ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Eli Lilly and Company v. David Royal, Namecheapx, David David, Syed Shehryar Sarwar, XMart Host LTD, Asif Saif Case No. D2024-3492 1. The Parties The Complainant is Eli Lilly and Company, United States of America (“United States”), represented by Faegre Drinker Biddle & Reath LLP, United States. The Respondents are David Royal, Namecheapx, United States; David David, United States; Syed Shehryar Sarwar, XMart Host LTD, United Kingdom; and Asif Saif, Pakistan. 2. The Domain Names and Registrars The disputed domain names , , , , , , and are registered with CloudFlare, Inc. The disputed domain names , , and are registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com. The disputed domain names , , , and are registered with Hostinger Operations, UAB. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2024. On August 28, 2024, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On August 29, 2024, the Registrars 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 (DATA REDACTED) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all disputed domain names are under common control. The Complainant filed an amendment to the Complaint on August 30, 2024.
page 2 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 Respondents of the Complaint, and the proceedings commenced on September 12, 2024. In accordance with the Rules, paragraph 5, the due date for Responses was October 2, 2024. The Respondents did not submit any response. One of the Respondents sent an email communication to the Center on September 15, 2024, suggesting that a domain name outside of the proceeding be included in the Complaint. On September 25, 2024, the Complainant sent an email communication to the Center enquiring about the inclusion of the suggested domain name in the Complaint. On October 3, 2024, the Center notified the Parties that it will proceed to Panel Appointment. The Center appointed Assen Alexiev as the sole panelist in this matter on October 7, 2024. 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. On October 9, 2024, the Panel issued his Procedural Order No.1, whereby he invited the Complainant to specify the supporting arguments for its request for consolidation of the proceedings in respect of the disputed domain names, provided an opportunity to the Complainant to submit an amended Complaint including the additional domain name that was suggested by one of the Respondents, and invited the Respondents to submit comments on the Complainant’s submissions pursuant to Procedural Order No.1. On October 14, 2024, the Complainant made its submission pursuant to Procedural Order No.1 and stated that it had chosen not to request the inclusion of the additional domain name in this proceeding. The Respondents did not submit any comments in response to the Complainant’s submission within the time limit fixed by the Panel for this purpose. 4. Factual Background The Complainant is an American multinational pharmaceutical company, founded in 1876. One of its products is Mounjaro, an injectable pharmaceutical product for the treatment of type 2 diabetes. In May 2022, Mounjaro was approved by the United States Food and Drug Administration, and the Complainant launched it on the market in June 2022. At the time of filing of the Complaint, Mounjaro has been approved for sale by the competent authorities in ten other countries around the world. The sales of Mounjaro reached USD 5,160,000,000 in 2023 and USD 4,897,000,000 in the first half of 2024. The Complainant is the owner of a number of trademark registrations for the sign “MOUNJARO” (the “MOUNJARO trademark”), including the following: − the European Union trademark MOUNJARO with registration No. 018209187, registered on September 8, 2020 for goods in International Class 5; and − the United States trademark MOUNJARO with registration No. 6809369, registered on August 2, 2022 for goods in International Class 5. The Complainant is also the owner of the domain name registered on October 21, 2019, which is used as its official website for the Mounjaro product. The only information that is available about the Respondents is their names and contact details provided by the Registrars.
page 3 The details about the dates of registration of the disputed domain names, their registrars, registrants, and their use is included in the table that follows: Disputed domain name Date of registration Registrant Registrar Use at the time of filing of the Complaint Current use January 4, 2024 David Royal (the “First Respondent”, or “R1”) CloudFlare, Inc. (the “First Registrar”) Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive July 18, 2024 First Respondent First Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive July 5, 2024 First Respondent First Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive April 2, 2024 First Respondent First Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive April 25, 2024 First Respondent First Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive
page 4 April 25, 2024 First Respondent First Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive May 23, 2024 David David (the “Second Respondent”, or “R2”) First Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive July 25, 2024 Syed Shehryar Sarwar (the “Third Respondent”, or “R3”) GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Second Registrar”) Resolved to a website that offered for sale the Complainant’s Mounjaro product Resolves to a website that offers for sale the Complainant’s Mounjaro product August 1, 2024 Third Respondent Second Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product Resolves to a website that offers for sale the Complainant’s Mounjaro product July 16, 2024 Third Respondent Second Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product Resolves to a website that offers for sale the Complainant’s Mounjaro product July 29, 2024 Asif Saif (the “Fourth Respondent”, or “R4”) Hostinger Operations, UAB (the “Third Registrar”) Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive
