Eli Lilly & Co. v. Xigris Internet Services

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Eli Lilly

and Company v. Xigris Internet Services

Case No.

D2001-1086

1. The Parties

Complainant is Eli Lilly

and Company, an Indiana corporation with a principal place of business at Lilly

Corporate Center, Indianapolis, Indiana, USA.

Respondent in this administrative

proceeding is Xigris Internet Services with a current mailing address listed

as "Host Master Col. Escalon, San Salvador, El Salvador. Respondent's

Representative (hereinafter also referred to as "Respondent") is Xavier

Garcia Robles, with an address in Catalunya ,Spain.

2. The Domain Name and

Registrar

The Domain Name at issue

[hereinafter the Domain Name] is:

<xigris.com>

The Registrar of the Domain

Name is Address Creation, with an address at 53 Barcelona Irvine, CA 92614,

USA.

3. Procedural History

On August 31, 2001, Complainant

submitted, via e-mail, a Complaint [hereinafter the Complaint], with

the WIPO Arbitration and Mediation Center [hereinafter the Center]. The

Center received the hardcopy of the Complaint on September 4, 2001. On September

4, 2001, the Center confirmed receipt of the Complaint to the Complainant. On

September 5, 2001, the Center informed the Registrar, Address Creation, that

the Complaint had been submitted to the Center regarding the Domain Name, and

asked for a verification of the registrant information. The said verification

results from the Registrar were received by the Center on September 7, 2001.

On September 7, 2001, the

Respondent communicated to the Center that he had modified his contact information

in the Whois database of the registered Domain Name. The Center acknowledged

receipt of this e-mail on September 10, 2001.

The Center then proceeded

to verify that the Complaint satisfied the formal requirements of the Rules

for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as

the ICANN Rules) and the World Intellectual Property Organisation Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred

to as the WIPO Rules), including the payment of the requisite fees. The

verification of compliance with the formal requirements was completed in the

affirmative on September 11, 2001.

In a letter dated September

11, 2001, the Center informed the Respondent of the commencement of the proceeding

as of September 11, 2001, and of the necessity of responding to the Complaint

within 20 days. Evidence provided by the Center supports the finding that the

Center acted diligently in its attempts to inform the Respondent of the proceeding.

On August September 29,

2001, the Center received five emails from the Respondent asking why he had

not yet received the Complaint. On October 1, 2001, the Center responded to

the Complainant and explained that the Complaint had not been successfully transmitted

via e-mail due to technical difficulties (size of the file) and had not been

successfully transmitted via mail due to the fact that the address on the courier

package was not updated to the Respondent's new address. The Respondent was

assured that he would receive the Complaint and would have 20 days to respond.

Further emails were exchanged by the Center and the Respondent on October 2 and 3 2001,

regarding same (supplying of new email address and confirming postal address

by the Respondent).

In a letter dated October

4, 2001, the Center re-informed the Respondent of the commencement of the proceeding

as of October 4, 2001, and of the necessity of responding to the Complaint within

20 days. Evidence provided by the Center supports the finding that the Center

acted diligently in its attempts to inform the Respondent of the proceeding.

On October 11, 2001, the

Respondent confirmed, via email that he had received the Complaint. The Center

confirmed receipt of this email on October 12, 2001, and requested that the

Response be submitted no later than October 24, 2001.

On October 22, 2001, the

Center received a Response (hereinafter the Response) from the Respondent, in

its electronic form. The Center received Response via fax on October 23, 2001,

and acknowledged receipt of the Response on the same day. Also, on October 23,

2001, the Center informed the Respondent that its Response was deficient (it

was not submitted as one original and four copies and it exceeded the 5,000

word limit as established by the WIPO Rules. The Respondent was asked to remedy

the situation before October 29, 2001.

On October 24, 2001, the

Center received the amended Response from the Respondent, in its electronic

form. Said Response was confirmed to have been received by the Center on October

25, 2001 (via email).

On November 1, 2001, the

Center received a supplemental Filing from the Complainant rebutting certain

allegations made by the Respondent in his Response. The Center acknowledged

receipt of this supplement and advised the Complainant that it was the Panel

which would decide upon its admissibility in the proceedings; after review of

all the proceedings, the panel so finds.

