WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Eli Lilly and Company v. D LLC Case No. D2009-0849 1. The Parties
Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America, represented by Baker & Daniels, of Indianapolis, Indiana, United States.
Respondent is D LLC, with an address listed as being in North Branford, Connecticut, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2009. On June 30, 2009, the Center transmitted by e-mail to GoD, Inc., a request for registrar verification in connection with the Disputed Domain Name. On July 1, 2009, GoD, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 23, 2009.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 7, 2009. 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 states that its “rights in the CIALIS mark date back to as early as June 17, 1999, when its predecessor-in-interest filed for registration of the CIALIS trademark with the United States Patent and Trademark Office.” The CIALIS mark was registered on June 10, 2003 (U.S. Reg. No. 2,724,589) for use in connection with “pharmaceutical and medicinal preparations for treatment of sexual dysfunction; pharmaceutical and medicinal preparations for prevention of sexual dysfunction.” The Panel's review of the registration record for the CIALIS mark at the website of the United States Patent and Trademark Office indicates that this mark was first used in commerce on December 18, 2002.1 Complainant further states that it owns 156 registrations for the CIALIS mark in more than 100 countries. Annexes provided by Complainant include certificates of registration for some of these marks. Complainant further states that worldwide sales of products under the CIALIS mark amounted to USD1.445 billion. Complainant further states that it is the registrant of the domain name , which was registered by Complainant's predecessor-in-interest on August 10, 1999, and that Complainant has used this domain name to identify a website since at least as early as June 2001.
The Disputed Domain Name was registered on December 21, 2006. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
The Disputed Domain Name is confusingly similar to its CIALIS trademark because “Respondent's inclusion of an extra letter ‘a' is a common misspelling of Complainant's CIALIS mark. The mere inclusion of the additional letter ‘a' in Respondent's Domain Name does not negate the distinctiveness of Complainant's CIALIS mark.”
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is used in connection with “a parked page providing several links to various commercial websites advertising and selling prescription pharmaceutical products”; and Respondent is not authorized by or affiliated with Complainant, and Respondent's website does not disclose this lack of authorization or affiliation.
The Disputed Domain Name was registered and is being used in bad faith because Respondent is using Complainant's well-known CIALIS trademark to attract Internet users to Respondent's website for Respondent's financial gain; Respondent has been a respondent in at least one prior reported decision under the Policy, Ticketmaster Corporation v. D LLC,WIPO Case No. D2008-0665 (transfer of ); and “Respondent's use of 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 Respondent's website under the mistaken impression that they are dealing with 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.” B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which [it] has rights.”
Based on the information provided by Complainant, including copies of relevant trademark certificates of registration, the Panel is convinced that Complainant has rights in the CIALIS trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CIALIS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “ciaalis”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
As to whether the relevant portion of the Disputed Domain Name, “ciaalis,” is confusingly similar to the CIALIS trademark, the “[t]he difference between the registered trademark and the disputed domain name is the additional ‘a' prior to the generic domain suffix ‘.com'. The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.” Florida Department of Management Service v. Forsyte Corporation,WIPO Case No. D2008-1658 (transfer of ). See also, e.g., Harrods Limited v. Harrods; Transure Enterprise Ltd,WIPO Case No. D2008-1687 (transfer of ); and ACCOR v. Vista Holdings, Inc.,WIPO Case No. D2008-0291 (transfer of ).
Accordingly, in light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights, and the Panel is satisfied that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Names, the Panel is satisfied, also in light of the Panel's findings below, that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Respondent's use of the Disputed Domain Name in connection with a website containing various links to third parties offering products that are allegedly competitive with the products offered by Complainant under the CIALIS mark is similar to countless similar cases under the Policy in which Panels have found bad faith pursuant to paragraph 4(b)(iv). Indeed, as this Panel previously wrote:
Paid link farm services, sometimes known as monetized parking pages, have become an increasingly popular way for domain name registrants to profit from their activity with little effort. In some cases, particularly where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy. However, where, as here, the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy. See Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan,WIPO Case No. D2004-0430 (“Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links for businesses in the same field as that of the Complainant”).
See also SmithKline Beecham (Cork) Limited; SmithKline Beecham Corporation (dba GlaxoSmithKline) v. Daniel Crean,WIPO Case No. D2006-1185 (finding no good faith reason for use of the disputed domain name in connection with “contextual-based advertisements”).
Here, an annex provided by Complainant of a website using the Disputed Domain Name shows links labeled, among others, “Cialis Levitra,” “Viagra,” “Generic Cialis Online,” “Cheap Levitra Online” and “Buy Cialis Online” – links that Complainant states lead to websites offering “products which are competitive with Complainant's products” and for which “Respondent likely derives a financial benefit by providing click-through traffic.” The authenticity of this website and Complainant's allegations are unrebutted by Respondent, and the Panel has no reason to doubt same.
Therefore, the Panel is convinced that Complainant has proven the third element of the Policy. 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: August 20, 2009
Full & Egal Universal Law Academy