Eli Lilly and Company v. Protected Domain Services, Customer
ID: NCR-1221337/JM Networks
Case No. D2010-1477
1. The Parties
The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America, represented by Baker & Daniels, United States of America.
The Respondent is Protected Domain Services, Customer ID: NCR-1221337/JM Networks of Denver, Colorado, United States of America and Sandy Springs, Georgia, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2010. On September 2, 2010, the Center transmitted by email to Name.com LLC. a request for registrar verification in connection with the disputed domain name. On September 7, 2010, Name.com LLC. 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 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint on September 20, 2010. The Complainant filed an amendment to the Complaint on September 20, 2010.
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 September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2010.
The Center appointed Angela Fox as the sole panelist in this matter on November 10, 2010. 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.
The Panel issued Panel Order No. 1 on December 6, 2010, ordering the parties to comment on whether the Respondent’s apparent use of the disputed domain name fell within the scope of paragraph 4(c)(i) of the Policy. The Complainant replied to this Order on December 12, 2010. The Respondent was given an opportunity to respond to the Complainant’s further submissions, but it did not do so.
4. Factual Background
The Complainant is a major American pharmaceutical manufacturer with a business that extends worldwide. One of its products is a drug for the treatment of erectile dysfunction marketed under the brand name CIALIS, an invented word coined by the Complainant for this product. The Complainant began marketing the CIALIS product in January 2003 in the European Union, followed shortly by sales in Australia and New Zealand. The CIALIS product was launched in the United States in November 2003.
The Complainant owns numerous trademark applications and registrations for CIALIS. In total, it owns some 15 pending applications and 162 registrations covering 117 countries for this mark. Copies of registration certificates for some of these were annexed to the Complaint, including United States federal trademark registration no. 2,724,589 for CIALIS, filed on June 17, 1999 and registered on June 10, 2003.
The CIALIS brand has been a commercial success. In 2004 alone, the United States sales totaled more than USD 206 million, and worldwide sales were in excess of USD 550 million. These increased by 32% and 35% respectively in 2005, and increased steadily year on year thereafter until by 2009 worldwide sales had risen to USD 1.559 billion. The Complainant has invested considerable sums in marketing the CIALIS brand worldwide, spending approximately USD 39 million in 2004 alone. The CIALIS product garnered considerable media attention as being effective for longer than other well-known erectile dysfunction treatments such as VIAGRA, and copies of relevant press coverage were also annexed to the Complaint.
In addition to its trademark registrations, the Complainant also owns the domain name , which it has used since at least as early as June 2001 to host a website that advertises and provides information relating to the CIALIS product. An extract from this website was also annexed to the Complaint.
The disputed domain name was registered on December 13, 2009. It resolves to a website that appears to offer a competing herbal product for the treatment of erectile dysfunction under the brand name CIALX. The website displays the word “CIALX” in large bold letters with the description, “a cheaper alternative to Cialis”. The website states:
“CIALX is a popular and much cheaper NATURAL alternative to other ED drugs like Cialis, Viagra and Levitra…If we compare CIALX with other ED drugs like Cialis, it shows comparative efficacy. When compared to drugs like Viagra and Levitra, CIALX offers an extended advantage of working up to 36 hours!”
There follows a list of packaging size and price options, each with an “Add to Cart” icon, and a “Product Description” setting out the uses of the CIALX product, its benefits, how it works, how and when it should be taken, storage instructions, and pre-use guidelines. There are also several articles on the CIALIS product (not CIALX) and how it works.
A small-print notice at the bottom of the Respondent’s website states “Copyright © 2009 CIALX. All Rights Reserved” and “CIALX is a Licensed Online Pharmacy… Cialis, Viagra and Levitra is [sic] the registered brand name of Eli Lilly Ic. [sic] Pfizer Inc and Bayer Corp respectively. We have no affiliation or relationship with Eli Lilly Inc, Pfizer Inc. Bayer Corp or their subsidiaries. The brand names mentioned are for informational purposes only.”
Clicking on “Add to Cart” by any of the size and pricing options takes the visitor to a new page for a website called “Pharma RX One”, located at “www.my-ed-shop.com”, also setting out quantity and pricing options, but this time with no reference to CIALX. Instead, the product is referred to as simply “Generic Cialis”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its CIALIS trademark. It submits that the CIALIS mark and the disputed domain name share a substantially similar visual impression and are virtually identical from a phonetic perspective. The differences are, moreover, at the end of the words, where the Complainant contends they are less likely to be noticed. The Complainant states that CIALIS possesses a high degree of inherent distinctiveness, and that the slight differences between the disputed domain name and CIALIS are therefore not sufficient to allow the Internet user to distinguish between them. The Complainant also argues that the disputed domain name is a deliberate misspelling of CIALIS and that the Respondent’s registration of it amounts to “typo-squatting”, designed to attract Internet users who mistype or misspell CIALIS when attempting to type the domain name into a browser bar.
