WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif
Case No. D2006-1123
1. The Parties
The Complainant is Lilly ICOS LLC, of Wilmington, Delaware, United States of America, represented by Baker & Daniels LLP, of United States of America.
The Respondent is Cybernet Marketing/Antoine Tardif, of Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�31,�2006, electronically and on September�5,�2006, in hardcopy. On September�14,�2006, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the domain name at issue. On September�15,�2006, OnlineNic, Inc. d/b/a China-C 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September�26,�2006. 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”), 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, paragraph 2(a) and paragraph 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September�27,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�17,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October�18,�2006.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October�30,�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
The Complainant, Lilly ICOS LLC, a limited liability company organized under the laws of the State of Delaware, U.S.A, is a joint venture between ICOS Corporation and Eli�Lilly and Company. The Complainant first applied for registration of the trademark CIALIS in 1999 and since then has obtained more than 130 registrations for the CIALIS mark covering more than 117 countries. The 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. The sales in the United States of America started in November�2003.
To date, the Complainant’s sales of CIALIS brand product exceed $1 billion dollars and the CIALIS brand drug has been the subject of extensive media coverage. Eli Lilly and Company is the owner of the domain name that it has used to advertise and provide information regarding its pharmaceutical product.
The Respondent registered the domain name in dispute, , on April�16,�2004, and is using the domain name to advertise and sell generic CIALIS product of the Complainant’s competitors. In the past, the Respondent was already involved in another WIPO UDRP case, namely Sanofi-Aventis v. Antoine Tardif / Cybernet Marketing, WIPO Case No. D2006-0879, .
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case:
(i) The domain name is confusingly similar to the CIALIS mark as it fully incorporates the word “cialis” and the addition of the descriptive word “medication” does not prevent a finding of confusing similarity. The mere addition of the term “medication” to the domain name does not negate the distinctiveness of the Complainant’s CIALIS mark.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name: The Complainant has not given the Respondent any permission, authorization, consent or license to use its CIALIS mark. The Respondent’s sole reason for registering and using the domain name is to benefit from the reputation of the trademark CIALIS and illegitimately trade on its fame for commercial gain and profit. The Respondent’s use of the domain name is furthermore not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods and services placed on the market by its owner because the Respondent advertises and sells generic CIALIS product under the domain name.
(iii) The domain name was registered in bad faith since the Respondent had knowledge of the well-known and highly distinctive CIALIS mark at the time of the registration of the confusingly similar domain name. Furthermore, the domain name is also being used in bad faith. The Respondent is using the domain name to attract Internet consumers to its website where it advertises and sells generic CIALIS product. Thus, the Respondent is attempting (for commercial purposes) to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known mark CIALIS as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the products or services posted on or linked to the Respondent’s website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements are present:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and
(ii) the 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
To establish confusing similarity, it is not required to establish that the registration and use of a domain name cause confusion as to their source, but whether the mark and the alphanumeric string constituting a domain name are confusingly similar when directly compared.
CIALIS is a highly distinctive identifier of the source of the Complainant’s product, with a strong international reputation, and it is the only distinctive part of the domain name. The mere addition of the generic word “medication” following the trademark does not eliminate the similarity between the Complainant’s distinctive mark and the domain name, as “medication” is a descriptive component of the domain name which describes the type of product the Complainant sells under the name CIALIS and therefore is without any significance. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of descriptive words (cf. Dr. Grandel GmbH v. Drg Randel Inc, WIPO Case No. D2005-0829 - ; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 - , Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No.�D2005-0694 - et al; Hoffmann-La Roche Inc. v. US Online Pharmacies, WIPO Case No.�D2006-0646 - et al; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No.�D2006-0451 - ; Lilly ICOS LLC v. Ivan Petrov, WIPO Case No. D2005-1177 - ; Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042 - ; Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891 - et al; Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No.�D2005-1086 - ; Lilly ICOS LLC v. Saban Mihailovic, WIPO Case No. D2005-0356 - ; Lilly ICOS LLC v. Redzone, WIPO Case No. D2005-0534 - ).
Furthermore, it is also well established that the specific top level domain is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the domain name (cf.�Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No.�D2000-1525 - et al; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 - ).
Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate his rights to or legitimate interests in a domain name for purposes of the Policy, paragraph 4(a)(ii), i.e.:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the 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 service marks at issue.
The Respondent did not give evidence of any of the circumstances specified in the Policy, paragraph 4(c), or any other circumstances in favor of rights or legitimate interests in the domain name.
The domain name is highly unlikely to be derived from either the Respondent’s personal name or the name or the nature of the business operated by him, nor is the Respondent commonly known by the domain name.
The Respondent’s use of the domain name is furthermore not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods and services placed on the market by its owner as the Respondent is using the domain name to advertise and sell generic CIALIS product from competitors of the Complainant. This usage is neither a bona fide offering of goods and services under the Policy, paragraph 4(c)(i), nor a legitimate non-commercial or fair use under the Policy, paragraph 4(c)(iii), as the Respondent is exploiting the Complainant’s trademarks within the domain name presumably to divert Internet users searching for the products of the Complainant to the Respondent’s website offering generic CIALIS product (cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 - ; Deutsche Telekom AG v. Mighty LLC/Domain Admin, WIPO Case No. D2005-0027 - ; Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990 - ; Mamar, Inc. v. Order Your Domains, WIPO Case No. D2005-1163 - ).
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of the Policy, paragraph 4(a)(ii), is also satisfied.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith, including:
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
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 website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668 - , ; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694 - et al; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101 - ; Lilly ICOS LLC v. Redzone, WIPO Case No. D2005-0534 - ).
The Complainant’s mark CIALIS is well-known as a pharmaceutical for treatment of sexual dysfunction. It is therefore inconceivable that the Respondent registered the domain name without knowledge of the Complainant’s trademarks. This assumption is supported by the fact, that the Respondent registered a domain name which is identical with the CIALIS marks except for the descriptive term “medication”. Furthermore, as the Respondent’s website is used to advertise and sell generic CIALIS product from the Complainant’s competitors, the Panel concludes that the Respondent registered the domain name with full knowledge of the CIALIS marks and therefore in bad faith.
Finally, by fully incorporating the CIALIS mark into the domain name the Respondent is in all likelihood trying to divert traffic indented for the Complainant’s website to its own for the purpose of selling generic CIALIS product to Internet users searching for the Complainant’s website.
As a result, the Panel finds that the Respondent has registered the domain name with knowledge of the Complainant’s trademarks and has used the domain name in bad faith under the Policy, paragraph 4(b)(iv), as it attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
Moreover, the Respondent’s default in this proceeding reinforces an inference of bad faith. If the Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them. Because of the Respondent’s default the Complainant’s evidence stands unrebutted.
Therefore, the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(iii).
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.
Brigitte Joppich
Sole Panelist
Date: November�13,�2006
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