Eli Lilly and Company v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1607001683593
Complainant is Eli Lilly and Company (“Complainant”), represented by Stephanie A. Gumm of Faegre Baker Daniels, LLP, Indiana. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), represented by Ustimenko Viacheslav of LAWBOOT LLC, Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buycheapcialisonline.biz>, registered with Gransy, s.r.o. d/b/a subreg.cz.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2016; the Forum received payment on July 13, 2016.
On July 15, 2016, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <buycheapcialisonline.biz> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buycheapcialisonline.biz. Also on July 18, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 5, 2016.
Complainant’s Additional Submission was timely received on August 10, 2016 and Respondent’s Additional Submission was timely received on August 10, 2016
On August 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hector Ariel Manoff as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1- Complainant has registered the CIALIS trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,724,569, registered June 10, 2003). The mark is used in connection with the sale of pharmaceutical and medical treatment for sexual dysfunction.
2- Sales of pharmaceutical products identified by the CIALIS mark began on January 22, 2003.
3- Lilly has obtained at least 190 registrations of the CIALIS mark covering 132 countries.
4- Complainant has an Internet presence, primarily through the website accessed by the domain name cialis.com, which was registered by Complainant’s predecessor-in-interest on August 10, 1999 (Annex 9).
5- Respondent registered the domain name on July 12, 2013, thus, Complainant’s rights in the CIALIS mark predate Respondent’s registration date, and Complainant has both senior and exclusive rights in the CIALIS trademark.
6- Complainant argues that prior Panels have agreed that CIALIS is an invented word with inherent distinctiveness and no common colloquial use.
7- The <buycheapcialisonline.biz> domain name is confusingly similar to the CIALIS trademark because the domain name contains the entire mark in addition to generic terms and the top-level domain (“TLD”) “.biz.”
8- Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant.
9- Respondent is using the domain name to sell competing and/or counterfeit products.
10- Respondent has engaged in bad faith registration and use. Respondent has engaged in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Also, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights to the CIALIS trademark.
B. Respondent
1- Respondent argues that it has rights or legitimate interests in the descriptive disputed domain name because it was using it to sell goods or services before it received notice from Complainant.
2- Respondent claims that it has not acted in bad faith because it is using the disputed domain name to sell goods or services, and thus has rights or legitimate interests.
3- Respondent states that there is no use of the CIALIS trademark since in the domain name buycheapcialisonline.biz the word combination “cialis” shall be considered as “ Buy Cheap C linical I mprovements, al l is online ”. This means that Respondent had been offering for sale over the Internet various clinical improvements, namely various medications, which are used for correction of erectile dysfunction, for example Apcalis, Caverta, Eriacta, Cialis, Kamagra, Tadalis, Viagra etc.
4- Respondent argues that the use of the word combination “cialis” as an acronym proves that the domain name buycheapcialisonline.biz cannot be considered as a using in bad faith.
5- Respondent’s website buycheapcialisonline.biz contains the disclaimer on the main page (http://buycheapcialisonline.biz/ ) which states that Cialis is a registered trademark of Ely Lilly and that this site is not associated with any manufacturer of medications.
C. Additional Submissions
Complainant
1- Respondent’s explanation about the CIALIS acronym was not provided anywhere on Respondent’s web page until after the Complaint was filed.
2- Complainant argues it is such an odd acronym which would not be easily recognized by visitors.
3- There was no disclaimer on Respondent’s website.
Respondent
1- With regard to the submitted Screenshot, the Respondent notes that such Screenshot shall not be considered as admissible evidence, because it was made through the Internet Archive and it gives no warranties regarding accuracy and credibility of its content, as a result there might be no relevant and applicable evidence of absence of such disclaimer on the Respondent’s web page.
Complainant owns CIALIS trademark at least as early as 2003, and the CIALIS mark is used in connection with the sale of pharmaceutical and medical treatment for sexual dysfunction. Respondent registered the Disputed Domain Name, which includes the trademark in 2013. It is used on a website that offers different pharmaceutical products for medical treatment for sexual dysfunction, and refers to Complainant’s competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has registered the CIALIS trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,724,569, registered June 10, 2003). The mark is used in connection with the sale of pharmaceutical and medical treatment for sexual dysfunction.
