The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America (“United States”), represented by Faegre Baker Daniels LLP, United States.
The Respondent is Fabian Dusen / Fabian Duser / Fabin Duser / Ali Adiyaman of Dusseldorf, Germany. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , and are registered with GoD, LLC. The disputed domain name is registered with Wild West Domains, LLC. The disputed domain name is registered with 1API GmbH (collectively referred to as the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2015. On August 14, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names (hereafter the “Domain Names”). On August 17, 2015, GoD, LLC and Wild West Domains, LLC transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On August 18, 2015, 1API GmbH 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 sent an email communication to the Complainant on August 19, 2015 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 21, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 22, 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 pharmaceutical company that produces a treatment for erectile disfunction that is commonly identified as Cialis. The Complainant commenced the sale of the Cialis product on January 22, 2003. In 2004 value of the sales of the Cialis product were more than USD 206 million, which as of 2014, had increased to USD 2.291 billion.
The Complainant has held trade marks for the word mark CIALIS (the “CIALIS Mark”) since 1999, when the Complainant’s predecessor in interest filed for the registration of the CIALIS Mark in the United States. It currently holds registrations for the CIALIS Mark in 125 countries. The Complaiant and its predecessor in interest have held the domain name since August 10, 1999 and have used the domain name to resolve to a website since June 2001.
The Domain Name was created on January 22, 2010.
The Domain Name was created on December 15, 2014.
The Domain Name was created on December 15, 2014.
The Domain Name was created on December 26, 2014.
The Domain Name was created on January 6, 2015.
The Domain Name was created on January 7, 2015.
The Domain Name was created on 10 January 2015.
The Domain Name was created on February 28, 2015.
The Domain Name was created on February 28, 2015.
The Domain Name was created on July 7, 2015.
The Domain Name was created on July 12, 2015.
The Domain Names , , , , , and appear to be inactive or lead to placeholder pages indicating that a website is coming soon. The Domain Names , , , , and redirect to websites (the “Respondent’s Websites”) that are either in English or Turkish and appear to offer the Cialis product or a “generic version” of the Cialis product for sale. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are confusingly similar to the Complainant’s CIALIS Mark;
(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the CIALIS Mark. It holds 181 registrations for the CIALIS Mark in 125 countries around the world. The Complainant has also registered a number of domain names that incorporate the CIALIS Mark, including .
The Domain Names consist of the CIALIS Mark in its entirety with the addition of various terms including “tablet”, “20MG”, “siparis” (meaning “order” in Turkish) and hence are identical or confusingly similar to the CIALIS Mark.
The Respondent is not commonly known by the Domain Names nor does it have any trade marks that correspond to the Domain Names. The Complainant has not authorized or licensed the Respondent to use the CIALIS Mark or any confusingly similar variations thereof. Five of the Domain Names redirect to the Respondent’s Websites which purport to sell “generic” versions of the Cialis product. These websites make unauthorized use of the Complainant’s CIALIS Mark and packaging which is predominantly displayed on the Respondent’s Websites. By reason of this it is apparent that the Respondent is seeking to capitalize on the reputation of the CIALIS Mark for commercial gain.
The Respondent either uses the Domain Names, or holds the Domain Names in preparation for use as a website offering “generic” versions of the Complainant’s CIALIS product. The Respondent is using the Domain Names to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s Websites. The Respondent has registered and used the Domain Names in bad faith by registering the Domain Names while being aware of the Complainant’s rights and then using the Domain Names for financial gain. Such conduct amounts to registration and use of the Domain Names in bad faith. With respect to the Domain Names at which the Respondent does not appear to have an operating website, given the use of the Respondent’s (active) Websites, the purpose of the registration and passive holding of those Domain Names must have been in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Consolidation of Proceedings
The named registrant of is Fabin Duser. The named registrant of is Fabian Dusen. The named registrant of is Ali Adiyaman. The remaining Domain Names are registered to Fabian Duser. UDRP Proceedings are normally brought against a single Respondent. However, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), it is permissible to consolidate a proceeding against more than one named Respondent if (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against each of the named registrants. Each of the Domain Names is registered to an individual located at the same address, with the same telephone number and email address. The names “Fabin Duser” and “Fabian Dusen” are obvious typographical misspellings of Fabian Duser, while Fabian Duser is referred to as a localized name in the registration details for the Domain Name formally registered to Ali Adiyaman. The Panel has received no objection from the Respondent to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all parties. B. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the CIALIS Mark, having registrations for the CIALIS Mark as a trade mark throughout the world.
Other UDRP panels “have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant.” Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884. See also Valero Energy Corporation v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227.
The Domain Names either consist of the CIALIS Mark and a generic Top-Level Domain (“gTLD”), which can be discounted for the purposes of comparison under the first element, or the CIALIS Mark and the words “tablet”, “20mg” “siparis” (meaning “order” in Turkish) “bilgi” (meaning “information” in Turkish), “satis” (meaning “sales” in Turkish), or “sahte” (meaning “false” in Turkish). None of the additional words operate to distinguish the Domain Names from the CIALIS Mark in any significant way. The Panel finds that the each of the Domain Names are identical or confusingly similar to the Complainant’s CIALIS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the CIALIS Mark or a mark similar to the CIALIS Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
With respect to the Domain Names , , , , , and , there is no evidence of the Respondent operating a website from these Domain Names.
With respect to the , , , and , the Respondent’s Websites, at the time of the Complaint, appeared to promote the sales of “generic Cialis”. In addition to displaying the CIALIS Mark, the Respondent’s Websites displayed the Complainant’s packaging. The Respondent is not authorized to sell CIALIS by the Complainant, nor is there any evidence that products offered for sale by the Respondent are genuine products produced by the Complainant. This unauthorized use of the Complainant’s CIALIS Mark does not amount to a bona fide offering of goods and services. Rather, the Respondent is attempting to attract, for commercial gain, Internet users to its commercial websites by creating a likelihood of confusion with the Complainant’s CIALIS Mark.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Panel finds that the Respondent must have been aware of the Complainant and its reputation in the CIALIS Mark at the time the Respondent registered the Domain Names. A number of the Domain Names resolve to websites that, at the time of the Complaint, displayed the CIALIS Mark, the name of a product sold and promoted extensively by the Complainant. “Cialis” is not an ordinary English word. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the CIALIS Mark unless there was an intention to create a likelihood of confusion between the Domain Names and the Complainant and the CIALIS Mark.
The use of the Domain Names , , , and to sell “generic cialis”, be it a genuine generic version of the Cialis product or not, is use of those Domain Names in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s CIALIS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
While there is no evidence of similar conduct arising from the , , , , , and Domain Names, the Panel is prepared to infer, based on the conduct of the Respondent, including the failure to provide a Response in this proceeding and the lack of any apparent legitimate reason for the registration and use of these Domain Names, that these Domain Names either have been used or have been held pending use for similar purposes as the , , , and Domain Names. As such Panel finds that the passive holding of the , , , , , and amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith 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 Names , , , , , , , , , and be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: September 30, 2015
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