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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION ADMINISTRATIVE

Eli Lilly and Company v. David Nimrodi / PrivacyGuardian.org

Case No. D2013-1135

1. The Parties

The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America (“US”), represented by Faegre Baker Daniels LLP, US.

The Respondent is David Nimrodi of Holon, Israel / PrivacyGuardian.org of Phoenix, Arizona, US.

2. The Domain Name and Registrar

The disputed domain name <cialisespanol.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2013. On June 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 28, 2013.

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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2013.

The Center appointed George R.F. Souter as the sole panelist in this matter on July 29, 2013. 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 well-known US pharmaceutical company. Details of its US Federal trademark registration No 2,724,589 for CIALIS, dating from June 17, 1999, have been presented to the Panel. The Complainant currently has 175 registrations of its CIALIS trademark in 115 countries.

In the financial year 2012, world-wide sales of the Complainant’s CIALIS product approached USD 2 billion.

The disputed domain name was registered on October 16, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its CIALIS trademark, merely adding the non-distinctive and descriptive element “espanol” to its CIALIS trademark.

The Complainant states that it has not given the Respondent permission, authorization, consent or licence to use its CIALIS trademark, and alleges that the disputed domain name, although currently inactive, has been used in connection with an on-line pharmacy in which counterfeit and illegal versions of the Complainant’s CIALIS products were offered for sale. Consequently, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant alleges that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name of the Respondent be transferred to the Complainant or be cancelled:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e., “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers the “.com” indicator to be irrelevant in the present case.

It is well-established in decisions under the UDRP that the addition of non-distinctive and descriptive elements to an established trademark is insufficient to avoid a finding of confusing similarity between the complainant’s trademark and the disputed domain name (the decision in F. Porsche AG v. Glenn Stefan Karlsson-Springare, WIPO Case No. D2011-1727 and many others). The Panel agrees with this well-established view. The Complainant has drawn the Panel’s attention to prior decisions under the UDRP, namely The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050 and Weider Publications, Inc. v. Nextlevel.com, WIPO Case No. D2001-0050, in which “espanol” (which, although it lacks the “tilde” above the “n” in the Spanish language, is essentially the Spanish word for “Spanish”) was regarded as such a non-distinctive and descriptive element. The Panel agrees with the panels in these cases that “espanol” is, indeed, a non-distinctive and descriptive element, and, accordingly, finds that the disputed domain name is confusingly similar to the Complainant’s CIALIS trademark and that the Complainant has satisfied the test set out in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that an unrebutted prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.

In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is of the view that, in the case of an established trademark, the finding that the respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel accepts from the evidence presented that the Complainant’s CIALIS trademark is well known, and considers that the circumstances of the present case, in which it seems to the Panel that the disputed domain name was deliberately “engineered” to appear to emanate from the Complainant in connection with the Complainant’s products, make it appropriate to find that the disputed domain name was registered in bad faith.

It is well-established in decisions under the UDRP, with which the Panel agrees, that use of a disputed domain name found to be confusingly similar to a complainant’s trademark to deceivingly entice potential customers of a trademark owner to a respondent’s website or other online location constitutes use in bad faith. The website operated under the disputed domain name has been used for this purpose as it offered generic Cialis, Viagra and Levitra for sale, but the website is currently inactive. Paragraph 4(a)(iii) of the Policy requires the Panel to be satisfied that the disputed domain name “is being used” in bad faith. The Panel notes that the website operated under the disputed domain name has not been diverted to another purpose, it is simply currently inactive. In the Panel’s opinion, the Complainant has a legitimate concern that the prior bad faith use of the disputed domain name could simply be re-activated if the Panel were to decide that the disputed domain name is not being used in bad faith, and the Panel finds that it has to address the possibility that the current inactivity of the website under the disputed domain name may simply be a tactical manoeuvre. Such legitimate concern as to an inactive website was addressed by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which found in favour of the complainant. The Panel agrees with the panel’s reasoning in that case, and, accordingly, finds in the circumstances of the present case, in which the Panel believes the Respondent intended to compete in bad faith with the Complainant, that the disputed domain name is being used in bad faith and that the Complainant has satisfied the dual requirement 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 disputed domain name <cialisespanol.com> be transferred to the Complainant.

George R.F. Souter
Sole Panelist
Date: August 13, 2013

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