page 5 May 28, 2024 Fourth Respondent Third Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive July 24, 2024 Fourth Respondent Third Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive July 19, 2024 Fourth Respondent Third Registrar Resolved to a website that offered for sale the Complainant’s Mounjaro product inactive 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. The Complainant states that the disputed domain names are confusingly similar to its MOUNJARO trademark, because they consist of the Complainant’s trademark, followed by geographic terms and/or dictionary words, together with the generic Top-Level Domains (“gTLD”) “.org” or “.com”. The Complainant submits that the terms “uk” and “uae” are abbreviations for the United Kingdom and United Arab Emirates, respectively, and that the term “sverige” is the Swedish word for Sweden. The Complainant also maintains that the addition of the dictionary words “buy”, “online”, “pharmacy”, and “comprar” (“buy” in Spanish) does not prevent a finding of confusing similarity. According to the Complainant, the Respondents have no rights or legitimate interests in respect of the disputed domain names, because they are not commonly known by them and are not using the disputed domain names in connection with a bona fide offering of goods and services or making a legitimate noncommercial or fair use of the disputed domain names, and the Complainant has not given them permission to use the MOUNJARO trademark. The Complainant submits that the Respondents have registered the disputed domain names to attract Internet traffic to the associated websites where they display the Complainant’s MOUNJARO trademark and official marketing images, and sell gray market or potentially counterfeit versions of the Complainant’s Mounjaro product without prescription in jurisdictions where the product is not authorized for distribution. The Complainant points out that the websites at the disputed domain names explicitly state that no prescription is required to purchase the prescription-only MOUNJARO product. The Complainant further states that the Respondents fail to accurately disclose their relationship (or lack thereof) with the Complainant and the lack of any such statement or disclaimer, together with incorporation of the Complainant’s trademark into the disputed domain names, leads Internet users to falsely believe that the
page 6 websites at the disputed domain names are the Complainant’s official websites, that the Respondents are authorized distributors of the Complainant’s products, or that the Respondents own the Complainant’s trademark. The Complainant also notes that the physical addresses on the websites at the disputed domain names appear falsified as the addresses provided lead to clearly unrelated businesses (like an Asian food market) or exclude critical details like street numbers. The Complainant adds that the disputed domain name is also being used to offer competitive products. According to the Complainant, all the above shows that the Oki Data test is not satisfied (section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant contends that the disputed domain names were registered and are being used in bad faith. According to it, the Respondents are using the Complainant’s MOUNJARO trademark to attract Internet traffic to the websites at the disputed domain names in order to profit from the sale of gray market or otherwise counterfeit products, and in the case of the disputed domain name , also to sell competitive products. The Complainant adds that the Respondents are using the disputed domain names to offer prescription-only products without a prescription. The Complainant notes that the content of the websites at the disputed domain names, in particular the use of the Complainant’s MOUNJARO trademark, misleads visitors that there is an association between the Complainant and the websites at the disputed domain names, and shows that the Respondents intentionally attempt to attract Internet users to the disputed domain names for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. According to the Complainant, the Respondents’ use of the Complainant’s trademark in the disputed domain names is potentially harmful to the health of many unsuspecting consumers who may purchase products advertised through the websites at the disputed domain names the mistaken impression that they are dealing with the Complainant or an authorized distributor of the Complainant and, therefore, will be receiving safe and effective drugs approved by health authorities around the world. The Complainant also points out that the Respondents have registered fourteen disputed domain names which incorporate the Complainant’s MOUNJARO trademark, which shows a pattern of conduct directed against the Complainant. The Complainant notes that the First Respondent David Royal was the registrant of four domain names containing the MOUNJARO trademark that was the subject of Eli Lilly and Company v. David Royal/Namecheapx, WIPO Case No. D2024-2074, and of one domain name containing the MOUNJARO trademark that was the subject of Eli Lilly and Company v. David Royal, cheapx, WIPO Case No. D2024-1379. B. Respondent The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural issue – Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. In support of its consolidation request, the Complainant maintains that the same individual or entity has registered and is using the disputed domain names, and submits that consolidation would avoid unnecessary duplication of time, effort, and expense. The Complainant points out that all of the disputed domain names were registered within a short time span and 11 of them use the same name servers. The Complainant also points out that each of the disputed domain names incorporates the Complainant’s MOUNJARO trademark, followed by geographic terms or dictionary words, and that all of them resolve to websites with nearly identical layouts, images, photographs and text to sell gray market or counterfeit versions of the Complainant’s Mounjaro product at a 90% discount without a prescription.