The Complainant also submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent’s use of the disputed domain name to offer a generic product competing with the CIALIS brand is an attempt to capitalize on the valuable reputation and goodwill of the CIALIS mark, that such use amounts to trademark infringement, and that it cannot, therefore, give rise to a right or legitimate interest in the disputed domain name.
Finally, the Complainant submits that the disputed domain name was registered and has been used in bad faith. It says that the Respondent must have known of the CIALIS brand when the disputed domain name was registered in 2009, in light of the brand’s high-profile media coverage and commercial success in the field of treatments for erectile dysfunction, in which the Respondent also appears to trade. The Respondent’s registration of a confusingly similar domain name was therefore intended to take advantage of the reputation of the CIALIS brand by creating a likelihood of confusion for commercial gain, and is therefore evidence of both registration and use in bad faith. The Complainant further submits that the Respondent’s registration and use of the disputed domain name is in bad faith because use of the disputed domain name is potentially harmful to consumers, who may buy products from the linked website under the mistaken belief that they are buying the Complainant’s CIALIS product and therefore a drug that has been approved by the United States Food and Drug Administration or other health authorities.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
The Panel further notes the submission of an informative filing on behalf of “Protected Domain Services” dated September 7, 2010 requesting it not to be named as Respondent given its disclosure of registrant information. The Panel notes, however, the WhoIs details at the time of filing of the Complaint and such UDRP decisions as RapidShare AG, Christian Schmid v. Protected Domain Services/Dmytro Gerasymenko (WIPO Case No. D2010-1071), where privacy protection services have been recognised as respondents. In this case as in D2010-1071, the WhoIs details refer to “Protected Domain Services” and relevant customer ID details, which are included in the designation of Respondent in this case. The Panel in its discretion considers this designation sufficient and appropriate.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns registered trademark rights in CIALIS.
The distinctive portion of the disputed domain name, CIALX, differs from CIALIS only in the substitution of the suffix “x” for “is”. Visually and phonetically, the first two syllables of “cialx” and “cialis” are identical, and the minor differences in the suffixes may not be enough to distinguish the mark from the disputed domain name to Internet users who are acquainted with the CIALIS brand but may remember it only imperfectly.
The Panel agrees that some Internet users familiar with the CIALIS brand but remembering it only imperfectly might be confused into thinking that the disputed domain name is that of, or in some way related to, the Complainant, given the visual similarities with CIALIS and the high international profile and commercial success of that brand. There is, moreover, a chance, albeit perhaps somewhat smaller, that Internet users could misstype or misspell “cialis” as “cialx” in a browser bar, given that the letters “x” and “s” are situated close to each other on a normal keyboard and the letter “i” might be mistakenly omitted by the typist.
The fact that the Respondent’s website describes its competing product as a cheaper alternative to the CIALIS drug does not dispel the inherent likelihood of confusion between the disputed domain name and the Complainant’s CIALIS trademark, since these indications appear only once the Internet user is at the Respondent’s site. Moreover, some of the content of the Respondent’s website, such as the articles about the CIALIS product, leave it unclear whether the website is connected with the Complainant. The small print at the bottom of the linked site, which states that the site is not linked to the Complainant’s organisation, is visually insignificant and many Internet users may not even notice it.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not offered any submissions to prove that it has a right or legitimate interest in the disputed domain name. The Complainant has made out a prima facie case that the Respondent has no such rights or interests.
That is not, however, the end of the matter. Under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. This paragraph is relevant here because although the Respondent has filed no response, it is nonetheless clear from the Complaint that the Respondent has been using the disputed domain name commercially to link to a website offering a herbal remedy for the treatment of erectile dysfunction. If this use amounts to a bona fide offering of goods pre-dating notice to the Respondent of the dispute, then the Complaint will fail under the second arm of the Policy.
The Complainant did not address this point in the Complaint, and the Panel therefore issued a Panel Order seeking submissions from both parties as to whether the disputed domain name had been in use in connection with a bona fide offering of goods since before notice to the Respondent of the dispute, under paragraph 4(c)(i) of the Polilcy. The Complainant responded acknowledging that there had been commercial use of the disputed domain name, but arguing that such use should not provide the Respondent with a right or legitimate interest because the use amounted to trademark infringement, and was therefore not bona fide use. The Respondent was supplied with a copy of these further submissions from the Complainant and given an opportunity to respond, but failed to do so.
