Lilly ICOS LLC v. Ogando, Yeral

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Lilly ICOS LLC v. Ogando, Yeral

Case No. D2005-1133

1. The Parties

Complainant is Lilly ICOS LLC, Wilmington, Delaware, United States of America, represented by Baker & Daniels.

Respondent is Yeral Ogando, Miami, Florida, United

States of America.

2. The Domain Name and Registrar

The disputed domain name <cialistation.com>

(the “Disputed Domain Name”) is registered with Go Daddy.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2005. On November 1, 2005, the Center transmitted by e-mail to Go Daddy.com a request for registrar verification in connection with the domain name at issue. On November 1, 2005, Go Daddy.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on November 4, 2005. In accordance with the Rules, Paragraph 5(a), the due date for the Response was set for November 24, 2005. Respondent did not submit a response. Accordingly, the Center notified the Respondent of Respondent’s default on November 25, 2005.

The Center appointed the undersigned as the sole panelist

in this matter on December 7, 2005. 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

Complainant is engaged in the pharmaceutical drug business and is a joint venture between ICOS Corporation and Eli Lilly and Company. Complainant’s rights in the CIALIS mark date back to as early as June 17, 1999, when it filed for registration of the CIALIS trademark with the United States Patent and Trademark Office. The CIALIS mark was registered on the principal register (Registration No. 2,724,589) on June 10, 2003. Complainant’s decision to use the CIALIS trademark to identify its pharmaceutical product was made public in July 2001. Complainant began selling pharmaceutical products identified by the CIALIS mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand. Complainant began sales in the United States in November, 2003. Complainant submitted a sworn declaration that, in total, Complainant has obtained more than 87 registrations for the CIALIS mark covering more than 117 countries, and that the CIALIS trademark is the subject of pending registration applications filed by Complainant in 24 countries.

Complainant submitted documentation evidencing that, in 2004, Complainant spent approximately $39 million dollars to market and sell its CIALIS brand products worldwide. Complainant also submitted documentation evidencing that, in 2004, U.S. sales of the CIALIS brand product totaled more than $206 million dollars and worldwide sales exceeded $550 million dollars.

The Disputed Domain Name was first registered with

Go Daddy.com on July 20, 2004. Complainant submitted evidence that, on October

12, 2005, the web site associated with the Disputed Domain Name directed consumers

to a web site on which products described as Complainant’s CIALIS brand

product were advertised for sale along with other competing products such as

Levitra and Viagra.

5. Parties’ Contentions

A. Complainant

Complainant contends that its CIALIS mark is distinctive and that, in light of the CIALIS brand product’s significant sales as detailed above, it is reasonable to infer that the CIALIS trademark is well-known. Complainant also contends that the Disputed Domain Name is confusingly similar to its well-known CIALIS mark.

In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, that Respondent was not authorized by Complainant to use the CIALIS trademark, and that Respondent is using it for commercial gain. Complainant further contends that Respondent was not using the Disputed Domain Name in connection with a bona fide offering of goods or services because using another’s trademark merely to offer goods that compete with the trademark owner’s goods is not a bona fide offering of goods or services.

Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent registered and is using it in order to utilize Complainant’s well-known trademark to attract Internet users to a web site for commercial gain.

B. Respondent

Respondent did not respond to Complainant’s

contentions.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interest in the domain name registered by Respondent; and

(3) that the domain name registered by Respondent has been registered and used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed representations, pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences it considers appropriate, pursuant to Paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

The Disputed Domain Name registered by Respondent

is confusingly similar to Complainant’s federally-registered CIALIS mark.

Complainant’s CIALIS mark was registered on the principal register (Registration

No. 2,724,589) on June 10, 2003. However, Complainant’s rights in the

CIALIS mark date back to as early as June 17, 1999, when it filed for registration

with the United States Patent and Trademark Office, giving Complainant a constructive

use date of June 17, 1999, and priority over those with competing claims to

the CIALIS mark based upon later use. 15 U.S.C. § 1057(c). The Lanham Act’s

central policy is to “grant broader protection to those marks with a higher

degree of distinctiveness.” Abercrombie & Fitch Co. v. Hunting

World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). The Panel places the CIALIS mark

on the “inherently distinctive” end of the Abercrombie &

Fitch sliding scale as it appears to have a high degree of individuality

and no common colloquial use. Moreover, this Panel finds, as several WIPO panels

that have adjudicated previous decisions involving the CIALIS mark have already

found, that the addition of the letters “tation” to Complainant’s

CIALIS trademark obviate confusingly similarity between the Disputed Domain

Name and Complainant’s CIALIS mark. See Lilly ICOS LLC v. Tudo Bruden,

Burden Marketing, WIPO Case No. D2004-0794

(December 20, 2004) (determining that the respondent’s addition of the

words “apcalis” or “Viagra” to the disputed domain names

<cialisapcalis.com> and <cialis-viagra.info> did not eliminate the

confusing similarity); Lilly ICOS LLC v. The Counsel Group, LLC, WIPO

Case No. D2005-0042 (March 29, 2005) (finding the addition of the words

“get” and “rx” to the CIALIS mark to form the disputed

domain name did not obviate the confusing similarity between the disputed domain

name and Complainant’s CIALIS mark); Lilly ICOS LLC v. Anwarul Alam/“-

-”,WIPO Case No. D2004-0793

(November 26, 2004) (determining that the addition of the descriptive word “city”

to the disputed domain name <cialiscity.com> did not eliminate the confusing

similarity).