The Panel has reviewed

the documentary evidence provided by both parties and the Panel agrees with

the Center's assessment that the Complaint complies with the formal requirements

of the ICANN Rules and the WIPO Rules.

The Panel believes it was

constituted in compliance with the ICANN Rules and the WIPO Rules and has

also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

On November 8, 2001, the

Center informed both parties, by e-mail, that an administrative panel had been

appointed.

The Panel has received

no further submissions from either party since its formation.

The Panel is obliged to

issue a decision on or prior to November 22, 2001, in the English language and

is unaware of any other proceedings, which may have been undertaken by the parties

or others in the present matter.

4. Factual Background

The Complainant in this

administrative proceeding, Eli Lilly and Company, is a leader in the pharmaceutical

industry. The company, founded 125 years ago, employs today more than 35,000

people worldwide and markets its medicines in 159 countries.

The evidence shows that,

the trademark consisting of the term XIGRIS has been registered by the Complainant

to identify pharmaceutical products in 28 countries (counting the European Union

as 15 countries) and is the subject of pending registration applications filed

by the Complainant in thirty-nine (39) countries (As set forth in Annex 4

to this Complaint).

No evidence has been submitted

regarding the attributes and businesses of the Respondent although it appears

from statements made contained within the Response that the Respondent is a

person who is planning to undertake a project, which could one day offer an

array of internet services under the name XIGRIS.

As shown by the evidence

consisting of a Whois printout registration, the Respondent registered the Domain

Name, which consisted of <xigris.com> on May 9, 2001.

The evidence also reveals

that after registering the Domain Name and having held it for more than six

months, Respondent has not created a web site or made any use of the Domain

Name.

There is no relationship

between the Respondent and the Complainant. The Respondent is not a Licensee

of the Complainant nor has he otherwise obtained any authorisation to use the

Complainant’s marks or apply for any Domain Name incorporating any of these

marks.

5. Parties’ Contentions

A. Complainant

The Complainant alleges

that it owns rights in the trademark XIGRIS and has based its Complaint on said

rights. Complainant has registered the trademark in 28 countries (counting the

European Union as 15 countries) and has filed applications to register the Mark

in 39 countries. (A copy of the Complainant's certificates of registration for

the Mark, together with the Declaration of Rosemary Turpin, the Complainant's

senior trademark assistant, are attached as Annex S to this Complaint).

The Complainant alleges

rights in the trademark date back to as early as August 5, 1998, when it

filed for registration of the Mark in the United States. The Complainant's rights

in the Mark pre-date the Respondent's registration of the Domain Name.

Confusingly Similar

The Complainant alleges

that the Domain Name registered by the Respondent is identical or confusingly

similar to the trademark XIGRIS.

No Legitimate Rights

The Complainant alleges

that each of the four addresses that the Respondent has provided for the Domain

Name in Costa Rica, Bolivia, Nicaragua and El Salvador has been found to be

false. A person or company with rights or legitimate interests in the Domain

Name would have no reason to provide any false registration information.

Attached as Annex 6

to the Complaint is a copy of the registration information submitted by

the Respondent for the Domain Name, as obtained by the Complainant from the

Whois database. Affidavits from investigators in each of those four countries

documenting the falsity of the Respondent's registration information are attached

to this Complaint as Annex 7, 8, 9 and 10 respectively.

The Complainant alleges

that upon a thorough research there does not seem to exist an entity with the

name Xigris Internet Services anywhere in the world. Dun & Bradstreet was

unable to locate any company in San Salvador or elsewhere under the name "Xigris."

(Dun & Bradstreet's database features more than 64 million companies and

is based upon business information gathered in 214 countries around the world

in 95 languages or dialects). The affidavit of Kenneth Gregory attests to this

in Annex 11 of the Complaint.

The Complainant further

alleges that pursuant to a search for trademarks containing the word "Xigris"

in over 200 countries or registers failed to identify any "Xigris"

marks owned by the Respondent, or by any person or company other than the Complainant.

