Eli Lilly and Company v. Alexio Barreto
Claim Number: FA1508001632481
Complainant is Eli Lilly and Company (“Complainant”), represented by Stephanie A. Gumm of Faegre Baker Daniels, LLP, Indiana, USA. Respondent is Alexio Barreto (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <genericcialisonlineww.net> and <cialisonlinecb.com>, registered with Binero AB; <cialisonlinets.com>, registered with Domaininfo AB, aka domaininfo.com; <genericcialisonlinerl.com> and <genericcialisonlinedt.com>, registered with DomainPeople, Inc.; <genericcialisonlinews.com>, <cialisonlinegp.com>, and <cialisonlinevl.com>, registered with Dynamic Network Services, Inc.; <genericcialisonlinewd.com> and <cialisonlinetf.com>, registered with Ekados, Inc., d/b/a groundregistry.com; <genericcialisonlineww.com>, <genericcialisonlinets.com>, <cialisonlinelc.com>, <cialisonlinedc.com>, registered with Epik, Inc.; <cialiscouponwww.com>, <cialisonlinewn.com>, <cialisonlinevv.com>, and <cialisonlinesc.com>, registered with Genious Communications SARL/AU; <cialisonlinepharmacybp.com> and <viagravscialisws.com>, registered with Hosting Concepts B.V. d/b/a Openprovider; <cialisonlinest.com>, registered with Inic GmbH; <genericcialisonlinesl.com> and <cialisonlinewr.com>, registered with Interplanet, S.A. de C.V.; <cialisonlinewt.com>, registered with LiquidNet Ltd.; <genericcialisonlinewn.com> and <cialisonlinecx.com>, registered with NETIM SARL; <cialisvsviagrawww.com>, <genericcialisonlinevr.com>, and <cialisonlinetp.com>, registered with Akky. Una division de NIC Mexico; <cialisonlinext.com>, registered with Networking4all B.V.; <cialisonlinewd.com> and <cialisonlinecs.com>, registered with Neubox Internet S.A. de C.V.; <cialisonlinepharmacyhq.com>, registered with Own Identity, Inc.; <cialisonlinelw.com> and <cialisonlineft.com>, registered with TierraNet Inc. d/b/a DomainDiscover; <cialisonlinewi.com>, registered with Upperlink Limited;
<cheapcialisonlinecanada.com> and <cialisonlinecc.com>, registered with Web4Africa Inc.; and <cialisonlinexc.com>, registered with Kheweul.com SA.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2015; the Forum received payment on August 7, 2015.
On August 10, 2015, Inic GmbH confirmed by e-mail to the Forum that the <cialisonlinest.com> domain name is registered with Inic GmbH and that Respondent is the current registrant of the name. Inic GmbH has verified that Respondent is bound by the Inic GmbH 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 August 10, 2015, Neubox Internet S.A. de C.V. confirmed by e-mail to the Forum that the <cialisonlinecs.com> and <cialisonlinewd.com> domain names are registered with Neubox Internet S.A. de C.V. and that Respondent is the current registrant of the names. Neubox Internet S.A. de C.V. has verified that Respondent is bound by the Neubox Internet S.A. de C.V. 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 August 10, 2015, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the Forum that the <cialisonlineft.com> and <cialisonlinelw.com> domain names are registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the names. TierraNet Inc. d/b/a DomainDiscove has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 August 10, 2015, Akky. Una division de NIC Mexico confirmed by e-mail to the Forum that the <cialisonlinetp.com>, <cialisvsviagrawww.com>, and <genericcialisonlinevr.com> domain names are registered with Akky. Una division de NIC Mexico and that Respondent is the current registrant of the names. Akky. Una division de NIC Mexico has verified that Respondent is bound by the Akky. Una division de NIC Mexico 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 August 11, 2015, Binero AB confirmed by e-mail to the Forum that the <cialisonlinecb.com> and <genericcialisonlineww.net> domain names are registered with Binero AB and that Respondent is the current registrant of the names. Binero AB has verified that Respondent is bound by the Neubox Internet Binero AB 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 August 11, 2015, Dynamic Network Services, Inc. confirmed by e-mail to the Forum that the <cialisonlinegp.com>, <cialisonlinevl.com>, and <genericcialisonlinews.com> domain names are registered with Dynamic Network Services, Inc. and that Respondent is the current registrant of the names. Dynamic Network Services, Inc. has verified that Respondent is bound by the Dynamic Network Services, Inc. 