Indeed, when a domain name incorporates a distinctive

mark in its entirety, it creates sufficient similarity between a mark and a

domain name to render the domain name confusingly similar. EAuto v. Triple

S. Auto Parts, WIPO Case No. D2000-0047

(March 24, 2000). In the present case, the Disputed Domain Name is confusingly

similar to the CIALIS mark because it incorporates the CIALIS mark in its entirety.

See Lilly ICOS LLC v. Dan Eccles, WIPO

Case No. D2004-0750 (November 8, 2004) (finding that the disputed domain

name <cialis-drug-online-buying-guide.com> was confusingly similar to

the CIALIS trademark because it incorporated the distinctive CIALIS mark in

its entirety).

For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the CIALIS mark, a federally-registered trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).

Complainant contends that Respondent has no rights

or legitimate interest in the Disputed Domain Name. Respondent has not submitted

any arguments or evidence in rebuttal. Nothing in the record suggests that Respondent

is commonly known by the Disputed Domain Name. Respondent was not licensed by

Complainant to use the mark CIALIS. To be sure, Respondent was offering goods

through Respondent’s web site before receiving notice of this dispute.

Upon attracting Internet consumers to its web site, Respondent advertised and

attempted to sell many pharmaceutical products, including products that compete

with the CIALIS brand product (e.g., Levitra and Viagra). However, the

use of a domain name containing a trademark to offer competing goods is not

a bona fide offering of goods. See Nokia Corporation v. Nick HOlems

t/a Etype Media, WIPO Case No. D2002-0001

(March 6, 2002) (determining that although the respondent had established a

web site offering goods, the use of the disputed domain name in connection with

the offering of goods and services was not bona fide in part because the complainant

did not give the respondent authorization to use its mark in the domain name

and further because the respondent sold products made by other manufacturers

on the web site as well). Moreover, when Respondent used Complainant’s

CIALIS mark as the distinctive part of the Disputed Domain Name, Respondent

made a non-legitimate commercial use of the Disputed Domain Name to divert Internet

consumers to Respondent’s web site. See G.D. Searle & Co. v. Fred

Pelham, Case No. FA 117911 (National Arbitration Forum, December 19, 2002)

(finding that because the respondent was using the infringing domain name to

sell prescription drugs, it could be inferred that the respondent was opportunistically

using the complainant’s mark in order to attract Internet users to its

web site).

For these reasons, in accordance with Paragraph 4(a)(ii) of the Rules, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Complainant also argues that Respondent registered and used the Disputed Domain Names in bad faith. Specifically, Complainant essentially argues that Respondent’s bad faith is reflected in the fact that: (1) Complainant’s CIALIS mark is well known; and (2) Respondent utilized the CIALIS mark to attract Internet users to a web site for commercial gain.

Supporting a finding of bad faith is the implausibility

that Respondent did not have actual notice of Complainant’s rights before

registering the Disputed Domain Name. Complainant submitted persuasive evidence

that in 2004, the year in which Respondent registered the Disputed Domain Name,

Complainant spent in excess of $39 million dollars to market and sell its CIALIS

brand product and sales of the CIALIS brand product exceeded $206.6 million.

Further, the record establishes that Complainant has a June 17, 1999 constructive

use date of the CIALIS trademark and initiated advertising of the CIALIS brand

as early as 2001. Thus, Respondent’s constructive knowledge of Complainant’s

rights in the mark CIALIS and use of a confusing similar domain name may be

an indication of bad faith. See eBay Inc. v. SGR Enterprises, WIPO

Case No. D2001-0259 (April 11, 2001) (“Actual or constructive knowledge

of the Complainant’s rights in its trademark is a factor supporting bad

faith.”); Kate Spade LLC v. Darmstadter Designs, WIPO

Case No. D2001-1384 (January 3, 2002).

In addition, according to Paragraph 4(b)(iv) of the Policy, evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s well-known trademark by attracting Internet users to a web site for commercial gain. See Am. Online, Inc. v. Tencent Commc. Corp., FA 93668 (National Arbitration Forum, March 21, 2000) (finding bad faith where the respondent registered and used the disputed domain name to attract users to a web site sponsored by the respondent). Here, the unrebutted evidence demonstrates that Respondent used Complainant’s federally-registered and well-known CIALIS mark in the Disputed Domain Name to (i) first attract Internet customers to its web site and (ii) then enable those customers to purchase pharmaceutical products through Pharmgroup.com.

For these reasons, the Panel concludes that the bad

faith element of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <cialistation.com > be transferred to Complainant Lilly ICOS LLC.

Steven Auvil

Sole Panelist

Dated: December 23, 2005

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