A copy of the results of the World Identical Screening Search (WISS) conducted

by Thomson & Thomson is attached as Annex 12 of the Complaint.

The Complainant alleges

that the word "Xigris" was invented by the Complainant in the process

of developing its trademark and, to the Complainant's knowledge, has no meaning

in any language other than serving as the Complainant's trademark. As such,

"Xigris" is not a word that another person or company would adopt

or use unless for purposes of selling it to the Complainant or the Complainant's

competitors or of seeking to create a false or misleading impression of association

with the Complainant.

The Complainant further

alleges that the Respondent offers no products or services under the Domain

Name, nor is the Respondent commonly known by the Domain Name or making any

non-commercial or fair use of the Domain Name. There is not currently, nor to

the Complainant's knowledge has there ever been, any active website accessible

by the Domain Name.

Bad Faith

The Complainant alleges

that the Respondent's registration of the Domain Name was in bad faith since

the Respondent has provided false registration information in connection with

the Domain Name. Providing false registration information has been found to

be evidence of bad faith.

The Complainant alleges

that the Respondent committed an unacceptable act: "In all TLDs, knowing

submission of false contact data, or use of a domain for illegal purposes, should

be grounds for revocation of the registration." Minimum safeguards for

the Introduction of New TLDs - Joint Statement from the Business and Intellectual

Property Constituencies (September 2000).

The Complainant alleges

that the Respondent's providing of false registration information for the Domain

Name to Addresscreation.com was also in breach of the Respondent's obligations

under the Address Creation Domain Registration Agreement (copy attached as Annex

13 to the Complaint), which states: "You are required to submit and

keep current the following information, as part of the registration process.

This information must be current, complete and accurate."

The Complainant alleges

that the Respondent's use of the Domain Name in bad faith is shown by the Respondent's

offer to sell the Domain Name to the Complainant for $15,000 and agreement (later

breached by the Respondent) to sell the Domain Name to the Complainant for $10,000.

(Attested to on August 14, 2001, by Bibiana Agudelo-Aguillon, Annex 2 to

the Complaint).

The Complainant alleges

that the Respondent has registered other parties' trademarks as domain names

on at least two other occasions. Annex 14 to the Complaint shows the

Respondent's registration information for <garfieldonline.com> and <jonesapparelgroup.com>,

as well as for the Domain Name. As can be seen from Annex 14, each has the same

Bolivian address information, showing that the Respondent registered all three.

The Respondent's pattern of bad faith registration of other domain names clearly

indicates its bad faith for this Domain Name.

B. Respondent

The Respondent alleges

(sic) that it appears that the Complainant registered its Xigris trademark

in the U.S. in 1998, but has kept it inactive ever since. According to an alleged

Yahoo press release, the Complainant's Xigris trademark has not even been used

commercially to date, so it is a completely unknown trademark. Xigris is an

experimental sepsis drug which has not even been approved by the FDA, which

makes it an unknown trademark- or product- in any country.

Consequently, the Respondent

alleges that Complainant has no rights in the name XIGRIS because the Complainant,

or any of its products, have never been commercially known by the name of Xigris

and this makes them unknown.

Respondent alleges that

<xigris.com> was registered for his use in May 2001, when nobody was aware

of the Complainant's inactive Xigris trademark, and when the Complainant was

still planning on using Zovant and not Xigris.

Confusingly Similar

The Respondent does not

make any allegations in order to contest the confusing similarity between the

Domain Name and the XIGRIS trademark.

Legitimate Rights

The Respondent alleges

that the word, XIGRIS, is an acronym. This word represents the initials of his

full name and internet project: "Xavier Ignacio Garcia Robles Internet

Services". The Respondent alleges that the Complainant's agents never asked

him what XIGRIS meant for him or how he came up with it.

Respondent alleges that

he was planning to one day offer a variety of internet services linked to the

Domain Name, that he had created domain servers of the domain name several weeks

before the Complaint was filed and that he was interrupted from pursuing his

legitimate use of the Domain Name due to the filing of this Complaint.

