WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Insight Ventures/James Connell
Case No.�D2006-1057
1. The Parties
The Complainant is Lilly ICOS LLC, Indianapolis, Indiana, United�States�of�America, represented by Baker & Daniels, United�States�of�America.
The Respondent is Insight Ventures/James Connell, Newm Hope, Minnesota, United�States�of�America.
2. The Domain Names and Registrar
The disputed domain names are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on August�21,�2006. On August�22,�2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On August�23,�2006, eNom 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 August�28,�2006. In�accordance with the Rules, paragraph�5(a), the due date for Response was September�17,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September�18,�2006.
The Center appointed Steven Fox as the sole panelist in this matter on September�28,�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.
On November�7,�2006, the Panel issued Procedural Order No.�1 because two of the three domain names in question appeared to be a combination of three trademarks VIAGRA, CIALIS and LEVITRA, owned by separate entities. The Panel indicated that any decision transferring those domain names to Complainant could not be ordered absent authorization of the transfer from the third party trademark holders. The Order set a deadline of November�10,�2006. On November�8,�2006, Complainant requested a thirty-day extension, which was granted on November�10,�2006. Complainant requested an additional thirty-day extension on December�6,�2006, which was granted the same day, making the due date January�10,�2007. Consent of Pfizer, Inc. (owner of VIAGRA) and of Bayer Aktiengesellschaft (owner of LEVITRA) was filed January�5,�2007.
4. Factual Background
Complainant is a joint venture between Eli Lilly and Company and ICOS Corporation organized as a limited liability company under the laws of the State of Delaware, United States of America. Complainant filed for registration of CIALIS as a US trademark on June�17,�1999; and the application was granted on June�10,�2003 (Registration No.�2,724,589). Complainant began selling pharmaceutical products under the CIALIS mark on January�22,�2003. Complainant has obtained more than 130�registrations for the CIALIS mark in more than 117 countries, and has had extensive, world-wide marketing campaigns and sales.
Respondent registered on May�8,�2005, on January�11,�2005 and on January�11,�2005.
5. Parties’ Contentions
A. Complainant
Trademark / Service Mark
The Complainant contends that CIALIS is fanciful term in connection with pharmaceutical products. Complainant contends its rights in the CIALIS term matured into trademark rights at least as early as June�17,�1999, the date it filed an application for registration on the Principal Register of the United States Patent and Trademark Office. That application was granted on June�10,�2003 (Registration No.�2,724,589). Complainant has used the mark in commerce continuously since. Indeed, Complainant has secured more than 130 other registrations for the CIALIS mark in more than 117�countries. Complainant also asserts that its mark is well-known, in part due to approximately $39 million spent to market and sell its CIALIS brand product worldwide. Complainant (through Eli Lilly and Company) also owns the domain name , since August�10,�1999.
Identical or Confusingly Similar
The Complainant argues that the domain names are confusingly similar to its CIALIS mark because the disputed domain names incorporate Complainant’s mark.
Rights or Legitimate Interests
The Complainant contends that Respondent is using the CIALIS mark in the domain names to divert consumers to Respondent’s website in order to generate sales of Respondent’s “generic” CIALIS pharmaceutical products. The Complainant contends that it has not given Respondent permission, authorization, consent or license to use the mark.
Registered and Used in Bad Faith
Complainant argues that CIALIS is well-known, therefore, it is highly likely that Respondent knew of the CIALIS mark when Respondent registered the Domain Names. Complainant argues that Respondent’s goal for the domain names was to attract consumers who sought out Complainant; and that the effect of the websites at those domain names is to wrongfully imply to consumers that Complainant is endorsing and/or supporting the websites and the products advertised thereon.
Complainant also argues that Respondent’s registration of the domain names prevents Complainant from reflecting the mark in a corresponding domain name; and that Respondent has engaged in a pattern of such conduct.
Complainant finally urges the Panel to rule in its favor to prevent potential harm to the health of unsuspecting consumers who may purchase pharmaceutical products advertised on Respondent's websites under the mistaken impression that they are dealing with Complainant and will be receiving safe and effective drugs approved by the FDA or other health authorities around the world.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph�15(a) of the Rules states: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Since all parties are domiciled in the United States of America, the Panel will look to the principles of the law of the United States of America.
Paragraph�4(a) of the Policy directs that the Complainant must prove each of the following elements: “(i) [the] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) [respondent has] no rights or legitimate interests in respect of the domain name; and (iii) [the] domain name has been registered and is being used in bad faith.”
A. Identical or Confusingly Similar
Complainant has satisfied the Panel that it owns trademark rights in the term CIALIS. The disputed domain names obviously contain the mark. Two domain names also contain other widely known drug names, “viagra” and “levitra,” and descriptive terms “online” and “pharmacy”. The other domain name includes “discount” and “online.” Adding descriptive terms or other marks does not alleviate confusion. This type of confusion is exactly the type that Paragraph 4(a)(i) is intended to prevent. Based on the foregoing, the Panel finds that the domain names are confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
Complainant’s mark is fanciful and widely known. Respondent must have been aware of Complainant’s mark when it registered the disputed domain names. Respondent has no prior business association with Complainant and has used Complainant’s mark in the disputed domain names to attract Internet users to a website where it offers products competitive of Complainant’s trademarked product. Such use of the disputed domain names is not a fair use of Complainant’s mark. Respondent has offered no reasons why it believes it has a right to use, or interests in, the domain names. Respondent has offered no evidence that it has been commonly known by the disputed domain names.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
The Panel disagrees with Complainant that Respondent’s registration of the domain names prevents Complainant from reflecting the mark in a corresponding domain name. Indeed, Complainant has shown that it already owns , since August�10,�1999. This argument, however, was an alternate basis; and its failure to persuade does not undermine the other adequate bases for relief.
Likewise, in urging that relief is necessary to preserve the health of unsuspecting consumers who may purchase pharmaceutical products advertised on Respondent's websites, there is no evidence in the record that these assertions are true. However this may be, it is unnecessary for the Panel to consider in depth or make a finding on this issue for the purpose of a determination under the Policy here.
The Panel does find that Respondent has used the disputed domain names for commercial gain to direct Internet users to a commercial website where it directly offers goods that compete with Complainant. The Panel also finds that Internet users may mistakenly believe that the websites are affiliated with Complainant. Such use is in bad faith within the meaning of paragraph�4(b)(iv) of the Policy.
Based on the foregoing, the Panel finds that the domain names were registered and are being used 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 names, be transferred to the Complainant.
Steven Fox
Sole Panelist
Dated: January�17,�2007
Full & Egal Universal Law Academy