WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eli Lilly and Company v. Darren K. Headley, Tim B. Hartman, Lana D. Cummings, Dante K. Ruiz, Esther G. Roberts, Joey W. Durfee

Case No. D2013-1303

1. The Parties

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

The Respondents are Darren K. Headley of North Dade, Florida; Tim B. Hartman of Towson, Maryland; Lana D. Cummings of Manchester, New Hampshire; Dante K. Ruiz of Athens; Esther G. Roberts of Austin, Texas; Joey W. Durfee of Birmingham, Alabama, United States of America (collectively hereinafter referred to as “the Respondent”).

2. The Domain Names and Registrar

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2013. On July 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 22, 2013, the Registrar 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” 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 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on August 15, 2013.

The Center appointed Dennis A. Foster as the sole panelist in this matter on August 21, 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

Since 2003, the Complainant, a United States of America company, has sold pharmaceutical products under its “Cialis” brand name on a worldwide basis. The Complainant has obtained valid trademark registrations from the proper authorities in numerous countries, including the United States Patent and Trademark Office (“USPTO”), for the CIALIS mark (e.g., USPTO Registration No. 2,724,589: registered June 10, 2003).

The disputed domain names, <buycialisnow-online.com>, <buycialisonlineed.com>, <buycialis-online-opp.com>, <buycialisonlinetdi.com>, <buy-cialisonline-us.com>, <buycialisonline247.com>, <canadiancialissofttabs.com>, <cco-cialis-online.com>, <cialisonlinebuycheap.com> and <wheretobuycialisonline25mg.com>, are registered by the Respondent. The respective dates of registration are: November 15, 2012; October 8, 2012; December 1, 2012; January 20, 2013; December 1, 2012; October 13, 2012; October 13, 2012; February 8, 2013; October 8, 2012; and October 13, 2012. All of the disputed domain names are linked to websites that offer pharmaceutical products that correspond to and/or compete directly with the products sold by the Complainant.

5. Parties’ Contentions

A. Complainant

- Although there are multiple Respondents in this case, the disputed domain name registrations all link back to a common source utilizing the same IP address, registrar, domain server and online pharmacy, along with the same or similar websites. Therefore, the Panel should permit a consolidation of challenges to the disputed domain names into one proceeding.

- The Complainant’s predecessor-in-interest filed a USPTO trademark application for the CIALIS mark as early as June, 1999, and such trademark registration was obtained by 2003. The decision to use the CIALIS trademark in connection with pharmaceutical products was made in 2001, and by 2003 the Complainant was using that mark in conjunction with sales of such products.

- The Complainant has spent millions of dollars to promote its products sold under the CIALIS mark, and the most recent annual worldwide sales of such products amounted to nearly USD 2 billion. The Complainant also uses its website found at “www.cialis.com” to advertise and sell the aforesaid products.

- The Complainant’s CIALIS trademark is distinctive, as found by several prior UDRP panels, and the disputed domain names are all confusingly similar to the mark. Each of the disputed domain names contains the entire CIALIS mark and merely add one or more generic terms. Such minor deviation does not serve to avoid a finding of confusing similarity, as has been noted in many prior UDRP decisions involving the CIALIS mark.

- the Respondent has no rights or legitimate interests in any of the disputed domain names. The names resolve to the website of Canadian Pharmacy, an online pharmacy that, among other things, offers counterfeit versions of the Complainant’s products as well as the purported products of the Complainant’s rivals. The Respondent likely receives “click-through” revenue from such linkage.

- the Respondent is not authorized or licensed by the Complainant to use its trademark

- The disputed domain names were registered and are being used in bad faith. The Respondent had constructive knowledge of the Complainant’s mark by virtue of its trademark registration and likely had actual knowledge due to the notoriety of the products sold under that mark.

- The Respondent’s bad faith is demonstrated by its attempt to gain commercially by misleading consumers to the Respondent’s websites due to confusion with the Complainant’s trademark. Moreover, the Respondent has engaged in a pattern of such behavior, not only with respect to multiple domain names involving the Complainant’s CIALIS mark but also with respect to a third-party competitor’s VIAGRA trademark.

- Finally the Respondent’s conduct is particularly reprehensible because consumers face potential harm in using the websites connected with the disputed domain names to purchase counterfeit pharmaceutical products that have not been approved by the appropriate governmental authorities.

B. Respondent

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

6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents

With respect to the disputed domain names, the Complainant has requested that the multiple Respondents be consolidated for decision in this one proceeding. After consulting prior UDRP decisions addressing similar circumstances, the Panel believes that there is significant precedent supporting consideration for such consolidation when the disputed domain names are determined to be under common control. See, for example, Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to every day in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo., WIPO Case No. D2012-2212 (“UDRP jurisprudence suggests consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve”); and Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.