Bad Faith

The Respondent alleges

that it did not provide false registration information. He states, "We

were supposed to have an address in El Salvador, but it was abandoned due to

the massive earthquakes that hit the country in January and February,

2001".

As far as the other addresses

are concerned, the Respondent alleges that, "We do not know anyone in Costa

Rica or Bolivia. The only person we know in Nicaragua is our domain agent, whom

we have always contacted via email".

The Respondent responds

to the accusations of a pattern of repeated bad faith registrations by alleging

that, "We have not registered other parties's trademarks. We did not register

garfieldonline.com or jonesapparelgroup.com, and do not know who

did". After Respondent read both of these disputes he discovered that the

Respondent in those cases did not submit a Response. Therefore, it would be

logical to assume that, if Respondent were the same party, he would also not

submit a Response to this dispute either.

The Respondent alleges

that it did not attempt to sell the Domain Name for a profit, as claimed by

the Complainant . Respondent alleges that, " The only reason why the idea

of a sale ever came up is because the Complainant's lawyer, Ms. Agudelo, made

an anonymous offer to purchase it, and not the other way around. And the same

can be said about the domain agent, as Ms. Agudelo insisted on purchasing it

from him, and not the other way around".

6. Discussion and Findings

Pursuant to the Uniform

Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy]

the Complainant must convince the Panel of three elements. In order to have

the Domain Name transferred to this end, it is incumbent upon the Complainant

to cumulatively show:

i) that the Domain Name

is identical or confusingly similar to a trademark in which it holds rights;

and

ii) that the Respondent

has no legitimate rights or interests in the Domain Name; and

iii) that the Domain

Name was registered and used in bad faith.

These three elements are

considered hereinafter

General Considerations

As a general principle,

a Panel shall decide a dispute on the basis of the statements and allegations

made in the Complaint and Response and the documentary evidence submitted in

connection thereto. As well, a dispute will be decided in accordance with the

Policy, the Rules and any rules and principles of law that the Panel deems applicable.

Consequently, the Panel

shall not decide on a Complaint solely on the basis of the allegations

submitted by the parties as each one having a burden, must provide evidence

in support of these allegations; nor is it the burden of the Panel to seek further

extrinsic evidence (other than judicial knowledge) to support the parties’ allegations,

as this may be disruptive of the Process. Therefore, it is not enough for a

party to make allegations it is up to it to submit or file the appropriate documentation

whenever possible to either support, sustain or challenge the allegations.

Noteworthy in the present

matter, the Respondent did not provide any evidence supporting its allegations

except for self drafted summaries of alleged e-mail correspondences between

the Complainant (via its alleged representative(s)), and the Respondent or via

Respondent's domain name agent as well as a self drafted summary of an alleged

press release.

While one may sometimes

be tempted to act merely on natural sympathy, it is not within the boundaries

of the Panel's mandate to do so. Even though the Policy and Rules clearly impose

a burden of proof upon the Complainant, a Respondent can certainly bolster his

defence by establishing that his conduct is not infringing any rights established

by the Policy. However, a Respondent should never assume that simply making

allegations (or assertions), which are not supported by any documentation whatsoever

will have the effect of countering the allegations found within the Complaint,

especially when these are supported by documentary evidence.

In the case at hand, the

Panel bases its decision solely on the grounds of the supported statements in

the Complaint, Response and the documents submitted thereto (or lack thereto).

Noteworthy, most if not all of the allegations found within the Response appear

on their face to be either incomplete and/or unsupported by any documentary

evidence; the Panel has therefore to evaluate their impact accordingly.

(i) Identical or Confusingly

Similar to Trademark

The Panel has reviewed

the documentary evidence provided by the Complainant regarding its trademark

registrations of the trademark XIGRIS and finds that the Complainant has satisfactorily

shown that it owns such rights, even though the Respondent, in his Response,

has challenged the trademark rights asserted by the Complainant with respect

to the XIGRIS trademark.

The Respondent has contended

that the Complainant has registered the trademark XIGRIS, but has not made any

commercial use of it. The Panel is of the opinion that due to the very nature

of the business and the products associated to the Complainant's trademarks

(pharmaceutical drugs), it is commonly known that given the requirement of regulatory

controls, a period of time exist before the product can be commercialised and

exploited in a commercial fashion, which would make it widely known by the public.

