WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Ronald Bode
Case No. D2006-0366
1. The Parties
Complainant is Lilly ICOS LLC, Wilmington, Delaware, United States of America, represented by Baker & Daniels, United States of America.
Respondent is Ronald Bode, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2006. On March 24, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same date, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 the Respondent of the Complaint, and the proceedings commenced on March 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�19,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2006.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on May�2,�2006. 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 Lilly ICOS LLC is a joint venture between ICOS Corporation and Eli Lilly and Co. Complainant owns a U.S. Trademark Registration (No. 2,724,589) for the mark CIALIS, as used on a pharmaceutical product. Complainant began selling pharmaceutical products under the CIALIS mark on January 22, 2003 in the European Union, followed soon thereafter by sales in Australia and New Zealand. Complainant began sales of the drug CIALIS in the U.S. in November 2003. To date, the CIALIS mark is the subject of more than 87 registrations covering more than 117 countries and sales of CIALIS brand product exceed $1 billion, and the CIALIS brand drug has been the subject of extensive media coverage. Eli Lilly is the owner of the domain name that it has used to advertise and provide information regarding its pharmaceutical product.
Respondent registered the domain name in dispute, , on November 29, 2003.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is confusingly similar to its CIALIS mark, noting that the domain name incorporates the CIALIS mark in its entirety and that the addition of the terms “medical” and “board” does not prevent a finding of confusing similarity.
Complainant further argues that Respondent has no rights or legitimate interests in the domain name. According to Complainant, by using the mark CIALIS in the domain name, Respondent is luring consumers in search of CIALIS brand product to a website that advertises both CIALIS brand product and generic CIALIS product.
Further, Complainant declares, Respondent is using the CIALIS mark in its domain name to draw customers to its website and then direct them to another site, from which generic CIALIS, as well as other competing products, such as LEVITRA and VIAGRA, may be purchased. Complainant indicates that Respondent likely receives a payment each time it links a consumer to the page and the consumer makes a purchase.
Complainant also maintains that Respondent may not be considered to be promoting a bona fide offering of goods or services placed on the mark by their owner since Respondent is not actually selling the goods, Respondent’s website is not used only to sell the trademarked goods and/or services, and Respondent’s site does not accurately disclose Respondent’s relationship with the trademark owner.
With respect to the issue of “bad faith” registration and use, Complainant contends that CIALIS is a well-known mark and Respondent is using such mark to attract internet users to its site for commercial gain. Respondent’s use of the CIALIS mark, Complainant maintains, wrongfully implies that Complainant is endorsing and/or supporting the web site and the products advertised thereon.
Finally, Complainant notes that Respondent’s use of the CIALIS mark is potentially harmful to the public health to the extent that many unsuspecting consumers may purchase unlawfully sold products advertised on Respondent’s web site under the mistaken impression they are dealing with Complainant and purchasing safe and effective government-approved drugs. CIALIS product is only available on a prescription basis.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no question, given Complainant’s use of, and registrations covering, the CIALIS mark, that Complainant has rights in the mark. The Panel further concludes that the disputed domain name, , is confusingly similar to the CIALIS mark. The addition of the generic terms “medical” and “board” does not avoid a finding of confusing similarity. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750, (determining that addition of words “drug”, “online”, “buying” and “guide” to CIALIS mark did not eliminate confusing similarity between CIALIS and domain name .).
B. Rights or Legitimate Interests
Complainant has asserted that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has presented no evidence in support of any rights or legitimate interests and the Panel finds that, on the basis of the case file, none of the circumstances set forth in paragraph 4(c) of the Policy is applicable.
C. Registered and Used in Bad Faith
The Panel concludes that Respondent, through the use of the domain name , has intentionally attempted to attract, for commercial gain, internet users to its site and other linked sites by creating a likelihood of confusion as to the source of its site and the products offered at such sites, within the meaning of paragraph 4(b)(iv) of the Policy. Thus, based on the evidence of the case, the Panel finds the requisite evidence of registration and use in bad faith.
7. Decision
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.
Jeffrey M. Samuels
Sole Panelist
Dated: May 16, 2006
Full & Egal Universal Law Academy