The Complainant has provided the Panel with evidence (Annexes 2 – 7 to the Complaint) that all of the disputed domain names were registered with the same Registrar, use the same name servers (i.e., <nsi.prohostingsols.com>) and have the same IP address. Moreover, the Complainant’s evidence (Annexes 16 – 26 to the Complaint) also indicates that the disputed domain names all resolve to the same on-line pharmacy where the web pages are similar, all offering pharmaceutical products of the same nature. Finally, the disputed domain names all include the entire CIALIS trademark combined with various other common words or numbers. The Panel believes that such evidence validates the Complainant’s reasonable conclusion that the disputed domain names are under common control. See, Allcaneat Foods, Ltd. v. Karma Ventures LLC and Dave’s Domain’s, NAF Claim No. FA1335801 (“Circumstances indicating common control or interest may be shared administrative or technical contacts, shared postal or email addresses or that the domain names in dispute resolve into essentially identical websites.”); and Guccio Gucci S.p.A, supra (“The arguments relied upon by the Complainant in support of its consolidation request include: (1) The use of common registration information such as administrative contact details, technical contact details, postal addresses, email addresses, IP addresses, and telephone and fax numbers; (2) The use of the same or similar names in the registration information; (3) Resolving disputed domain names to the same or similar Websites; (4) Using the same domain name servers; (5) Using the same registrars; and (6) Close similarity between the disputed domain names, each of which incorporates the Trade Mark in its entirety in conjunction with non-distinctive, generic or geographical terms.”)

Therefore, in line with the reasoning above and as allowed under paragraphs 3(c) and 10(e) of the Rules, the Panel determines that the Respondents in this case shall be consolidated as one Respondent for the purposes of the Panel’s Decision below.

7. Discussion and Findings

Pursuant to Policy paragraphs 4(a)(i) – (iii), the Panel shall find that the Complainant has prevailed in these proceedings and order transfer of the disputed domain names, <buycialisnow-online.com>, <buycialisonlineed.com>, <buycialis-online-opp.com>, <buycialisonlinetdi.com>, <buy-cialisonline-us.com>, <buycialisonline247.com>, <canadiancialissofttabs.com>, <cco-cialis-online.com>, <cialisonlinebuycheap.com> and <wheretobuycialisonline25mg.com>, if the Complainant proves that:

- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

- The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

There is no question in the Panel’s mind that the Complainant, who has provided satisfactory evidence (Annex 12 to the Complaint) of its USPTO trademark registration – as well as other valid national trademark registrations – for the CIALIS mark, possesses sufficient rights in that mark for purposes of Policy paragraph 4(a)(i). See, The Schneider Group, Inc. v. Jack Mann, WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”); and Lilly ICOS LLC v. Andrew Riegel, WIPO Case No. D2006-1088 (“The Panel finds that the Complainant’s registration with the USPTO sufficiently establishes the Complainant’s rights in the CIALIS mark.”).

The Complainant has noted for the Panel that several prior UDRP panels have found that the CIALIS trademark is very distinctive. See, for example, Lilly ICOS LLC v. Leonid Mineev, WIPO Case No. D2007-0476; and Lilly ICOS LLC v. Clarkepharma Co., WIPO Case No. D2007-0447 (“Complainant contends (and the Panel accepts as uncontroverted) that the CIALIS trademark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use, and as such, is entitled to be considered to be a highly distinctive mark.”). The Panel notes for itself that each and every one of the disputed domain names contains the CIALIS mark in its entirety. Most of the disputed domain names, such as <canadiancialissofttabs.com> and <wheretobuycialisonline25mg.com>, include additional generic terms and/or numbers which, together, dwarf that mark in alphanumeric length. However, the CIALIS mark is at the core of all of the disputed domain names and, given the distinctive nature of the mark, ultimately dominates the disputed domain names visually and with respect to meaning. Nine of the ten disputed domain names suggest where prospective consumers might purchase CIALIS marked products online by including the words, “buy” and/or “online”; and the tenth, <canadiancialissofttabs.com>, is suggestive of an online location for a Canadian version of some of those products. Thus, the Panel believes that the generic terms and numbers serve as mere modifiers of that dominant mark, and would simply confuse reasonable Internet users concerning the relationship between the respective disputed domain name and the Complainant’s trademark as well as products sold under the said mark. Also, the addition of “.com” to each disputed domain name is of no consequence since such a suffix is required in registering the disputed domain names. As a result, the Panel determines that all of the disputed domain names are confusingly similar to the Complainant’s CIALIS trademark. See Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099 (where the panel found the disputed domain name, <buy-cialis-tadalafil.com>, to be confusingly similar to the mark CIALIS); Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694 (in which 23 disputed domain names that contained the CIALIS mark in its entirety, along with various additional generic terms, were all found to be confusingly similar to that trademark); Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (finding <cialis-drug-online-buying-guide.com> to be confusingly similar to the CIALIS trademark.); and Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“…the addition of the generic top-level domain (gTLD) name ‘.com’ is likewise without legal significance since use of a gTLD is required of domain name registrants.”).

