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 c/o SafestWhois (TM) Premium Registration Service of Singapore / Jeremy Martin Gilstrap of Oklahoma City, Oklahoma, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with IP Mirror Pte Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 25, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 4, 2015.
The Center verified that the Complaint together with the amended 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 March 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2015. The Respondent sent an email communication on March 26, 2015, stating only that he had ordered an "expired domain. now deleted." The email did not respond to the allegations of the Complaint or include or attach any evidence to rebut those allegations.
The Center appointed Dana Haviland as the sole panelist in this matter on April 1, 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 Eli Lilly and Company has been in the pharmaceutical industry for over 120 years. Founded in 1876 by Captain Eli Lilly in Indianapolis, Indiana, the company has developed a variety of successful pharmaceutical products for treatment of numerous diseases and disorders, including cancer, cardiovascular disease, diabetes, serious infections, schizophrenia, and depression.
The Complainant's U.S. rights in the LILLY trademark (the "LILLY Mark") date back to as early as February 1, 1895, when it began using the LILLY Mark in commerce. The LILLY Mark was filed for registration with the United States Patent and Trademark Office on December 7, 1981 and registered on the principal register on February 8, 1983 (Registration No. 1,226,434) in association with medicines, pharmaceutical preparations, and drugs. The Complainant has obtained 177 registrations and has 8 pending applications for the LILLY Mark covering 137 countries around the world in association with its Class 5 pharmaceutical products. The Complainant registered the domain name on May 10, 1991, and since June 1991 has used that domain name to identify a website advertising and providing information about its pharmaceutical products.
In 2003, the Complainant introduced its CIALIS brand product, a pharmaceutical preparation for the treatment of sexual dysfunction. Its Cialis trademark was registered with the United States Patent and Trademark Office on June 10, 2003 (Registration No. 2,724,589) in association with pharmaceutical and medicinal preparations for the treatment and prevention of sexual dysfunction (the "CIALIS Mark"). The Complainant owns 181 registrations for the CIALIS Mark, covering 125 countries.
The Domain Name was registered by the Respondent on January 1, 2015. The website associated with the Domain Name appears to be an online pharmacy calling itself "Lilly Pharmaceuticals", that advertises and purports to sell so-called "generic" and other versions of the Complainant's Cialis product, as well as "generic" versions of Viagra and Levitra brand products and other competing pharmaceutical products for treatment of sexual dysfunction. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Domain Name is identical or confusingly similar to trademarks in which it has prior registered rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted evidence to establish that it is the owner of rights in its LILLY Mark which predate the registration of the Domain Name.
The Domain Name incorporates the Complainant's LILLY Mark in its entirety, adding only the word "pharmaceuticals" and the ".com" generic Top-Level Domain ("gTLD"). It is well established that the inclusion of the gTLD typically does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant's trademark. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Iconcard S.p.A. v. Linecom,WIPO Case No. D2005-1115; L'Oréal v. Tina Smith,WIPO Case No. D2013-0820.
The addition of the word "pharmaceuticals" does not diminish, but on the contrary, enhances the confusing similarity of the Domain Name to the Complainant's Mark, by referring to the pharmaceutical industry and products in which the Complainant does business. See Lilly ICOS, LLC v. Insight Ventures/James Connell,WIPO Case No. D2006-1057 ("adding descriptive terms or other marks does not alleviate confusion"); Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (domain name confusingly similar to complainant's GATEWAY trademark because it contained "the central element of the ... Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business"); LC Trademarks, Inc. v. PayDues, Inc.,WIPO Case No. D2011-2125 ("where ... the added generic term is related to the Complainant's business, the confusing similarity is reinforced").
The Panel finds that the Domain Name is confusingly similar to the Complainant's LILLY Mark, in which the Complainant has prior rights, and that the Complainant has thus established the first element of its claim, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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 not acquired trademark 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 trademark or service mark at issue.
