Complainant is Eli Lilly and Company, United States of America (“United Sates”), represented by Faegre Drinker Biddle & Reath, United States.
Respondent is nihat akgul, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2021. On December 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 7, 2021, the Center sent an email to Complainant requesting from Complainant to amend the Complaint to reflect the correct Registrar of the disputed domain name. Complainant filed an amendment to the Complaint on December 10, 2021.
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 Respondent of the Complaint, and the proceedings commenced on December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2022.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 18, 2022. 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 BackgroundComplainant is a company organized under the laws of the United States that is active in the pharmaceutical industry.
Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand CIALIS, inter alia, the following:
- Word mark CIALIS, United States Patent and Trademark Office (USPTO), registration number: 2,724,589, registration date: June 10, 2003, status: active;
- Word Mark CIALIS, Turkish Patent and Trademark Office (TÜRKPATENT), registration number: 99 020073, registration date: November 22, 2000, status: active.
Moreover, Complainant has demonstrated to own the domain name
Respondent, according to the WhoIs information for the disputed domain name, is a resident of Turkey who registered the disputed domain name on July 9, 2019. Complainant has evidenced that - at some point before the filing of this Complaint - the disputed domain name redirected to a website under the subdomain
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions A. ComplainantComplainant contends that its CIALIS trademark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s distinctive CIALIS trademark as it incorporates the latter in its entirety, thereby simply adding the word “onlinq”, which is an intentional misspelling of the descriptive word “online”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) the products offered on the website under the disputed domain name (thereby prominently displaying Complainant’s CIALIS trademark together with the so-called “Swirl Logo”) are unlawful counterfeit pharmaceutical products which clearly demonstrates that Respondent is attempting to capitalize on the valuable reputation and goodwill of Complainant’s CIALIS trademark and (2) the statement made on Respondent’s website under the disputed domain name that Respondent was an official sales distributor of CIALIS brand products for Complainant in Turkey is utterly false and clearly demonstrates that Respondent is attempting to create an association/affiliation with Complainant in order to deceive and mislead unwitting consumers. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) Respondent apparently is using Complainant’s well-known CIALIS trademark to attract Internet consumers to Respondent’s own website under the disputed domain name from which Respondent derives a financial benefit by advertising and selling counterfeit products and (2) because Respondent has engaged in typo-squatting, Respondent’s activity amounts to registration of the disputed domain name in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate.
A. Identical or Confusingly SimilarThe Panel concludes that the disputed domain name is confusingly similar to the CIALIS trademark in which Complainant has rights.
The disputed domain name incorporates the CIALIS trademark in its entirety, added by the term “online” with a simple misspelling through exchanging the letter “e” for the letter “q”. First, numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Second, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “online” (though in a misspelled manner) does not dispel the confusing similarity arising from the incorporation of Complainant’s CIALIS trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).
B. Rights or Legitimate InterestsThe Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s CIALIS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the invented term “Cialis” on its own. To the contrary, Complainant has demonstrated that, at some point before the filing of this Complaint, the disputed domain name redirected to a website at “www.cialiscim.cialisonlinq.com” offering apparently unlawful counterfeit pharmaceutical products under Complainant’s CIALIS trademark in the Turkish language, thereby even prominently displaying Complainant’s CIALIS trademark. Such making use of the disputed domain name obviously neither qualifies as a bona fide offering of goods or services nor as using the disputed domain name for a legitimate, noncommercial or fair purpose.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad FaithThe Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Resolving the disputed domain name, which includes Complainant’s CIALIS trademark in its entirety together with a misspelled version of the term “online”, to a website offering apparently unlawful counterfeit pharmaceutical products under Complainant’s CIALIS trademark in the Turkish language, thereby prominently displaying Complainant’s CIALIS trademark together with the so-called “Swirl Logo”, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusing with Complainant’s CIALIS trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent obviously provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated December 14, 2021 could not be delivered. This fact at least throws a light on Respondent’s behavior which supports the Panel’s bad faith finding.
Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
7. DecisionFor 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
Stephanie G. Hartung
Sole Panelist
Date: January 31, 2022