In line with the reasoning above, the Panel finds that the Complainant has succeeded in proving that the disputed domain names are identical or confusingly similar to a trademark in with the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has furnished the Panel with overwhelming evidence (Annexes 16 – 26 to the Complaint) that the disputed domain names are used for links to websites that, among other things, purport to sell variations of the Complainant’s own pharmaceutical products. Since the Complainant has asserted, without contradiction from the Respondent, that the Complainant has granted the Respondent no authorization or license to use the disputed domain names, which have been found above to be confusingly similar to the Complainant’s trademark, the Panel cannot conclude that such use constitutes “a bona fide offering of goods and services” per Policy, paragraph 4(c)(i). Furthermore, as the Panel agrees with the Complainant’s unanswered contention that the Respondent likely receives at least “click-through” fees (i.e., commercial gain) for such linkage, the Panel must also disallow application of Policy, paragraph 4(c)(iii) to this case. See, John Rich & Sons Investment Holding Company v. Mary Jones, NAF Claim No. FA1366614 (“The Panel agrees and finds that Respondent is not making a bona fide offering of goods or services under Policy [paragraph] 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy [paragraph] 4(c)(iii), where it is using the domain name to market and sell counterfeit goods of Complainant.”); and Lilly ICOS LLC v. John Hopking / Neo net Ltd., supra (“As a general matter, when the holder of a domain name that is confusingly similar to an established mark uses the domain name to divert Internet users to its own competing website for commercial gain, such use is neither a bona fide offering of goods and services, nor a legitimate non-commercial or fair use under paragraphs 4(c)(i) and (iii) of the Policy.”).

Examining all of the various names found among the Respondents in this case, the Panel finds none that even remotely resemble any of the disputed domain names and thus concludes it is wholly unlikely that any of those Respondents is commonly known as any one of the disputed domain names. Therefore, the Panel rules out Policy, paragraph 4(c)(ii) as a possible rationale that might support the proposition that the Respondent has rights or legitimate interests in the disputed domain names.

Because the Respondent has presented no arguments on its behalf regarding its rights or legitimate interests in the disputed domain names, and in view of the fact that the Panel cannot find where paragraph 4(c) of the Policy might avail the Respondent in this regard, the Panel is persuaded by the prima facie case put forward by the Complainant that the Respondent has no such rights or legitimate interests.

Consequently, the Panel finds that the Complainant has succeeded in proving that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

It is clear to the Panel, based again on the overwhelming evidence presented by the Complainant, that the Respondent is using the disputed domain names for commercial gain in diverting Internet users to the Respondent’s websites due to the likelihood of confusion between the disputed domain names and the Complainant’s well-known trademark as to the source, affiliation, or sponsorship of those websites. As such, the Panel believes that the Respondent has run afoul of the circumstance cited in Policy, paragraph 4(b)(iv) with respect to bad faith registration and use of the disputed domain names. See, Certification Trendz, Ltd. v. selfexamgines / John Adword, NAF Claim No. FA 1343934 (“The Panel finds that Respondent’s efforts to attract, mislead and profit from Complainant’s customers reveals bad faith registration and use according to Policy [paragraph] 4(b)(iv).”); and Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101 (“Policy Paragraph 4(b)(iv) provides that registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith.”).

Moreover, the Complainant has furnished just as convincing evidence (Annexes 29 – 34 to the Complaint) that the Respondent has engaged in a pattern of such illegitimate registration and use of domain names not only in connection with the Complainant’s mark, but in connection with the mark of the Complainant’s chief competitor, which sells pharmaceutical products under the VIAGRA trademark. Thus, the Panel is compelled also to believe that the Respondent has registered and is using the disputed domain names in bad faith per paragraph 4(b)(ii) as well. See, for example, Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (“…the practice of registering domain names containing the trademarks of other companies can indicate that the contested domain names were registered and are being used in bad faith.”); and Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (“A ‘pattern of conduct’ as required in Paragraph 4.b.(ii) typically involves multiple domain names directed against multiple Complainants, but may involve multiple domain names directed against a single Complainant.”).

In closing, the Panel must add that the Respondent’s illegitimate use of the disputed domain names is particularly egregious because, as argued by the Complainant, that use may lead consumers to purchase drugs that are not properly regulated, possibly causing serious harm to those consumers.

As a result, the Panel finds that the Complainant has succeeded in proving that the disputed domain names were registered and are being used in bad faith.

8. 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 names, <buycialisnow-online.com>, <buycialisonlineed.com>, <buycialis-online-opp.com>, <buycialisonlinetdi.com>, <buy-cialisonline-us.com>, <buycialisonline247.com>, <canadiancialissofttabs.com>, <cco-cialis-online.com>, <cialisonlinebuycheap.com>, and <wheretobuycialisonline25mg.com>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Date: September 4, 2013