Lilly ICOS LLC v. Andrew Riegel
Claim Number: FA0609000788279
PARTIES
Complainant is Lilly ICOS LLC,
Wilmington, DE (“Complainant”) represented by Stephanie A. Hale, of Baker
& Daniels LLP. Respondent is Andrew Riegel (“Respondent”) P.O. Box 828, Clearlake Park, CA 95424.
The domain name at issue is <buycialis.us>,
registered with Schlund + Partner Ag.
PANEL
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on September 5, 2006; the Forum received a hard
copy of the Complaint on September 6, 2006.
On September 7, 2006, Schlund + Partner Ag confirmed by e-mail to the
Forum that the <buycialis.us>
domain name is registered with Schlund + Partner Ag and that
Respondent is the current registrant of the name. Schlund + Partner Ag has verified that Respondent is bound by the
Schlund + Partner Ag registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the U. S. Department
of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 8, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 28, 2006 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On October 4, 2006, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Tyrus R.
Atkinson, Jr., 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. Therefore,
the Panel may issue its decision based on the documents submitted and in accordance
with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <buycialis.us> domain name is confusingly similar to Complainant’s CIALIS mark.
2.
Respondent does not have any rights or legitimate
interests in the <buycialis.us> domain name.
3.
Respondent registered and used the <buycialis.us>
domain name in bad faith.
B. Respondent failed to submit a response in this proceeding.
FINDINGS
Complainant, Lilly ICOS LLC, is
pharmaceutical research, development, and distribution company. Complainant holds numerous registrations for
the CIALIS mark, including a registration with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,724,589 issued June 10, 2003) and a
total of 130 other registrations in 117 countries. Complainant uses the CIALIS mark in connection with one of its
most popular pharmaceutical products.
Complainant has registered the <cialis.com> domain name in order
to operate a website bringing information about its pharmaceutical product to
Internet users.
Respondent registered the <buycialis.us>
domain name on April 22, 2005.
Respondent is using the disputed domain name to host a website that
includes advertisements for Complainant’s pharmaceutical products sold under
the CIALIS mark as well as other competing pharmaceutical products, for example
Viagra and Levitra. Respondent’s
website also has links to third-party websites offering pharmaceutical goods in
direct competition with Complainant. In
addition, Respondent’s website has a link titled “Click Here to Place Your
Order Now!” in connections with advertisements for a generic version of
Complainant’s pharmaceutical product sold under the CIALIS mark. Clicking on this link leads Internet users
to commercial website, <xlpharmacy.com>, where Internet users can place
orders for generic pharmaceutical products.
DISCUSSION
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant’s USPTO registration of the
CIALIS mark predates Respondent’s registration of the <buycialis.us>
domain name. The Panel finds that Complainant’s
registration with the USPTO established Complainant’s rights in the CIALIS mark
pursuant to Policy ¶ 4(a)(i). See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive [or] have acquired secondary meaning.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <buycialis.us> domain name is
confusingly similar to Complainant’s CIALIS mark. The disputed domain name includes Complainant’s mark in its
entirety, merely adding the term “buy.”
The term “buy” is a generic term that describes Complainant’s business
suggesting that Respondent’s website is a place where consumers can purchase
the pharmaceutical product marketed under the CIALIS mark. The addition of a term descriptive of
Complainant’s business to Complainant’s CIALIS mark does not overcome the
confusing similarity between the disputed domain name and Complainant’s
mark. The Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Oki Data
Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a
domain name wholly incorporates a Complainant’s registered mark is sufficient
to establish identity [sic] or confusing similarity for purposes of the Policy
despite the addition of other words to such marks.”); see also L.L. Bean,
Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding
that combining the generic word “shop” with the complainant’s registered mark
“llbean” does not circumvent the complainant’s rights in the mark nor avoid the
confusing similarity aspect of the UDRP).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant’s assertion that Respondent lacks
rights or legitimate interests in the disputed domain name constitutes a prima
facie case for purposes of the Policy.
Complainant having established a prima facie, the burden shifts
to Respondent to demonstrate that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).