The Panel notes the Complainant’s submissions in reply to the Panel Order. However, the UDRP is not, and never was, intended to address cases of pure trademark infringement. Rather, it is designed to handle cases of cybersquatting, and the mere fact that the use of a disputed domain name may amount to trademark infringement will not, on its own, deprive a respondent of a claim to a right or legitimate interest where the domain name was adopted and used commercially in good faith, without knowledge that the use infringed a registered mark.
There are, however, factors that may take commercial use that pre-dates notice of a complaint outside the scope of paragraph 4(c)(i)of the Policy. This is likely to be the case, for example, where the facts suggest a deliberate intent to adopt a domain name that is confusingly similar to a complainant’s trademark. In the Panel’s view, that applies here. There is no doubt that the Respondent was aware of the Complainant when it registered the disputed domain name and, indeed, all indications are that the Complainant’s CIALIS brand inspired the Respondent’s choice of domain and product name. “Cialis” is an invented word with no meaning, and there is no plausible explanation for the Respondent’s adoption of the disputed domain name other than a desire to get as close as possible to CIALIS. The identity of trading field and the many references to CIALIS on the Respondent’s website further underline the Respondent’s knowledge of the CIALIS brand. In all, the circumstances here suggest that the Respondent deliberately sought to sail close to the wind by adopting a domain name so close to CIALIS that it was likely to evoke the brand name CIALIS in the minds of some Internet users, and was likely to result in some Internet users being confused into visiting the Respondent’s website, where they were offered a competing product.
Whether or not the Respondent’s conduct amounts to trademark infringement is not a question for these proceedings. However, in the Panel’s view, the Respondent’s deliberate attempt to sail close to the wind points away from a finding that the commercial use of the disputed domain name was in good faith. The Respondent’s conduct does not, in the view of the Panel, confer a right or legitimate interest under paragraph 4(c)(i) of the Policy.
Other panel decisions have also found that use which intentionally trades on the fame and reputation of a complainant’s trademark should not be regarded as bona fide use within the meaning of paragraph 4(c)(i) of the Policy (see, among others, Dial-A-Mattress Operating Corp. v. Noname.com, Inc., WIPO Case No. D2001 0240, and Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000 0847, where the Panel concluded that “…use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”).
The Panel finds that in adopting and using the disputed domain name in this case, the Respondent has also intentionally traded on the fame and commercial success of the Complainant’s trademark.
The Respondent is in default and has not therefore sought to rely on paragraph 4(c)(ii) of the Policy, which provides that a panel may find a right or legitimate interest in a disputed domain name where the circumstances suggest that the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. In this case, the Panel notes the small-print disclaimer at the bottom of the Respondent’s website indicating that “CIALX is a Licensed Online Pharmacy”. However, there are no other references to CIALX as an entity name on the linked website, and the Respondent has made no effort to show that it has been known by the disputed domain name. In the absence of any supporting evidence, the Panel declines to find that the Respondent has been commonly known by the disputed domain name.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, evidence of the following circumstance, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Panel has already found that the Respondent deliberately adopted a domain name that was likely to attract Internet users to its website as a result of its confusing similarity with the Complainant’s CIALIS trademark. The Respondent sought to gain commercially from this confusing similarity by using the disputed domain name to offer a competing product. It seems likely that in adopting the disputed domain name, the Respondent intended to get as close as possible to CIALIS without actually copying it, thereby leaving open the possibility that conflict with the Complainant’s rights might be avoided. In doing so, the Respondent was taking the chance that not all Internet users would be able to distinguish between the disputed domain name and the Complainant’s CIALIS brand, and the Respondent must accept the consequences of its actions.
In Dial-A-Mattress Operating Corp. v. Noname.com, Inc., WIPO Case No. D2001-0240, the Panel stated, “it appears that the Respondent seeks to register domain names that arguably avoid conflict with trademark rights, and then creates a business around the domain names. In some cases, this strategy may in fact avoid conflict with the rights of others. In this case, however, Respondent cannot avoid the inevitable consequences of its deliberate actions: its use of the Domain Name is likely to mislead consumers based on confusion with Complainant’s mark. ”The Panel in that case went on to find bad faith under paragraph 4(b)(iv) of the Policy.
In the Panel’s view, these comments apply similarly to this case. The Respondent here also appears deliberately to have adopted a domain name that was closely similar to the Complainant’s trademark in order to attract Internet users to its website, where it offered a competing product. The disputed domain name is sufficiently close to the Complainant’s trademark that the Panel has found there to be a likelihood of confusion, and indeed, the facts suggest that the Respondent deliberately adopted the disputed domain name because of its close similarity to the Complainant’s trademark. The Panel considers that registration and use in bad faith is made out under paragraph 4(b)(iv) of the Policy.
The Panel therefore concludes that the disputed domain name was registered and has been used in bad faith.
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 be transferred to the Complainant.
Dated: January 4, 2011