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 August 12, 2015, Domaininfo AB, aka domaininfo.com confirmed by e-mail to the Forum that the <cialisonlinets.com> domain name is registered with Domaininfo AB, aka domaininfo.com and that Respondent is the current registrant of the name. Domaininfo AB, aka domaininfo.com has verified that Respondent is bound by the Domaininfo AB, aka domaininfo.com 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 August 13, 2015, Kheweul.com SA confirmed by e-mail to the Forum that the <cialisonlinexc.com> domain name is registered with Kheweul.com SA and that Respondent is the current registrant of the name. Kheweul.com SA has verified that Respondent is bound by the Kheweul.com SA 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 August 13, 2015, LiquidNet Ltd. confirmed by e-mail to the Forum that the <cialisonlinewt.com> domain name is registered with LiquidNet Ltd. and that Respondent is the current registrant of the name. LiquidNet Ltd. has verified that Respondent is bound by the LiquidNet Ltd. 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 August 13, 2015, DomainPeople, Inc. confirmed by e-mail to the Forum that the <genericcialisonlinedt.com> and <genericcialisonlinerl.com> domain names are registered with DomainPeople, Inc. and that Respondent is the current registrant of the names. DomainPeople, Inc. has verified that Respondent is bound by the DomainPeople, Inc. 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 August 13, 2015, NETIM SARL confirmed by e-mail to the Forum that the <cialisonlinecx.com> and <genericcialisonlinewn.com> domain names are registered with NETIM SARL and that Respondent is the current registrant of the names. NETIM SARL has verified that Respondent is bound by the NETIM SARL 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 August 14, 2015, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <cialisonlinepharmacybp.com> and <viagravscialisws.com> domain names are registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider; Inc. 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 August 14, 2015, Genious Communications SARL/AU confirmed by e-mail to the Forum that the <cialisonlinesc.com>, <cialiscouponwww.com>, <cialisonlinevv.com>, and <cialisonlinewn.com> domain names are registered with Genious Communications SARL/AU and that Respondent is the current registrant of the names. Genious Communications SARL/AU has verified that Respondent is bound by the Genious Communications SARL/AU 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 August 16, 2015, Ekados, Inc., d/b/a groundregistry.com confirmed by e-mail to the Forum that the <cialisonlinetf.com> and <genericcialisonlinewd.com> domain names are registered with Ekados, Inc., d/b/a groundregistry.com and that Respondent is the current registrant of the names. Ekados, Inc., d/b/a groundregistry.com has verified that Respondent is bound by the Ekados, Inc., d/b/a groundregistry.com 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 August 17, 2015, Networking4all B.V. confirmed by e-mail to the Forum that the <cialisonlinext.com> domain name is registered with Networking4all B.V. and that Respondent is the current registrant of the name. Networking4all B.V. has verified that Respondent is bound by the Networking4all B.V. 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 August 17, 2015, Epik, Inc. confirmed by e-mail to the Forum that the <cialisonlinedc.com>, <cialisonlinelc.com>, <genericcialisonlinets.com>, and <genericcialisonlineww.com> domain names are registered with Epik, Inc. and that Respondent is the current registrant of the names. Epik, Inc. has verified that Respondent is bound by the Epik, Inc. 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 August 18, 2015, Own Identity, Inc. confirmed by e-mail to the Forum that the <cialisonlinepharmacyhq.com> domain name is registered with Own Identity, Inc. and that Respondent is the current registrant of the name. Own Identity, Inc. has verified that Respondent is bound by the Own Identity, Inc. 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 August 18, 2015, Web4Africa Inc. confirmed by e-mail to the Forum that the <cheapcialisonlinecanada.com> and <cialisonlinecc.com> domain names are registered with Web4Africa Inc. and that Respondent is the current registrant of the names. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa Inc. 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 August 18, 2015, Interplanet, S.A. de C.V. confirmed by e-mail to the Forum that the <cialisonlinewr.com> and <genericcialisonlinesl.com> domain names are registered with Interplanet, S.A. de C.V. and that Respondent is the current registrant of the names. Interplanet, S.A. de C.V. has verified that Respondent is bound by the Interplanet, S.A. de C.V. 