According to the Complaint, the Respondent has registered the Domain Name including the Complainant's LILLY Mark without the Complainant's authorization. Other UDRP panels have found, and this Panel agrees, that the Complainant's LILLY Mark is well-known. See, e.g., Eli Lilly and Company v. WhoisGuard Protected,WIPO Case No. D2007-0162); Eli L. Lilly and Company v. URDMC, LLC,WIPO Case No. D2011-0715).
There is no evidence that the Respondent, who has failed to formally respond to the Complainant's contentions, used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods and services. In this regard, the Complainant has submitted evidence to show that the Domain Name has been used for a website using the Complainant's Mark, purporting to be an online pharmacy established or authorized by the Complainant, and containing advertisements and offers for sale of various pharmaceutical products, including allegedly "generic" versions of the Complainant's Cialis product and competing products for erectile dysfunction like Viagra, Levitra and others.
The Respondent's use of the Complainant's well-known LILLY mark in the Domain Name and on the website to offer these competing pharmaceutical products for sale is sufficient to establish that the Respondent registered and used the Domain Name incorporating the Complainant's LILLY Mark to attract Internet users for commercial gain. This use of the Domain Name by the Respondent does not demonstrate any right or legitimate interest in the Domain Name and does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Eli L. Lilly and Company v.URDMC, LLC, supra (respondent's use of the disputed domain name for a parking website, which advertised goods and services of the complainant and third parties that were competitive with those of the complainant, did not establish rights or legitimate interests); Lilly ICOS LLC v. Alexey Stoun,WIPO Case No. D2006-1170 (respondent had no rights or legitimate interests where he was using the complainant's CIALIS mark in the disputed domain name to direct consumers in search of Cialis brand product to a website which advertised and sold "generic" Cialis product as well as competitive products). See also Barclay's Bank PLC v. Rico Martinez,WIPO Case No. D2010-1987; LC Trademarks, Inc. v. PayDues, Inc., supra.
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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. Here the Complainant has made out such a prima facie case, and the Respondent has not submitted any formal response to the Complainant's contentions or evidence to establish any rights or legitimate interests in the Domain Name.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the registrant has registered or 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.
The Respondent's use of the Domain Name for a website using the Complainant's well-known LILLY Mark, purporting to be established or authorized by the Complainant, and purporting to offer the Complainant's own Cialis product and competing pharmaceutical products for sale, constitutes evidence of bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy. See Lilly ICOS LLC v. Alexey Stoun, supra (respondent's use of the well-known CIALIS mark in the domain name "to capitalize on the valuable reputation and goodwill of the CIALIS mark to direct Internet users to a website advertising [generic] CIALIS product and competitive products such as Viagra ... creates the likelihood of confusion of a kind specifically stated in [p]aragraph 4(b)(iv) of the Policy"). See also Eli L. Lilly and Company v.URDMC, LLC, supra; Barclays Bank PLC v. Rico Martinez, supra; LC Trademarks, Inc. v. PayDues, Inc., supra.
With respect to the issue of bad faith, the Complainant further argues that the Respondent's allegedly "generic" versions of its Cialis product and competing products like Viagra and Levitra are illegal and counterfeit drugs, as there are no approved generic versions of these products, and that the offering of such illegal and counterfeit products is dangerous to the public health. The Panel considers that these allegations are outside the scope of this UDRP domain name proceeding, better addressed in a different forum, and, in any event, not necessary for a finding of bad faith in this proceeding. See Lilly ICOS, LLC v. Insight Ventures/James Connell, supra. Like the UDRP panel in that case, however, the Panel does find that the Respondent in this case has used the Domain Name "for a commercial gain to direct Internet users to a commercial website where it directly offers goods that compete with Complainant. The Panel also finds that Internet users may mistakenly believe that the [website is] affiliated with Complainant. Such use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy."
The Panel finds that the Complainant has established the Respondent's bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to the Complainant.
Dana Haviland
Sole Panelist
Date: April 15, 2015
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