page 7 The disputed domain name registrants did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview 3.0, section 4.11.2. As regards the existence of common control over the disputed domain names, the Panel notes the arguments raised by the Complainant and supported by the evidence submitted by it. These arguments are listed in the table that follows: Argument in support of the existence of common control Disputed domain names to which this argument applies, with indication in brackets of the Respondent who is its registrant (e.g., “R1” for the First Respondent) Additional information and reference to supporting evidence submitted as an annex to the Complaint The First and the Second Respondents have indicated the same address, telephone and registrar - (R1) - (R1) - (R1) - (R1) - (R1) - (R1) - (R2) Annex 1 All disputed domain names were registered within a short period of time, with the majority of them registered on the same day or within days of others All disputed domain names Annex 1 The registration dates of the disputed domain names are: - January 4, 2024: (R1) - April 2, 2024: (R1) - April 25, 2024: (R1) - April 25, 2024: (R1) - May 23, 2024: (R2) - May 28, 2024: (R4) - July 5, 2024: (R1) - July 16, 2024: (R3) - July 18, 2024: - July 19, 2024:
page 8 (R4) - July 24, 2024: (R4) - July 25, 2024: (R3) - July 29, 2024: (R4) - August 1, 2024: (R3) All disputed domain names registered by the First and the Fourth Respondents use the same name servers - (R1) - (R1) - (R1) - (R1) - (R1) - (R1) - (R4) - (R4) - (R4) - (R4) Annex 1 All disputed domain names incorporate the MOUNJARO trademark plus a geographic and/or dictionary word. The First, Third and Fourth Respondents mix the same geographic terms as other Respondents with overlapping dictionary words like “buy”, “comprar” in Spanish, “online” and “pharmacy” All disputed domain names MOUNJARO trademark + geographic term: - (R1) - (R2) - (R1) - (R1) - (R1) - (R4) - (R3) MOUNJARO trademark + geographic term and dictionary word: - (R1) - (R1) - (R4) - (R4) - (R3) MOUNJARO Trademark + dictionary word: - (R4) - (R3)
page 9 All disputed domain names resolve to websites that prominently display the MOUNJARO trademark in the header and footer of the websites and offer for sale the Complainant’s MOUNJARO product All disputed domain names Annex 4 (all pages) The websites at 12 disputed domain names include the same text to advertise the MOUNJARO product at a 90% discount without prescription - (R1) - (R1) - (R2) - (R1) - (R1) - (R1) - (R1) - (R4) - (R4) - (R3) - (R3) - (R3) Annex 4: - (R1) - (R1) - (R2) - (R1) - (R1) - (R1) - - (R4) - (R4) - (R3) - (R3) - (R3) The First, Second and Third Respondents use the exact same image of a couple on the websites at certain disputed domain names registered by them - (R1) - (R1) - (R2) - (R1) - (R3) - (R3) Annex 4: - (R1) - (R1) - (R2) - (R1) - (R3) - (R3) The First, Second and Third Respondents use the exact same image of an individual on the websites at certain disputed domain names registered by them - (R1) - (R1) - (R2) - (R1) - (R1) - (R3) - Annex 4: - (R1) - (R1) - (R2) - (R1) - (R1) - (R3) - (R3)
page 10 (R3) The First and the Third Respondents use the same image of a couple on the websites at certain disputed domain names registered by them - (R1) - (R1) - (R3) - (R3) Annex 4: - (R1) - (R1) - (R3) - (R3) The combination of the above overlapping circumstances, supported by the evidence submitted by the Complainant, and the lack of any contrary allegation or evidence submitted by any of the Respondents, lead the Panel to the conclusion that it is more likely than not that all of the disputed domain names are indeed under common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of the MOUNJARO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the MOUNJARO trademark is recognizable within the disputed domain names. Accordingly, all of the disputed domain names are confusingly similar to the MOUNJARO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “ireland”, “france”, “australia”, “southafrica”, “europe”, “mexico”, “sverige”, “dubai”, “brasil”, “buy”, “comprar”, “online”, “uae”, “uk” and “pharmacy” in various combinations) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the MOUNJARO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, 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 name (although the burden of
page 11 proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity (here, claimed sale of counterfeit goods or illegal pharmaceuticals) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. All of the disputed domain names are confusingly similar to the MOUNJARO trademark and were registered after the Complainant registered the same trademark, obtained marketing authorizations for its Mounjaro product, placed it on the market and made sales of it worth billions of US Dollars. Mounjaro is a prescription-only product and has been authorized for sale only in specific countries. The evidence submitted by the Complainant shows that at the time of filing of the Complaint, all of the disputed domain names resolved to websites that prominently displayed the MOUNJARO trademark and offered for sale what was presented as the Complainant’s Mounjaro product with worldwide delivery without restrictions. The websites at 12 of the disputed domain names have expressly advertised that the offered product is without prescription and at a 90% discount. The Respondent does not provide any plausible explanation how it could offer for sale a prescription-only medicine in countries where it has not been authorized yet, and all this at a 90% discount. In view of the above, it appears as more likely than not that the Respondent has indeed used the disputed domain names for the illegal sale of possibly counterfeit pharmaceuticals, which cannot give rise to rights or legitimate interests of the Respondent in the disputed domain names. The Panel therefore finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity (here, claimed sale of counterfeit goods or illegal pharmaceuticals) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy. As discussed above in the section on rights and legitimate interests, the evidence in the case supports of finding that it is more likely than not that the Respondent has used the disputed domain names for the illegal sale without prescription of a prescription-only medicine, including in countries where the medicine has not been authorized for sale yet, or for the sale of counterfeit goods. Such conduct supports a finding of bad faith registration and use of the disputed domain names. The Panel therefore finds that the Complainant has established the third element of the Policy.
page 12 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 , , , , , , , , , , , , , and be transferred to the Complainant. /Assen Alexiev/ Assen Alexiev Sole Panelist Date: October 22, 2024
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