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 August 19, 2015, Upperlink Limited confirmed by e-mail to the Forum that the <cialisonlinewi.com> domain name is registered with Upperlink Limited and that Respondent is the current registrant of the name. Upperlink Limited has verified that Respondent is bound by the Upperlink Limited 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 August 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2015 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@cialisonlinecs.com, postmaster@cialisonlinegp.com, postmaster@cialisonlinesc.com, postmaster@cialisonlinewi.com, postmaster@cialisonlineft.com, postmaster@cheapcialisonlinecanada.com, postmaster@cialiscouponwww.com, postmaster@cialisonlinecb.com, postmaster@cialisonlinecc.com, postmaster@cialisonlinecx.com, postmaster@cialisonlinedc.com, postmaster@cialisonlinelc.com, postmaster@cialisonlinelw.com, postmaster@cialisonlinepharmacybp.com, postmaster@cialisonlinepharmacyhq.com, postmaster@cialisonlinest.com, postmaster@cialisonlinetf.com, postmaster@cialisonlinetp.com, postmaster@cialisonlinets.com, postmaster@cialisonlinevl.com, postmaster@cialisonlinevv.com, postmaster@cialisonlinewd.com, postmaster@cialisonlinewn.com, postmaster@cialisonlinewr.com, postmaster@cialisonlinewt.com, postmaster@cialisonlinexc.com, postmaster@cialisonlinext.com, postmaster@cialisvsviagrawww.com, postmaster@genericcialisonlinedt.com, postmaster@genericcialisonlinerl.com, postmaster@genericcialisonlinesl.com, postmaster@genericcialisonlinets.com, postmaster@genericcialisonlinevr.com, postmaster@genericcialisonlinewd.com, postmaster@genericcialisonlinewn.com, postmaster@genericcialisonlinews.com, postmaster@genericcialisonlineww.com, postmaster@genericcialisonlineww.net, and postmaster@viagravscialisws.com. Also on August 17, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 14, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests the domain names be transferred from Respondent to Complainant.
A. Complainant
[a.] The Domain Names are confusingly similar to a trademark in which the Complainant has rights.
(1) Complainant's use and registration of the CIALIS trademark pre-dates Respondent’s registration of the Domain Names.
Complainant owns numerous trademark registrations throughout the world for its CIALIS mark and Complainant's rights in the CIALIS mark date back to as early as 1999. In 2004, approximately $39 million was spent to market and sell CIALIS brand product worldwide, U.S. sales of the CIALIS brand product totaled more than $206 million, and worldwide sales of CIALIS brand product were in excess of $550 million. Over the years, sales of Complainant’s CIALIS brand product have steadily and significantly increased. In 2013, worldwide sales of CIALIS brand product increased to $2.159 billion. Most recently, for the full year 2014, worldwide sales of CIALIS brand product increased 6% to $2.291 billion, with sales in the United States at $1.040 billion and sales outside of the United States at $1.251 billion. For these reasons, Complainant believes that it is reasonable to infer that the CIALIS trademark is well-known throughout the world.
Because the Respondent registered the Domain Names in 2014 and 2015, Complainant's rights in the CIALIS trademark predate Respondent’s registration dates, and Complainant has both senior and exclusive rights in the CIALIS mark. Complainant also has an Internet presence, primarily through the website accessed by the domain name <cialis.com>, that it uses to advertise and provide information regarding its pharmaceutical product. The <cialis.com> domain name was registered by Complainant's predecessor-in-interest on August 10, 1999.
Complainant has used this domain name to identify a website since at least as early as June, 2001.
(2) The CIALIS mark is distinctive.
Complainant submits and prior Panels have agreed that the CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use. See Lilly ICOS LLC v. Clarkepharma Co., D2007-0447 (WIPO, May 25, 2007). An invented word which has acquired a high degree of distinctiveness is deemed to be a highly distinctive mark. See Telstra Corporation Limited v. Telsra/Telecomunicaciones Serafin Rodriguez y Asociados, D2003-0247 (WIPO, July 21, 2003) (determined that since the mark TELSTRA is an invented word and given its nature, widespread advertisement and exposure to consumers worldwide, the mark is highly distinctive). A domain name which differs very slightly from a trademark has a greater tendency to be confusingly similar where that trademark is highly distinctive. See Credit Suisse Group v. VPDD UBGM ltd, D2007-0867 (WIPO, September 10, 2007).