On that point, the Complainant has adequately proven and provided documentary

evidence to the Panel that it is within its standard procedure to register trademarks,

based on "projected" or "proposed" use (Annexes 4 and 5

of the Supplemental Complaint). This type of "use" is accepted under

basic common law principles regarding trademark law. Furthermore, if one implements

a civil law perspective (which has been characterised as the dominant legal

system on a world-wide basis), one finds that in some countries such as France,

the simple fact that an entity has registered a trademark is enough to grant

that entity rights to that trademark.

The Panel further agrees

with the Complainant that the fact that "Xigris" was not Complainant's

only trademark for its sepsis treatment product, and that Complainant has not

yet sold product bearing the Xigris trademark due to waiting on regulatory approvals,

should not be held against it, and that Complainant has rights to XIGRIS.

With respect to the confusing

similarity between Complainant's trademark and Respondent's Domain Name; In

the decision, The Toronto-Dominion Bank v. Boris Karpachev, WIPO

Case No. D2000-1571, the panel held: "In determining whether a Domain

Name is confusingly similar to a trademark, the intention of the Domain Name

registrant is irrelevant. It is the objective likelihood of confusion that must

be assessed.

In this case, the second-level

part of the Domain Name, <xigris.com>, is phonetically and visually identical

to the Complainant's trademark XIGRIS. Thus an average Internet user who has

knowledge or recollection of the name, XIGRIS, might easily mistake the Respondent’s

web site, associated with the Domain Name, as being somehow affiliated to or

owned by the Complainant. The Panel is of the opinion that this fact alone is

sufficient to conclude that the Domain Name is confusingly similar to Complainant's

XIGRIS trademark. Furthermore, the Respondent has conspicuously avoided to make

any allegation to the contrary regarding the confusingly similarity of the Domain

Name.

The Panel is, therefore,

of the opinion that the Complainant has met its burden of proof as established

by paragraph 4(a)(i) of the ICANN Policy and concludes that the Domain Name

is confusingly similar to Complainant's XIGRIS trademark.

(ii) No Rights or Legitimate

Interest

Paragraph 4(a)(ii) of the

ICANN Policy inquires as to whether or not the Respondent has any rights or

legitimate interests vested in the Domain Name. Paragraph 4(c) provides

examples of circumstances that can demonstrate the existence of such rights

or legitimate interests: (i) use of, or preparations to use, the Domain Name

in connection with a bona fide offering of goods or services; (ii) the

fact that the Respondent has commonly been known by the Domain Name; and (iii)

legitimate non-commercial or fair use of the Domain Name.

The Panel is of the opinion

that there is no evidence to support any finding of a legitimate right or interest

in the Domain Name on behalf of the Respondent. The Respondent has not shown

use of, or preparations to use, the Domain Name in connection with a bona

fide offering of goods or services, nor has he attempted to show that he

has commonly been known by the Domain Name nor has he attempted to show a legitimate

non-commercial or fair use of the Domain Name.

The fact that the Respondent

stated that the name XIGRIS was an acronym for his name and name of his internet

project was not enough to satisfy the Panel of his legitimate rights to the

Domain Name nor indeed is it a credible explanation without further proof that

he is commonly known as XIGRIS INTERNET SERVICES; neither was Respondent's contention

that he was in the midst of providing various internet services. Mere unsupported

allegations to this effect are simply not enough to sway the evidence established

by the Complainants.

On that point, the Panel

shares the opinion of the panel in WIPO Case

File No. D2000-0624, "Where a Complainant has asserted that the

Respondent has no rights or legitimate interests in respect of the domain name,

it is incumbent upon the Respondent to come forward with concrete evidence rebutting

this assertion. This information is uniquely within the knowledge and control

of the Respondent. Failure of a Respondent to come forward with such evidence

is tantamount to admitting the truth of Complainant's assertions in this regard."

That decision also correctly

states: "Concrete evidence' constitutes more than mere personal assertions.

