ADMINISTRATIVE PANEL DECISION Lilly ICOS LLC v. Alexey Stoun Case No. D2006-1170 1. The Parties The Complainant is Lilly ICOS LLC, of United States of America, represented by Baker & Daniels, United States of America. The Respondent is Alexey Stoun, United Kingdom of Great Britain and Northern Ireland. 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 September�11,�2006. On September�12,�2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue. On September�26,�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. 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 September�26,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�16,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October�17,�2006. The Center appointed Teruo Doi as the sole panelist in this matter on November�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 The facts stated in the Complaint are as follows: (1) The Complainant is the owner of the CIALIS trademark since June 17, 1999, when it filed an application for its registration with the United States Patent and Trademark Office. The CIALIS trademark was registered in the principal register (Registration No. 1,724,589) on June�10,�2003. The Complainant began selling pharmaceutical products under the CIALIS mark on January�22,�2003, in the European Union, and then in Australia and New Zealand, and began sales in the United States in November�2003. The Complainant obtained more than 130 registrations for the CIALIS mark covering more than 117 countries, and the Complainant’s applications for registration of this mark have been pending in about 13 countries (Annex 6 to the Complaint). Copies of some of the certificates of registration for the CIALIS mark are attached to the Complaint (Annex 7 to the Complaint). (2) In 2004, the Complainant spent approximately 39 million dollars to market its CIALIS products worldwide, and the sale of CIALIS brand products in the United States totaled more than 206 million dollars, and worldwide sales of CIALIS brand product exceeded 550 million dollars (Annex 8 to the Complaint). In 2005, the sale of CIALIS brand products in the United States and worldwide increased 32% and 35% respectively (Annex 9 to the Complaint). To date, the Complainant’s sale of CIALIS brand products exceeds 1 billion dollars. For these reasons, it is reasonable to infer that the CIALIS trademark is well-known. (3) The Complainant began filing trademark applications for the CIALIS mark approximately three and one-half (3 1/2) years prior to the first public sale of products bearing the CIALIS mark. This necessary delay between trademark selection and commercialization of the product identified by that trademark does not lessen the Complainant’s rights in its CIALIS trademark. (4) The Respondent registered the Domain Name at issue on April�27,�2006, and, hence, the Complainant’s rights in the CIALIS trademark predate the Respondent’s registration date, and the Complainant has both senior and exclusive rights in the CIALIS mark. The Complainant also has an Internet presence, primarily, through the website accessed by the domain name , that it uses to advertise and provide information regarding its pharmaceutical products. The domain name was registered by Eli Lilly and Company on August�10,�1999 (Annex 11 to the Complaint). The Complainant has used this domain name to identify a website since at least June�2001, and a printed representative portion of this website is attached to the Complaint (Annex 12 to the Complaint). 5. Parties’ Contentions A. Complainant On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name be transferred to the Complainant, in accordance with Paragraph 4 (b)(1) of the Policy, on the following grounds: (1) The Domain Name registered and used by the Respondent is confusingly similar to the Complainant’s CIALIS mark: The Complainant’s CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use. As stated in Microsoft Corporation v. J. Holiday Co., WIPO Case No.D2000-1493, “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” (Annex 10, B to the Complaint). The addition of a descriptive word to the Complainant’s CIALIS trademark does not prevent the finding of confusing similarity. See Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694 (September�8,�2005) (Annex 10, C to the Complaint); Lilly ICOS LLC v. Tudor Burden, Burden Marketing,WIPO Case No. D2004-0794 (December�20,�2004) (Annex 10, D to the Complaint); Lilly ICOS LIC v. The Counsel Group, LLC., WIPO Case No. D2005-0042 (March�29,�2005) (Annex 10, E to the Complaint); Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891 (January�28,�2005) (Annex 10, F to the Complaint); Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November�8,�2004) (Annex 10, G to the Complaint); Lilly ICOS LLC v. Anwarul Alam, WIPO Case No. D2004-0793 (November�26,�2004) (Annex 10, H to the Complaint). In the present case, the Respondent has merely added the descriptive word “great” to the Domain Name. The Respondent’s addition of this word to the Domain Name does not negate the distinctiveness of the Complainant’s CIALIS mark. Further, when a domain name incorporates a distinctive mark in its entirety, that 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) (Annex 10, I to the Complaint). In the case at hand, the Domain Name is confusingly similar to the CIALIS mark because it incorporates the mark in its entirety. With the exception of the descriptive word “great” the Domain Name consists of the Complainant’s CIALIS mark. Thus, the Respondent’s Domain Name is confusingly similar to the Complainant’s CIALIS trademark. (2) The Respondent has no rights or legitimate interests in respect of the Domain Name: (i) Respondent is using the Domain Name for commercial gain: It is apparent from the website associated with the Domain Name that the Respondent is attempting to capitalize on the valuable reputation and goodwill of the CIALIS mark to direct Internet users to a website advertising “Generic” CIALIS product. The Respondent’s homepage for the domain advertises “Generic” CIALIS product (Annex 13 to the Complaint). The webpage contains a CIALIS link located on the bottom of the homepage. When a consumer clicks on this CIALIS link or the “Buy Now” link, the consumer is allowed to purchase product directly from the Respondent (Annex 14). The Respondent is using the CIALIS mark in the Domain Name to draw consumers to its website, which advertises and sells “Generic” CIALIS product in addition to competitive products such as Viagra (Annex 13 to the Complaint). By using the mark CIALIS in the Domain Name, the Respondent is luring consumers in search of CIALIS brand product to its website which advertises and sells “Generic” CIALIS product. The Respondent’s use of the Domain Name is 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 or services placed on the market by its owner. In accordance with the propositions laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903, and followed in many subsequent cases, this principle can only be invoked under the Policy if (i) the Respondent is actually offering the goods or services at issue; (ii) the Respondent uses the website to sell only the trademarked goods or services; and (iii) the website accurately discloses the Respondent’s relationship (or otherwise) with the trademark owner. None of these factors are applicable in this case. Additionally, while the Respondent prominently displays a picture of packaging that is confusingly similar to the Complainant’s CIALIS product packaging on its homepage, none of the pages on the “www.” website discloses that the website is not authorized by or affiliated with the Complainant (ii) Respondent is not authorized by Complainant to use the CIALIS trademark: The Complainant has not given the Respondent permission, authorization, consent or license to use its CIALIS mark (Annex 15 to the Complaint). Despite this fact, however, the Domain Name resolves to a website enabling the Respondent to cash in on the strength of the Complainant’s CIALIS mark and the reputation of the pharmaceutical product with which the CIALIS mark is associated. (3) The Domain Name at issue was registered and is being used in bad faith: The Complainant has a June�17,�1999 constructive use date of the CIALIS trademark, and media coverage of the CIALIS brand product is dated as early as 2001. The Complainant has extensively marketed and advertised its pharmaceutical product using the CIALIS trademark. Therefore, because it is reasonable to infer that the CIALIS trademark is well-known, it is highly likely that the Respondent knew of the Complainant’s CIALIS mark at the time of registering the confusingly similar Domain Name. The Respondent is using the Complainant’s CIALIS trademark in the Domain Name to attract Internet consumers to its website which advertises and sells “Generic” CIALIS product. The Respondent’s use of the Complainant’s CIALIS trademark also wrongfully implies that the Complainant is endorsing and/or supporting the website and the products advertised thereon. The Respondent’s use of the Complainant’s CIALIS mark in the Domain Name is potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold pharmaceutical products advertised on the Respondent website under the mistaken impression that they are dealing with the Complainant and, therefore, will be receiving safe and effective drugs approved by the U.S. Food and Drug Administration (“FDA”) or other health authorities around the world. The Complainant’s CIALIS product is only available on a physician’s prescription and is manufactured, labeled, and sold in strict compliance with the FDA and other health authority laws and regulations. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4 (a) of the Policy requires the Complainant to prove that each of the following elements is present: (i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the 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. The Panel finds that the Respondent has failed to respond to the Complaint within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint. A. Identical or Confusingly Similar The Domain Name at issue, , registered and used by the Respondent is identical or confusingly similar to the Complainant’s CIALIS mark registeredworldwide and used for its pharmaceutical products. The Complainant’s trademark CIALIS is a coined word adopted by the Complainant to identify the Complainant’s pharmaceutical products. The Complainant’s CIALIS mark was registered in the Principal Register (Registration No. 1,724,589) of the United States Patent and Trademark Office on June�10,�2003. The Complainant began selling pharmaceutical products under the CIALIS mark on January�22,�2003, in the European Union, and then in Australia and New Zealand, and began sales in the United States in November�2003. The Complainant secured more than 130 registrations for the CIALIS mark covering more than 117 countries, and the Complainant’s applications for registration of this mark have been pending in about 13 countries. (Annex 6 to the Complaint). In 2004, the Complainant spent a large sum of money to market its CIALIS brand products worldwide, and global sale of CIALIS products exceeded 550 million US dollars (Annex 8 to the Complaint). In 2005, the sale of CIALIS brand products in the United States and worldwide increased 32% and 35% respectively. (Annex 9 to the Complaint) To date, the sale of CIALIS brand products exceeds 1 billion U.S. dollars. In addition, the Complainant has been using its domain name , registered by Eli Lilly and Company on August�10,�1999 (Annex 11 to the Complaint), to advertise and provide information regarding its pharmaceutical products (Annex 12 to the Complaint). Based on these facts, it is reasonable to find that the Complainant’s CIALIS mark has become well-known throughout the world as indicating the Complainant’s pharmaceutical products. The Domain Name at issue, , consists of a descriptive adjective “great” followed by the word “cialis” which is identical to the Complainant’s distinctive mark CIALIS. Based on these facts, the Panel finds that the Domain Name at issue registered by the Respondent is confusingly similar to the Complainant’s trademark CIALIS. B. Rights or Legitimate Interests The Respondent has no rights or legitimate interests in respect of the Domain Name at issue on the following grounds: It is clearly established that the Respondent is using the CIALIS mark in the domain to capitalize on the valuable reputation and goodwill of the CIALIS mark to direct Internet users to a website advertising “Generic” CIALIS product in addition to competitive products such as Viagra (Annex 13 to the Complaint). By using the mark CIALIS in the Domain Name at issue, the Respondent is directing consumers in search of CIALIS brand products to its website which advertises and sells “Generic” CIALIS products as well as other products in competition with the Complainant’s products. As correctly asserted by the Complainant, the Respondent’s use of the Domain Name at issue is 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 or services placed on the market by its owner. In the Respondent’s use of the Domain Name at issue, none of the requirements for invoking this principle is present. See Cases cited by the Complainant: Oki Data Ameraicas, Inc. v. ASK, Inc. WIPO Case No.D2001-0903; Deutsche Telekom AG v. Mighty LLC/Domain Admin, WIPO Case No.2005-0027. The Complainant has not given the Respondent permission, authorization, consent or license to use the Complainant’s CIALIS mark (Annex 15 to the Complaint). Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue. C. Registered and Used in Bad Faith The Domain Name at issue has been registered and is being used in bad faith by the Respondent on the following grounds: The Complainant adopted the trademark CIALIS in 1999 and secured trademark registration in major countries of the world by the end of 2003 or the beginning of 2004 (Annex 6 to the Complaint). The Complainant has extensively marketed and advertised its pharmaceutical products under the CIALIS mark. Thus, the Complainant’s trademark CIALIS, being a coined word having inherent distinctive quality, became well-known throughout the world by the time the Respondent registered the Domain Name at issue on April�27,�2006. The Respondent’s use of the Domain Name consisting of a descriptive adjective “great” and the Complainant’s mark “cialis” creates the likelihood of confusion of a kind specifically stated in Paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Domain Name at issue has been registered and is being used in bad faith. 7. Decision For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant. Teruo Doi Sole Panelist Dated: November 16, 2006
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