(3) The Domain Names are confusingly similar to the CIALIS mark.
The Domain Names are confusing similar to Complainant’s CIALIS mark. The addition of generic or descriptive words such as "pharmacy," "generic," and "online," to Complainant's highly distinctive CIALIS trademark does not prevent a finding of confusing similarity. Prior Forum Panels have noted that, "the mere addition of a generic or descriptive abbreviation to a registered mark does not negate the confusing similarity of respondent's domain name." Lilly ICOS LLC v. Joe Pestrak, FA 0504000464558 (NAF, May 31, 2005). As a result, the addition of generic or descriptive words and phrases to the Domain Names does not negate the distinctiveness of Complainant's CIALIS mark. See Lilly ICOS LLC v. Andrew Riegel, FA0609000788279 (NAF, October 18, 2006) (finding the addition of the generic term "buy" to Complainant's CIALIS mark did not overcome the confusing similarity between the disputed domain name and the CIALIS mark); Lilly ICOS LLC v. Jay Kim, D2004-0891 (WIPO, January 28, 2005) (finding the addition of the generic word "generic" and the generic letter "a" to Complainant's CIALIS mark did not prevent the domain name from being confusingly similar to the CIALIS mark); and Lilly ICOS LLC v. Dan Eccles, D2004-0750 (WIPO, November 8, 2004) (determining that the addition of the words "drug", "online", "buying" and "guide" to Complainant's registered CIALIS trademark did not eliminate the confusing similarity between the CIALIS mark and the <cialis-drug-online-buying-guide.com> domain name because the additional words did not distinguish the owner of the disputed name from Complainant). In the present case, Respondent has merely added these generic and/or descriptive words and phrases or similarly generic and/or descriptive words and phrases to the Domain Names. Respondent’s addition of these words and phrases to the Domain Names does not negate the distinctiveness of Complainant's CIALIS mark.
Additionally, when a domain name incorporates a distinctive mark in its entirety that creates sufficient similarity between a mark and a domain name to render the domain name confusingly similar. EAuto v. Triple S. Auto Parts, D2000-0047 (WIPO, March 24, 2000). In the case at hand, the Domain Names are confusingly similar to the CIALIS mark because they incorporate the mark in its entirety. See Lilly ICOS LLC v. Dan Eccles, D2004-0750 (WIPO, November 8, 2004) (finding that the disputed domain name <cialis-drug-online-buying- guide.com> was confusingly similar to the CIALIS trademark because it incorporated the distinctive CIALIS mark in its entirety). With the exception of the generic or descriptive words and phrases, the Domain Names consist of Complainant's CIALIS mark in its entirety. Thus, the Domain Names are confusingly similar to Complainant's CIALIS trademark.
[b.] The Respondent has no rights or legitimate interests in respect of the Domain Names.
(1) Respondent is not using the Domain Names for a legitimate business purpose. Respondent has no rights or legitimate interests in the Domain Names. There is no evidence that the Respondent has been commonly known by the term "CIALIS" or any of the corresponding Domain Names. All of the websites associated with the Domain Names resolve to the exact same rogue online pharmacy template which promotes and allegedly sells “GENERIC CIALIS,” “SOFT CIALIS,” and “CIALIS SUPER ACTIVE” which are not Complainant’s products, have not been approved by the FDA or any health authority and are unlawful pharmaceutical products. Moreover, this online pharmacy promotes and allegedly sells competitive products such as VIAGRA® brand product and other products claiming to treat erectile dysfunction. To date, there is no "generic" version of CIALIS brand product approved by the U.S. Food and Drug Administration ("FDA") or any other health authority. As a result, any "generic" CIALIS product, such as “SOFT CIALIS” or “CIALIS SUPER ACTIVE,” is an unlawful, counterfeit pharmaceutical product.
