The Complainant is Eli Lilly and Company, United States of America (“United States”), represented by Faegre Drinker Biddle & Reath LLP, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Shilei, China1 . 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2020, 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 April 17, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2020. The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 13, 2020. 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 has been in the pharmaceutical industry since 1876 and has been at the forefront of significant medical breakthroughs throughout the years. In response to the current coronavirus pandemic, the Complainant is also providing testing for the COVID-19 disease. The Complainant has used the LILLY trade mark since 1895. To date, the Complainant holds 270 registrations for the LILLY mark covering more than 142 countries around the world in association with a variety of goods and services, including the following registrations (the “Trade Marks”): - United States Registration No. 1,226,434 registered on February 12, 1983, for the word mark LILLY; - United States Registration No. 1,318,867, registered on February 12, 1985, for the device mark LILLY; - European Union Registration No. 3702248, registered on July 28, 2005, for the word mark LILLY. The Domain Names were registered on March 24, 2020, and redirect to websites with the captions “PC Repair Tool” and “How to Fix Issues with Windows 10”’, inviting the user to update its version of Windows 10 software by downloading “the registry repair application”. 5. Parties’ Contentions A. Complainant According to the Complainant, the Domain Names are confusingly similar to the Trade Marks. The Complainant states that it believes that, because of the significant duration of time that the Complainant has used the LILLY mark in commerce to identify the source of pharmaceutical preparations, the Trade Marks are well known. The Complainant points out that the Domain Names consist of a combination of the LILLY mark and the generic and/or descriptive words “covid testing” or (a misspelling of) “covid19 testing”. Furthermore, the Complainant submits, the addition of generic and/or descriptive words to a well-known trade mark does not prevent a finding of confusing similarity, while a generic Top-Level Domain (“gTLD”) may be disregarded when assessing whether a domain name is confusingly similar to a complainant’s mark. The Complainant contends that the Respondent lacks any valid rights or legitimate interests in the Domain Names. According to the Complainant, the Respondent is neither using the Domain Names in connection with the bona fide offering of goods and services nor making a legitimate noncommercial or fair use of the Domain Names, since the active websites associated with the Domain Names resolve to web pages that contain malware. Specifically, the Complainant submits, when a user is directed to one of these websites, which indicates that the user must update Windows 10 software while by clicking on one of the available links, a user will unknowingly download malware to their computer. The Complainant also points out that none of the websites associated with the Domain Names provides any information or resources regarding COVID-19 or information on testing of the virus. In addition, the Complainant points out that it has not given the Respondent permission, authorization, consent or license to use the Trade Marks and that there is no evidence that the Respondent has become commonly known by the term “lilly”. The Complainant submits that it is clear that the Respondent registered and is using the Domain Names in bad faith. According to the Complainant, it is reasonable to infer that the Trade Marks are well known, so that it is highly likely that the Respondent knew of the Trade Marks at the time of registering the Domain Names. Furthermore, the Complainant contends, the Respondent’s use of the Trade Marks in the Domain Names is potentially harmful because many unsuspecting consumers who may visit the websites associated with the Domain Names (and click on links containing malware) will be under the mistaken impression that they are dealing with the Complainant and, therefore, will be receiving information on COVID-19 testing through a safe and reliable source after they update their Windows 10 software. The Complainant adds that the registration of a domain name that is confusingly similar to a registered trade mark by an entity that has no relationship to the mark is sufficient evidence to demonstrate opportunistic bad faith. Finally, the Complainant notes, the fact that the Respondent has registered four domain names reflecting the Trade Marks shows a pattern of conduct to prevent the Complainant from reflecting the Trade Marks in corresponding domain names, which is evidence of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has shown that it has registered rights in the Trade Marks. The Domain Names are confusingly similar to the Trade Marks as they incorporate the mark LILLY, in its entirety. The addition of the descriptive terms “covidtesting”, “covid19testing” or a misspelling thereof, does not avoid a finding of confusing similarity between the Domain Names and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier,WIPO Case No. D2018-0980). The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Names are confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Names. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Names. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Names, is not commonly known by the Domain Names, and has not acquired trade mark rights in the Domain Names. Furthermore, the Complainant has submitted as evidence screen shots of web pages to which the Domain Names redirect with the captions “PC Repair Tool” and “How to Fix Issues with Windows 10” which indicate that the user must update Windows 10 software, inviting the user to download “the registry repair application”. While the Panel has (understandably) not tested whether or not a user thereby downloads malware, as the Complainant submits, it is clear that such web pages have no relation with either the Trade Marks, nor any testing in relation to the COVID-19 disease, as the Domain Names suggest to an Internet user. Therefore, it is evident that the Domain Names are not used for a bona fide offering of goods or services, nor does their use constitute a legitimate noncommercial or fair use. In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Names the Respondent was or should have been aware of the Trade Marks, since: - the Respondent’s registration of the Domain Names occurred 37 years after the registration of the earliest of the Trade Marks and over one 175 years after the first use of the LILLY mark; - a simple trade mark register search, or even an Internet search, prior to registration of the Domain Names in its name would have informed the Respondent of the existence of the Trade Marks. With regard to bad faith use, the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Names: - the probability that the Respondent when registering the Domain Names was aware or should have been aware of the Complainant’s rights in the Trade Marks; - the use in the Domain Names of the Trade Marks in connection with the terms “covid”, “covid19” or a misspelling thereof, and “testing”, suggesting that they resolve to a website with information on testing for the COVID-19 virus provided by or related to the Complainant, but instead leading to web pages with an alleged “PC Repair Tool” and information on “How to Fix Issues with Windows 10”; - the use of a privacy shield upon the initial registration of the Domain Names; - the lack of a formal Response from the Respondent. Therefore, the Panel concludes that the Domain Names have been registered and are being used in bad faith. 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 Wolter Wefers Bettink 1 The Registrar confirmed that the Respondent is an individual named “Shilei” and did not provide any contact details other than the Registrar’s own contact details. According to evidence submitted by the Complainant, the Respondent appears to have been named in various previous UDRP decisions and seems to be based in China.
Sole Panelist
Date: May 25, 2020
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