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 Veysel Tekbiyik of Izmir, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2015. On February 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2015, the Registrar 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 February 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2015.
The Center appointed Adam Samuel as the sole panelist in this matter on April 9, 2015. 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 is a US pharmaceutical company. It owns a number of trademark registrations in the United States of America and other countries for the name CIALIS, including US trademark number 2724589, registered on June 10, 2003. It markets its drug CIALIS through its domain name which was registered on August 10, 1999. The disputed domain name was first registered on December 28, 2012. The website at the disputed domain name is currently inactive. 5. Parties’ Contentions A. Complainant
These are the Complainant’s contentions with which the Panel may or may not agree.
The Complainant’s CIALIS trademark is well-known throughout the world. It is an invented word with high degree of individuality, inherent distinctiveness and no common colloquial use. The Respondent has merely added the term “turkiye” (which is a variation of the country Turkey) to the CIALIS mark to create the dispute domain name. This resolves to a website in Turkish. The addition of a country name generally implies that the domain name is the website for the trademark owner for business activities in that country. Therefore, consumers are likely to infer that the website associated with the disputed domain name is the Complainant’s website for its business activities in Turkey which is not true. The addition of generic or descriptive words, such as “turkiye”, to the Complainant’s trademark do not negate the distinctiveness of the mark.
The Respondent does not appear to be commonly known as “Cialis” and is not making legitimate non-commercial use of the disputed domain name. The website associated with the disputed domain name prominently advertises and allegedly sells illegal and/or counterfeit versions of the Complainant’s CIALIS brand product. This website advertises and sells a product not affiliated with the Complainant called “Geciktirici Sprey”.
The Respondent is luring consumers in search of the Complainant’s CIALIS brand product to its website which is an online pharmacy that advertises and sells counterfeit and/or illegal pharmaceutical products for the treatment of erectile dysfunction. The Respondent’s homepage exacerbates the confusion by its unauthorized use of an image of the Complainant’s distinctive CIALIS Swirl Logo, as well as images of the Complainant’s product packaging.
The Respondent probably chose the disputed domain name and the materials displayed on the website associated with the disputed domain name in order to create an impression of association with the Complainant. It is apparent from the website associated with the disputed domain name that the Respondent was attempting to capitalize on the valuable reputation and goodwill of the CIUALIS mark to direct Internet users to its website for commercial gain.
The Complainant has not given the Respondent permission, to use its CIALIS mark (or any confusingly similar variations of it).
It is highly likely that the Respondent knew of the Complainant’s CIALIS mark at the time of registering the disputed domain name in 2012. The Respondent is using the Complainant’s CIALIS mark in the disputed domain name to derive a financial benefit by directing internet users to its website. The Respondent’s use of the Complainant’s CIALIS trademark is potentially harmful to the health of many unsuspecting consumers who may have purchased unlawfully sold pharmaceutical products advertised through the Respondent’s website under the mistaken impression that they are dealing with the Complainant and, therefore, would be receiving safe and effective drugs approved by health authorities around the world. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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 disputed domain name duplicates the Complainant’s well-known and distinctive trademark with only the necessary addition of the gTLD “.com” and the word “turkiye” which is the Turkish word for the country, “Turkey”. To an Internet user, this would normally just imply that the disputed domain name resolved to a Turkish language or Turkey-related website of the Complainant. The addition of a country description to a well-known trademark which has no independent meaning does not remove the confusing similarity between the disputed domain name and the Complainant’s trademark. For these reasons, the Panel finds that the disputed domain name is confusingly similar to the trademark CIALIS in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not called “Cialis” or anything similar and does not appear to engage in a legitimate trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant’s trademark is extremely well known and was so when the dispute domain name was registered. It is apparent from the website to which that domain name resolves that the registrant knows about the Complainant’s trademark.
In this Panel’s view, one is left with three possible motives for the Respondent’s decision to register the disputed domain name: to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three.
It is unnecessary in the circumstances to reach a conclusion about the other points made in the Complaint. 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 name, be transferred to the Complainant.
Adam Samuel
Sole Panelist
Date: April 12, 2015
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