By using the mark CIALIS in the Domain Names, the Respondent is luring consumers in search of Complainant's CIALIS brand product to its websites that promote "generic" and brand name pharmaceutical products, including products which are arguably competitive with Complainant's CIALIS product. Such use does not demonstrate a legitimate right or interest in the Domain Names. See Eli Lilly and Company v. Igor Palchikov, FA 1105001388612 (NAF, June 15, 2011) (finding that using the disputed domain names to redirect to websites advertising and promoting competing products is not consistent with a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶4(c)(iii)) and Lilly ICOS LLC v. Alexey Stoun, D2006-1170 (WIPO, November 16, 2006) (finding that the registrant did not have any legitimate right or interest in the disputed domain <greatcialis.com> because registrant was using the mark CIALIS in the domain at issue to direct consumers in search of CIALIS brand product to a website which advertised "generic" CIALIS product as well as competitive products).
Moreover, as previous Panels have held, "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the complainant." See Eli Lilly and Company v. media/broadcasting, Lee Shung, D2010-1079 (WIPO, September 14, 2010) (determining that the respondent did not have any right or legitimate interest in the domain <36cialis.com> where the respondent sold unauthorized or counterfeit products of the complainant). Respondent clearly chose the Domain Names in order to create an impression of association with Complainant and Complainant's well-known CIALIS mark. In light of these factors, it is apparent from the websites associated with the Domain Names that the Respondent is attempting to capitalize on the valuable reputation and goodwill of the CIALIS mark to direct Internet users to its websites.
(2) Respondent is not authorized by Complainant to use the CIALIS trademark. Complainant has not given Respondent permission, authorization, consent or license to use its CIALIS mark. Despite this fact, however, the Domain Names resolve to websites enabling the Respondent to benefit from the strength of Complainant's CIALIS mark and the reputation and goodwill of the product with which the mark is associated.
[c.] The Domain Names were registered and are being used in bad faith.
Complainant has a June 17, 1999 constructive use date of the CIALIS trademark based upon its trademark rights. Media coverage of the CIALIS brand product is dated as early as 2001. Complainant has extensively marketed and advertised its pharmaceutical product using the CIALIS trademark. Therefore, because it is reasonable to infer that the CIALIS trademark is well-known, it is highly likely that the Respondent knew of Complainant's CIALIS mark at the time of registering the 39 confusingly similar Domain Names.
According to Policy ¶4(b)(ii), evidence of bad faith registration and use is shown when a respondent has registered a domain name in order to prevent the trademark owner from reflecting the mark in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct. See Eli Lilly and Company v. Darren K. Headley et al., D2103-1303 (WIPO, September 4, 2013) (registering 10 domain names incorporating the CIALIS mark demonstrated that the respondent registered and was using the disputed domain names in bad faith per paragraph 4(b)(ii)). Moreover, a prior Forum Panel found that the registration of multiple domains incorporating the Complainant’s CIALIS mark revealed bad faith registration and use pursuant to Policy ¶4(b)(ii). See Eli Lilly and Company v. Igor Palchikov, FA 1105001388612 (NAF, June 15, 2011). In this case, the Respondent has registered 39 Domain Names which incorporate the Complainant's CIALIS mark.
Moreover, in order to establish a pattern of conduct, one need not demonstrate an impact against multiple trademark owners. Instead, while a pattern of conduct typically involves multiple domain names directed against multiple complainants, it may involve multiple domain names directed against a single complainant. See Telstra Corporation Limited v. Ozurls, D2001-0046 (WIPO, March 20, 2001) (finding that fifteen domain names that involved Telstra's mark and a series of services, products, geographical descriptors, or generic words obviously involves a pattern of conduct directed against Telstra, stopping it from reflecting its mark in corresponding domain names). Such is the case here, where the Respondent has registered 39 Domain Names, all of which incorporate the Complainant's well-known and distinctive CIALIS mark.
Further, promoting competing products under another’s mark disrupts a trademark owner’s business and reveals bad faith registration and use according to Policy ¶4(b)(iii). See Eli Lilly and Company v. Igor Palchikov, FA 1105001388612 (NAF, June 15, 2011). In this case, the websites associated with the Domain Names promote illegal, counterfeit pharmaceutical products, as well as competing products which demonstrates bad faith use and registration pursuant to the Policy.