This Panel finds that Complainant’s trademark registration is sufficient to establish rights under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Complainant argues that the <buycheapcialisonline.biz> domain name is confusingly similar to the CIALIS trademark. Complainant notes that the domain name contains the entire mark in addition to generic terms and the top-level domain (“TLD”) “.biz.” Prior panels have found that the addition of generic terms to a domain name containing the entire mark at issue results in a confusing similarity. See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.). Also, prior panels have found that top-level domains consisting of words that could conceivably be construed as generic or descriptive terms may in fact enhance the confusing similarity between the domain name and the mark. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). However, other panels have stuck to the traditional notion that a top-level domain—even in cases where said domain consists of a word that could conceivably be construed as generic or descriptive—cannot distinguish a domain name from the mark at issue. See Citigroup Inc. v. Nicholas Bonner, FA 1604916 (Nat. Arb. Forum Mar. 18, 2015) (finding that the “.technology” gTLD was irrelevant to Policy ¶ 4(a)(i) analysis when assessing the confusing similarity between the <citigroup.technology> domain name and the CITIGROUP trademark).
This Panel finds that the “.biz” portion of the disputed domain name and the descriptive words added to it are not sufficient for Respondent to distinguish the disputed domain name from the CIALIS mark.
The Panel may find that the <buycheapcialisonline.biz> domain name is confusingly similar to the CIALIS trademark under Policy ¶ 4(a)(i).
Respondent made no contentions with regards to Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Complainant has established the first element under the Policy.
Complainant alleges that Respondent has no rights or legitimate interests on the <buycheapcialisonline.biz> domain name, since it is not commonly known by the cited domain names. The Panel finds that “Domain Admin” is listed as the registrant of record for the disputed domain name.
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has not submitted any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Thus, this Panel finds that Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Based on the evidence submitted by Complainant (Exhibit 7), the disputed domain name resolves to a webpage wherein Respondent is selling products that compete with Complainant. Past panels evaluating such behavior have declined to grant rights or legitimate interests. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel also concludes that Respondent lacks rights and legitimate interests in the Disputed Domain Name.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant contends that Respondent is displaying bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. To support this claim, Complainant alleges that the domain name resolves to a webpage where Respondent is selling competing products.
Prior Panels have found bad faith per Policy ¶ 4(b)(iv) under such behavior. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Respondent argues that there is no use of the CIALIS trademark since in the domain name buycheapcialisonline.biz word combination “cialis” shall be considered as “ Buy Cheap C linical I mprovements, al l is online ”. Respondent alleges to offer various clinical improvements, namely various medications, which are used for correction of erectile dysfunction, for example Apcalis, Caverta, Eriacta, Cialis, Kamagra, Tadalis, Viagra etc. Respondent argues that the use of the word combination “cialis” as acronym proves that the domain name buycheapcialisonline.biz cannot be considered as a using in a bad faith.
This Panel finds the explanation of CIALIS as an acronym is not convincing enough to support Respondent’s position. The Panel is convinced by Respondent’s argument that the acronym consists of the first letters of the two first words (Clinical and Improvements) two of the three letters of the other term (All) and two letters of the word “is”.
This Panel agrees with Complainant that the supposed acronym would not be easily recognized by visitors of the Respondent’s website, especially when CIALIS products are shown on it.
Finally, although Respondent’s website buycheapcialisonline.biz contains a disclaimer which states that Cialis is a registered trademark of Ely Lilly and that this site is not associated with any manufacturer of medications, prior panels have decided such a disclaimer is not adequate to avoid confusion. See Altavista Company v Altavista, Claim Number FA0008000095480 (Forum, October 31, 2000) “Although Respondent’s Website to which a consumer is directed by using the domain name in question includes a "disclaimer" at the top of the home page, such is inadequate to dispel the substantial likelihood of confusion between Respondent’s domain name and Complainant’s mark(s)”.
This Panel finds bad faith under Policy ¶ 4(b)(iv) and that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buycheapcialisonline.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hector Ariel Manoff, Panelist
Dated: August 24, 2016
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