Respondent failed to respond to Complainant’s
Complaint, thus, depriving the Panel of the opportunity to review arguments and
evidence that might demonstrate Respondent’s rights and legitimate
interests. Based on Respondent’s
failure to submit a Response, the Panel presumes that Respondent lacks rights
or legitimate interests in the disputed domain name. However, the Panel will proceed to examine the available evidence
to determine whether Respondent has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a
prima facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Complainant has established its rights to the
CIALIS mark, and asserts without contradiction that Respondent is in no way
affiliated with the CIALIS mark. The
Panel finds that there is no available evidence that Respondent is the owner or
beneficiary of a trade or service mark that is identical to the <buycialis.us> domain name as required by Policy ¶ 4(c)(i). See Meow Media Inc. v. John
Basil a/k/a American Software Factory Corp., Inc., FA 113280 (Nat. Arb. Forum Aug. 20, 2002)
(finding that there was no evidence that Respondent was the owner or
beneficiary of a mark that is identical to the <persiankitty.com> domain
name); see also Pepsico, Inc. v. Becky a/k/a Joe Cutroni, FA 117014 (Nat. Arb. Forum Sept. 3, 2002)
(holding that because Respondent did not own any trademarks or service marks
reflecting the <pepsicola.us> domain name, it had no rights or legitimate
interests pursuant to UDRP ¶ 4(c)(i)).
Respondent is not using the <buycialis.us> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as required by Policy ¶¶ 4(c)(ii) and (iv). Respondent is using the disputed domain name to redirect Internet users to its website which features links to commercial websites offering pharmaceutical products in direct competition with Complainant. Presumably, Respondent receives pay-per-click referral fees from those links. The Panel finds that such use is not within the scope contemplated by Policy ¶¶ 4(c)(ii) and (iv), and thus, does not indicate that Respondent has rights or legitimate interests in the disputed domain name. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that the respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to the complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Additionally, there is no
available evidence that Respondent is commonly known by the <buycialis.us>
domain name. Respondent’s WHOIS
information identifies Respondent as “Andrew Riegel,” a name with no apparent
relationship to the disputed domain name.
Thus, the Panel finds that there is no evidence that Respondent is
commonly known by the disputed domain name as contemplated by Policy ¶
4(c)(iii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii)
does not apply); see also Am. W. Airlines, Inc. v.
Paik, FA 206396 (Nat. Arb. Forum Dec. 22,
2003) (“Respondent has registered the domain name under the name ‘Ilyoup
Paik a/k/a David Sanders.’ Given the
WHOIS domain name registration information, Respondent is not commonly known by
the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has
been satisfied.
Respondent is using the <buycialis.us> domain name to redirect Internet users to Respondent’s website featuring links to commercial third-party websites in competition with Complainant. At least one of the links, “Click Here to Place Your Order Now!,” redirects Internet users to a different website purporting to sell generic pharmaceuticals in competition with Complainant. Other links appear to redirect Internet users to Complainant’s competing products, such as Viagra and Levitra. Internet users seeking Complainant’s genuine website at <cialis.com> may find themselves redirected to Respondent’s website, and once there may follow one of the links to third-party websites and purchase products in competition with Complainant, thus, depriving Complainant of that business. The Panel finds that such use disrupts Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of UDRP ¶ 4(b)(iii)).
Respondent’s <buycialis.us>
domain name is confusingly similar to Complainant’s CIALIS mark. Internet users seeking Complainant’s genuine
website at <cialis.com> may mistakenly combine the term “buy” with
Complainant’s mark in an Internet browser or search engine and find themselves
at Respondent’s website. Because of the
confusing similarity between the disputed domain name and Complainant’s mark,
combined with the content of Respondent’s website, which includes references to
generic versions of Complainant’s product as well as other similar
pharmaceutical products, Internet users may mistakenly believe that Respondent’s
website is affiliated with or sponsored by Complainant. Respondent is capitalizing on this
confusion, presumably collecting pay-per-click referral fees from misdirected
Internet users. The Panel finds that
such use is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has
been satisfied.
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <buycialis.us>
domain name to TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 18, 2006
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