Additionally, the Respondent is likely using Complainant's CIALIS mark in the Domain Names to drive Internet traffic to its websites and likely profiting from the purchase of any products from the associated online pharmacy. Prior NAF Panels have noted that such activities create a likelihood of confusion as to the source, sponsorship or affiliation of the resolving websites, from which a respondent presumably profits and demonstrates bad faith registration and use according to Policy ¶4(b)(iv). See Eli Lilly and Company v. Igor Palchikov, FA 1105001388612 (NAF, June 15, 2011). Moreover, prior NAF Panels have found, “that the offer of counterfeit and competing products constitutes bad faith attraction for commercial gain under Policy ¶4(b)(iv).” See Eli Lilly and Company v. Grace Beaumont et. al, FA1504001615093 (NAF, June 5, 2015).
Finally, Respondent’s use of Complainant's CIALIS mark in the Domain Names is potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold pharmaceutical products promoted through the websites associated with the Domain Names under the mistaken impression that they are dealing with Complainant and, therefore, are receiving information on safe and effective drugs approved by the FDA or other health authorities around the world. As discussed above, neither a "SOFT" nor “SUPER ACTIVE” version of Complainant's CIALIS brand product has been developed by the Complainant or approved by the FDA or any other health authority. Complainant's CIALIS brand product is only available on a physician's prescription and is manufactured, labeled, and sold in strict compliance with the FDA and other health authority laws and regulations. A prior panel has noted that the obvious danger of consumers being afforded inaccurate, incomplete or misleading information about medical products may further demonstrate a Respondent's bad faith. See Eli Lilly and Company v. Ryma Nynyore/Domain Directors Pty. Ltd., D2011-0478 (WIPO, April 29, 2011). In light of all of these factors, it is apparent that the Respondent has clearly registered and is using the Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant claims the entities controlling the domain names are the same person and/or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Each domain name is registered in the name of “Alexio Barreto”. Each domain name resolves to the same online pharmacy website. The phone numbers advertised for placing orders on the websites are the same for each domain name. All of this leads the Panel to conclude each domain belongs to a single Respondent.
Preliminary Issue: Language of the Proceedings
Complainant requests this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request even though a few of the Registration Agreements are in Spanish and Swedish (most of them are in English). It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Spanish or Swedish language in the Registration Agreements. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). In this case, the domain names’ websites are all in the English language.
The Panel shall also weigh the relative time and expense in enforcing the Spanish and Swedish language agreements, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds persuasive evidence has been shown by the Complainant that Respondent is sufficiently conversant in the English language. After considering the circumstance of the present case, the Panel decides the Proceeding should be in English.
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 Complainant prove the following three elements to obtain an order caballing or transferring a domain name:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 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.”).
Complainant claims rights in the CIALIS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,724,589, registered on June 10, 2003). Registration with the USPTO (or other governmental authorities) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Complainant has rights in the CIALIS mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <cialisonlinecs.com>, <cialisonlinegp.com>, <cialisonlinesc.com>, <cialisonlinewi.com>, <cialisonlineft.com>, <cheapcialisonlinecanada.com>, <cialiscouponwww.com>, <cialisonlinecb.com>, <cialisonlinecc.com>, <cialisonlinecx.com>, <cialisonlinedc.com>, <cialisonlinelc.com>, <cialisonlinelw.com>, <cialisonlinepharmacybp.com>, <cialisonlinepharmacyhq.com>, <cialisonlinest.com>, <cialisonlinetf.com>, <cialisonlinetp.com>, <cialisonlinets.com>, <cialisonlinevl.com>, <cialisonlinevv.com>, <cialisonlinewd.com>, <cialisonlinewn.com>, <cialisonlinewr.com>, <cialisonlinewt.com>, <cialisonlinexc.com>, <cialisonlinext.com>, <cialisvsviagrawww.com>, <genericcialisonlinedt.com>, <genericcialisonlinerl.com>, <genericcialisonlinesl.com>, <genericcialisonlinets.com>, <genericcialisonlinevr.com>, <genericcialisonlinewd.com>, <genericcialisonlinewn.com>, <genericcialisonlinews.com>, <genericcialisonlineww.com>, <genericcialisonlineww.net>, and <viagravscialisws.com> domain names are confusingly similar to Complainant’s CIALIS mark because each contains the entirety of the mark, altered by various generic terms and gTLDs. gTLDs such as “.com” and “.net” are irrelevant to a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs (either gTLDs or ccTLDs). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The following terms and letter combinations are all generic or descriptive so they must be disregarded in a Policy ¶4(a)(i) analysis: “online,” “generic,” “cheap,” “canada,” “coupon,” “pharmacy,” “viagra,” “cs,” “gp,” “sc,” “wi,” “ft,” “www,” “cb,” “cc,” “cx,” “dc,” “lc,” “lw,” “bp,” “hq,” “st,” “tf,” “tp,” “ts,” “vl,” “vv,” “wd,” “wn,” “wr,” “wt,” “xc,” “xt,” “vs,” “dt,” “rl,” “sl,” “ts,” “vr,” “wd,” “ws,” and “ww.” See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Respondent’s domain names are confusingly similar to Complainant’s CIALIS mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
Complainant claims Respondent is not commonly known by the disputed domain names. The WHOIS information lists “Alexio Barreto” as Registrant for each domain. There is no obvious connection between that name and the disputed domain names. Respondent has provided no evidence which would support such a claim. Such a lack of evidence suffices to support a finding Respondent is not commonly known by a disputed domain name under Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Respondent is not commonly known by the domain names under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the resolving websites to host an online pharmacy website which purports to sell Viagra products, in competition with Complainant, as well as counterfeit products referred to as “generic Cialis,” “soft Cialis,” and “Cialis super active.” Sales of counterfeit goods and/or selling completing goods shows a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see alsoeLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Complainant claims Respondent does not use the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites pass itself off as Complainant by creating a misleading Complainant is associated with the domain names. There is no other reason why Respondent would have registered so many domain names containing the CIALIS mark. Using a domain name to pass off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has a pattern of bad faith registrations and use, as demonstrated by Respondent’s having registered and used the 39 domain names at issue here. While this may well be true (and 39 domain names is a lot of domain names), it is not sufficient to find a pattern of bad faith registration under Policy ¶4(b)(ii) because Complainant has incorporated its mark into a domain name (<Cialis.com>).
Complainant claims Respondent uses the disputed domain names to disrupt Complainant’s business by using the resolving webpages to sell Viagra products, in competition with Complainant, as well as counterfeit products referred to as “generic Cialis,” “soft Cialis” and “Cialis super active.” Either use is sufficient to find demonstrate disruption under Policy ¶4(b)(iii), which constitutes bad faith registration and use. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use) and see Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval). Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(b)(iii).
Complainant claims use described above is done to create confusion about the origin of the goods in question and to profit from that confusion. Such a use demonstrates bad faith registration and use under Policy ¶4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the CIALIS mark. This seems indisputable in light of Respondent’s use of the disputed domain names (particularly since Respondent is selling counterfeit CIALIS products). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Respondent registered and uses the disputed domains in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <cialisonlinecs.com>, <cialisonlinegp.com>, <cialisonlinesc.com>, <cialisonlinewi.com>, <cialisonlineft.com>, <cheapcialisonlinecanada.com>, <cialiscouponwww.com>, <cialisonlinecb.com>, <cialisonlinecc.com>, <cialisonlinecx.com>, <cialisonlinedc.com>, <cialisonlinelc.com>, <cialisonlinelw.com>, <cialisonlinepharmacybp.com>, <cialisonlinepharmacyhq.com>, <cialisonlinest.com>, <cialisonlinetf.com>, <cialisonlinetp.com>, <cialisonlinets.com>, <cialisonlinevl.com>, <cialisonlinevv.com>, <cialisonlinewd.com>, <cialisonlinewn.com>, <cialisonlinewr.com>, <cialisonlinewt.com>, <cialisonlinexc.com>, <cialisonlinext.com>, <cialisvsviagrawww.com>, <genericcialisonlinedt.com>, <genericcialisonlinerl.com>, <genericcialisonlinesl.com>, <genericcialisonlinets.com>, <genericcialisonlinevr.com>, <genericcialisonlinewd.com>, <genericcialisonlinewn.com>, <genericcialisonlinews.com>, <genericcialisonlineww.com>, <genericcialisonlineww.net>, and <viagravscialisws.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, September 28, 2015
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