Just as a Panel should require a Complainant to establish by means other than

mere bald assertions that it is the owner of registered marks, so should the

panel require that a Respondent come forward with concrete evidence that the

assertions made in the Response are true."

For these reasons, the

Panel concludes that, on balance of probabilities, the Complainant has discharged

its burden to show that the Respondent has no rights or legitimate interests

in the Domain Name.

(iii) Bad Faith

Pursuant to paragraph 4(a)(iii)

of the ICANN Policy it is incumbent upon the Complainant to prove, on the balance

of probabilities, that the Respondent has registered and is using the Domain

Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of non-exhaustive

circumstances which, if found to be present, are evidence of the registration

and use of a Domain Name in bad faith. In particular, paragraph 4(b)(iv) of

the ICANN Policy holds that, if the circumstances tend to indicate that by using

the Domain Name the Respondent has intentionally attempted to attract, for commercial

gain, Internet users to his web site, by creating a likelihood of confusion

with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement

of the Respondent’s web site, then this might be evidence of bad faith registration

and use on behalf of the Respondent.

The Panel has taken note

of evidence, which suggests that after registering the Domain Name at the request

of Respondent, the domain agent proceeded to accept an offer of $10000 USD to

transfer it. The domain agent defaulted on the deal, stating that it belonged

to the Respondent but stated that he (for Respondent) would accept $15000 USD

for the transfer of the domain Name. The Respondent admits that the domain name

agent was acting on his behalf, and the sworn affidavit of the Complainant's

representative states that a deal had indeed been struck by both parties. Once

again, the Respondent alleges that he paid $15000 USD for the Domain Name originally.

However, there is no evidence of any kind to corroborate this statement. Moreover,

the issue as to which side commenced the proceedings to purchase the domain

name and under what pretences, is not relevant when deciding on bad faith.

The Panel is of the opinion that the Complainant has satisfied its burden

to establish, on this ground alone, that the Respondent was intending to demand

more than his out-of-pocket costs directly related to the registration of the

Domain Name, a necessary component of a finding of bad faith when offering a

Domain Name for sale pursuant to paragraph 4(b)(i) of the ICANN Policy.

Furthermore, the Panel

is also of the opinion that the passive holding of the Domain Name since its

registration, combined with the lack of evidence provided by the Respondent

to demonstrate the good faith registration or use of this Domain Name, all infer

bad faith, pursuant to the 4(a)(iii) of the ICANN policy on the part of the

Respondent. (See Telstra Corporation v. Nuclear Marshmallows, WIPO

Case No. D2000-0003).

Finally, and particularly

given the fact that the trademark XIGRIS is a coined word "created"

by the Complainant, the Panel is of the opinion that the Domain Name is so obviously

connected with the Complainant that its very use or appropriation by someone

with no connection with the Complainant suggests "opportunistic bad faith",

unless the contrary is explained or justified (see Parfums Christian Dior

v. Javier Garcia Quintas and Christiandior.net, Case No. D2000-0226 and

Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix

Group Co., Case No. D2000-0163), followed

by this Panel in LLS International vs. Mark Freeman, Case

No. D2000-1080, and Altavista Company v. Grandtotal Finances Ltd.,

Case No. D2000-0848.

For the foregoing reasons,

the Panel concludes that the Complainant has met its burden of proof and has

proven that the Respondent’s actions have been in bad faith, pursuant to paragraphs

4(b)i and 4(b)(iv) of the ICANN policy.

8. Decision

For the foregoing reasons,

the Panel decides:

- That the Domain Name

registered by the Respondent is confusingly similar to the trademark in which

the Complainant has rights;

- That the Respondent

has no rights or legitimate interests in respect of the Domain Name; and

- That the Domain Name

has been registered and is being used by the Respondent in bad faith.

Accordingly, pursuant to

paragraph 4(i) of the ICANN Policy, the Panel orders that the registration of

the Domain Name:

<xigris.com> be

transferred to the Complainant by the Registrar.

Jacques

A. Léger, Q.C.

Sole Panelist

Dated: November

22, 2001