The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America, represented by Faegre Baker Daniels LLP, United States of America.
The Respondent is Conway of Taipei, Taiwan Province of China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in Chinese language on March 14, 2013. On March 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the Respondent’s contact details, and advising that the language of the registration agreement for the disputed domain names is English. On March 19, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On the same day, the Complainant submitted an English translation of the Complaint. On March 20, 2013, the Center notified the parties that the language of the proceeding shall be English.
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 proceeding commenced on March 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on April 11, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 23, 2013. 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 A. Complainant
The Complainant is a company incorporated in the State of Indiana in the United States of America (the “US”).
The Complainant is the owner of numerous registrations worldwide for the trade mark CIALIS (the “Trade Mark”), the earliest dating from June 17, 1999, including registrations in Taiwan Province of China, where the Respondent is based. B. Respondent
The Respondent is an individual apparently with an address in Taiwan Province of China. C. The Disputed Domain Name
The disputed domain names were both registered on August 5, 2009. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Trade Mark is a well-known pharmaceutical brand, used continuously by the Complainant since January 2003. In 2004, the Complainant spent approximately USD 39 million on marketing the Trade Mark worldwide. The Complainant’s worldwide sales of its CIALIS product in 2012 were USD 1.876 billion dollars.
The disputed domain names are confusingly similar to the Trade Mark. They incorporate the Trade Mark in its entirety, together with the non-distinctive and descriptive acronym “tw” meaning “Taiwan”.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent is not commonly known by the disputed domain names and is not making a bona fide noncommercial use of the disputed domain names.
The disputed domain names have been registered and used in bad faith. They have been used by the Respondent in respect of online pharmacy websites which advertise and sell counterfeit versions of the Complainant's CIALIS product (the “Websites”).
The Complainant's CIALIS product is only available on a physician's prescription and is manufactured, labelled, and sold in strict compliance with the China State Food and Drug Administration ("SFDA"), the US Food and Drug Administration ("FDA") and other health authority laws and regulations. The Respondent's use of the disputed domain names in this manner is potentially harmful to the health of consumers who may purchase the CIALIS product offered for sale on the Websites under the mistaken impression that they are dealing with the Complainant and, therefore, will be receiving safe and effective drugs approved by the SFDA, the FDA and other health authorities around the world. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through registration and use which predate the date of registration of the disputed domain names by 14 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The disputed domain names comprise the Trade Mark in its entirety together with the non-distinctive and descriptive letters “tw”, which is the commonly used abbreviation for “Taiwan”. This does not serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 disputed domain names 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 disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by 14 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the Websites being used to offer for sale counterfeit CIALIS pharmaceutical products.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’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 Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant has filed cogent evidence to suggest the Respondent has registered and used the disputed domain names in respect of Websites offering for sale counterfeit CIALIS products. The Respondent has not been authorised by the Complainant to sell its CIALIS product, and the Complainant’s CIALIS pharmaceutical product is only sold by doctor’s prescription, in strict compliance with the SFDA, FDA and other health authority laws and regulations.
Such use of the disputed domain names amounts to clear evidence of bad faith. The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: May 7, 2013
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