WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Eli Lilly and Company v. Anton Nikiforov Case No. D2009-1024 1. The Parties
The Complainant is Eli Lilly and Company of Indianapolis, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Anton Nikiforov of Moscow, Russian Federation. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Realtime Register B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2009. On July 30, 2009, the Center transmitted by email to Realtime Register B.V. a request for registrar verification in connection with the disputed domain name. On Friday July 31, 2009, Realtime Register B.V. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on September 8, 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
The Complainant owns various trademark registrations worldwide for its LILLY mark and for LILLY & design, including United States registrations 1,226, 434 and 1,318,867 and began using the LILLY trademark as early as 1895 in connection with “medicines, pharmaceutical preparations and drugs” and operates globally as one of the ten largest pharmaceutical companies in the world. The Complainant has maintained a presence on the Internet since 1991 mainly through its website “”.
The Respondent registered the Disputed Domain Name on May 19, 2009 and offers for sale various pharmaceuticals from that site including the Complainant's products and third party produced competing products. 5. Parties' Contentions A. Complainant
The Complainant asserts that its LILLY mark is famous and that the Disputed Domain Name is confusingly similar to its mark. It says that the “rx” and the “direct” in the Disputed Domain Name are generic or descriptive terms and do not distinguish the Disputed Domain name.
According to the Complainant the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services as it sells both the Complainant's and its competitors' products from the website to which the Disputed Domain Name resolves but the Complainant has never authorized such use or re-sale. Complainant further says that there is no evidence to suggest that the Respondent is commonly known by the Disputed Domain Name or has acquired any rights in the mark “lillyrxdirect”. Neither is there anything to indicate that the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name.
The Complainant further says that the Respondent had actual or constructive knowledge of the Complainant's trademark rights at the time of registration of the Disputed Domain Name based on the degree of renown attaching to the LILLY mark and the Complainant's trademark registrations. Accordingly, the Respondent did not register the Disputed Domain Name legitimately and is using it for commercial gain to divert internet users to its website by creating a likelihood of confusion with the Complainant's LILLY mark under paragraph 4(b)(iv) of the Policy. The fact that the Respondent is selling products from the Complainant's competitors further supports a finding of bad faith. As a result the Respondent has registered and used the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name to the Complainant), the Complainant must prove that each of the three following elements are present:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the 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. A. Identical or Confusingly Similar
The Panel accepts the Complainant's contention that it owns registered trade mark rights in the United States of America and elsewhere in the LILLY trade mark and that as a result of longstanding and widespread use of the mark that it has come to attract a very significant degree of renown.
The Panel accepts the Complainant's assertion that the additional elements in the Disputed Domain Name, namely the “rx” and “direct” are generic or descriptive as the “rx” refers to a prescription and the “direct” implies the ability to order and receive by mail and that this only increases potential likelihood of confusion by suggesting an association between the Disputed Domain Name and the Complainant's business. Other panels have made similar findings in equivalent circumstances, for examples see Forest Labs., Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2007-1050 and Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042. For completeness the panel notes that consistent with past decisions the “.net” element does not distinguish the Disputed Domain Name in any way.
The Panel therefore finds that the Complainant has trade mark rights in the LILLY mark and that the Disputed Domain Name is confusingly similar to this mark and that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent's use 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 trade mark 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 consumers or to tarnish the trade mark or service mark at issue.
There is no evidence before the Panel to suggest that the Respondent is commonly known by the Disputed Domain Name. It is quite apparent that the Respondent's use is for commercial gain and is not for a legitimate non-commercial use. The Respondent's activities in using the Disputed Domain Name without the Complainant's authorization and not only for the Complainant's products but for those of its competitors indicates that the Respondent is seeking to use the Disputed Domain Name to attract potential customers to its website for the purpose of selling any of these products. This is not a fair use and is not consistent with a legitimate interest as a re-seller or otherwise without the Complainant's authorization.
Accordingly the Panel finds that none of the circumstances in paragraph 4(c) of the Policy are made out and as there is nothing else to indicate that the Respondent has a legitimate right or interest in the Disputed Domain Name, that the Complainant has successfully made out its case under paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
In view of the substantial degree of renown attaching to the LILLY mark and the complainant's worldwide registrations, the Panel infers that by the date of registration of the Disputed Domain Name the Respondent must have been well aware of the Complainant's mark and trade mark rights and could have used. This view is only compounded by the fact that the Respondent's website at the Disputed Domain Name advertises the Complainant's products quite apart from its competitors' products.
In these circumstances the Panel accepts the Complainant's submission that the Respondent's conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy and amounts to an intentional use of the Disputed Domain Name to attract internet users to its website by creating confusion as to the source, sponsorship, affiliation or endorsement of its website.
Accordingly the Complainant has fulfilled the requirements of paragraph 4(a)(iii) 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 the Complainant.
Alistair Payne
Sole Panelist
Dated: September 15, 2009
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