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 Respondent is Julie W. Patton of New Winchester, Ohio, United States of America.
The disputed domain names <sialiscom.com> and <wwwsialis.com> (the “Domain Names”) are registered with Todaynic.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2013. On July 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 31, 2013, the Registrar transmitted its verification response to the Center by email confirming that the Respondent is the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2013.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 2, 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 paragraph 7 of the Rules.
The Complainant, a publicly traded company listed on the New York Stock Exchange, is a business corporation organized under the laws of the State of Indiana, United States, and headquartered in Indianapolis, Indiana. According to the Complainant’s website at “www.lilly.com”, the Complainant is the tenth largest pharmaceutical company in the world.
The Complainant produces an erectile dysfunction drug, tadalafil, marketed under the brand name CIALIS, for which the Complainant operates a separate website at “www.cialis.com”. Media coverage of CIALIS dates back to 2001. Sales in the United States commenced in 2003, and the Complainant has spent millions of dollars promoting CIALIS since then. Worldwide sales of CIALIS totaled nearly USD 2 billion in 2012.
The Complainant holds trademark registrations for CIALIS in multiple countries, including United States Trademark Registration No. 2724589 (registered June 10, 2003).
The Domain Names were created on December 20, 2012 and registered in the name of the Respondent, an individual residing in the State of Ohio, United States.
The Domain Names each resolve to a similar website (the “Respondent’s websites”) that displays the Complainant’s CIALIS word and design marks, along with graphics and informational content copied from the Complainant’s website at “www.cialis.com”. The Respondent’s websites also prominently feature a link not found on the Complainant’s website, to “Buy CIALIS online without prescription”. This link redirects visitors to a “Canadian Pharmacy” website at “canadianonlinepmc.net”. According to the Complaint, “Canadian Pharmacy is an online pharmacy that advertised and sold counterfeit and/or illegal versions of Complainant's CIALIS brand pharmaceutical product, as well as allegedly competitive products”.
At the time of this decision, the “Canadian Pharmacy” website linked from the Respondent’s websites has been replaced with a page displaying an announcement by the Cybercrime Investigations Unit of the United States Food and Drug Administration (“FDA”) that the domain name has been seized pursuant to an order of a United States District Court. The page also includes a link to an FDA website page with information concerning the risks of purchasing misbranded, adulterated, or counterfeit drugs online.
The Complainant asserts that the Domain Names are confusingly similar to its CIALIS mark, which it has not authorized the Respondent to use and that the Respondent has no rights or legitimate interests in the Domain Names.
The Complainant infers that the Domain Names were registered and used in bad faith, in an effort to mislead Internet users for commercial gain. The Complainant contends as well that the Domain Names were registered in an attempt to prevent the Complainant from registering domain names corresponding to its mark, as part of a pattern of such conduct. Finally, the Complainant argues that a finding of bad faith is warranted because the Domain Names were used to mislead consumers into purchasing drugs that might not be safe or effective.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant holds registered CIALIS trademarks. The Domain Names are slightly different, with an “s” instead of a “c” and with the addition of strings – “com” and “www”, respectively – that are common in Domain Name System URLs but normally separated by periods from the rest of the domain name.
Because Internet users are accustomed to viewing “com” and “www” as part of a URL address, those characters are not distinctive portions of the Domain Names for UDRP purposes. Indeed, both legitimate website operators and cybersquatters often register domain name variants in the forms “www[name].com” or “[name]com.com”, in order to redirect Internet users who neglect to type a period after “www” or before “com”. The Registrar’s website, for example, automatically suggests such alternatives, as do other registrars.
The substitution of “s” for “c” also does not avoid confusion with the Complainant’s CIALIS mark. CIALIS is an invented term, where the “c” is pronounced the same as “s” in English and many other languages. Thus, “sialis” is close in appearance to CIALIS, and it is also phonetically identical.
UDRP panels customarily treat the first element of a UDRP complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
The Panel finds that the Domain Names in the current proceeding are sufficiently similar to the Complainant’s CIALIS mark, both visually and aurally, that they should be deemed “confusingly similar” for purposes of the first element of the Complaint.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
“(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has done so in this proceeding, by demonstrating that the Domain Names are confusingly similar to its invented and well-known CIALIS trademark. It is undisputed that the Respondent does not have permission to use the mark, and it appears that the Respondent’s websites infringe the Complainant’s trademark rights and copyrights by displaying the Complainant’s marks and logos, as well as images and text copied from the Complainant’s website. The Respondent’s websites appear to be deliberately misleading as to source or affiliation, so this cannot be considered a use of the domain names in connection with a bona fide offering of goods or services. There is no indication on those websites that the Respondent is known by a name corresponding to the Domain Names, and the Respondent’s websites do not make noncommercial fair use of the mark. “Sialis” can have a generic sense: it may refer to a genus of bluebirds or of alderflies. But the Respondent’s websites explicitly concern the Complainant’s CIALIS drug, not bird watching or bug collecting. The Respondent has not submitted a Response in this proceeding advancing any other theories for claiming rights or legitimate interests in the Domain Names, and the Panel finds none evident in the record.
Accordingly, the Panel concludes that the second element of the Complaint has been established.
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following, on which the Complainant relies:
“(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. . .
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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 evidence for a finding under paragraph 4(b)(ii) is thin. The Complainant itself owns the most directly corresponding domain name, <cialis.com>, and this proceeding involves only two Domain Names, which hardly establishes a “pattern” of conduct. The Complainant observes that several other domain names incorporating CIALIS or variations thereof (which are the subjects of a separate pending UDRP proceeding) also link to the same “Canadian Pharmacy” website and employ the same name servers. Their ownership may well be related, but they are registered under different names. The Panel declines to find bad faith under paragraph 4(b)(ii) in these circumstances, and it is unnecessary to do so, because the evidence is so strong for bad faith as described in paragraph 4(b)(iv).
The Domain Names themselves are confusingly similar to the CIALIS mark, and the manner in which they have been used points inescapably to a conclusion of bad faith. The Complainant’s CIALIS brand is distinctive, well known, and commercially successful, as it had been for some eight years before the Respondent registered the Domain Names. The Respondent’s websites copy the Complainant’s marks, logo, text, and images, in a blatant attempt to mislead website visitors as to source or affiliation. The Respondent’s websites then encourage visitors to “Buy CIALIS online without prescription”, linking to an online pharmacy website that has recently been shut down following a criminal investigation by the United States Food and Drug Administration. On this record, there is no plausible explanation for the Respondent’s registration and use of the Domain Names other than to exploit the Complainant’s well-established trademark for commercial gain. This squarely fits the example of bad faith described in the Policy, paragraph 4(b)(iv). In this Panel’s view, using the Domain Names to promote illegal or counterfeit drugs may also suggest bad faith on the part of the Respondent.
The Panel concludes that the Domain Names were registered and are being used in bad faith within the meaning of the Policy.
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, <sialiscom.com> and <wwwsialis.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: September 6, 2013