainant alleges that Respondent had constructive knowledge of Complainant’s trademark CIALIS.
Complainant requests that the Administrative Panel appointed in this administrative proceeding issue a decision that the domain name <cialisfocus.com> be transferred to Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the Complainant must establish and carry the burden of proof on each of the three elements identified above with regard to each of the disputed domain names. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The possession of United States Federally registered trademark rights by Complainant meets the threshold requirement of possessing trademark rights sufficient to satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661.
The Panel notes that Complainant has a United States Federally registered trademark to CIALIS. This alone satisfies paragraph 4(a)(i) of the Policy. In addition, Complainant owns numerous trademark registrations to the mark CIALIS in over a hundred other nations. Complainant clearly and unambiguously has exclusive rights to the trademark CIALIS.
In the present case, the Domain Name consists of the top level domain identifier “.com” and the word “focus.” Neither addition lessens the confusing similarity between the Domain Name and the mark CIALIS. The addition of a descriptive word to Complainant’s CIALIS trademark does not prevent a finding of confusing similarity. See Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO case No. D2005-0694; Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794; Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042; Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891; Lilly ICOS LLC v. Dan Eccles, D2004-0750; Lilly ICOS LLC v. Anwarul Alam, WIPO Case No. D2004-0793.
It is well established from prior Panel decisions that a domain name that incorporates a distinctive mark in its entirety creates sufficient similarity between the mark and a domain name to render the domain name confusingly similar. EAuto v. Triple S. Auto Parts, WIPO case No. D2000-0047. See also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.
B. Rights or Legitimate Interests
Complainant asserts that it is aware of no rights or legitimate interests that Respondent has in the disputed domain name. The disputed domain name is not the name of the Respondent as listed in the Whois data (“PF”) and there is no evidence before the Panel that the Respondent is commonly known by the disputed domain name. Complainant asserts that it has not authorized Respondent to use the mark. The Panel is satisfied that complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the disputed domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Respondent has sought to benefit from the confusion between the disputed Domain Name and Complainant’s trademark. Respondent’s conduct is similar to the example provided in Paragraph 4(b)(iv) of the Policy.
The Panel finds that the evidence supports the conclusion that Respondent is benefiting or has benefited financially from the confusion it has created between Complainant’s trademark CIALIS and the Domain Name. Internet users seeking information on CIALIS or locations to purchase prescribed CIALIS may be misled into purchasing a competitor’s product.
The Panel finds that the distinctiveness and the famousness of the CIALIS mark support a finding that the registration of the Domain Name was not accidental or somehow innocently similar to the CIALIS mark. The fact that products competitive with CIALIS are linked through the Domain Name further strengthens this finding. The late date of registration also provides evidence that Respondent knew of Complainant’s mark and intentionally selected a domain name similar to that mark. This conduct evidences bad faith registration. Further, the current use of the Domain Name evidences bad faith use.
Complainant has met its burden under Paragraph 4(a)(iii) of the Policy.
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 <cialisfocus.com> be transferred to the Complainant.
Andrew Mansfield
Sole Panelist
Dated: May 14, 2007