Eli Lilly and Company v. VLADIMIR Zernov / Rubakin Vladimir
Claim Number: FA1606001679762
Complainant is Eli Lilly and Company (“Complainant”), represented by Stephanie A. Gumm of Faegre Baker Daniels, LLP, Indiana, USA. Respondent is VLADIMIR Zernov / Rubakin Vladimir (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cialiscoupon.biz>, registered with Shinjiru MSC Sdn Bhd; and <cialisonline-info.com>, registered with Paknic (Private) Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2016; the Forum received payment on June 16, 2016.
On June 16, 2016, Shinjiru MSC Sdn Bhd confirmed by e-mail to the Forum that the <cialiscoupon.biz> domain name is registered with Shinjiru MSC Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru MSC Sdn Bhd has verified that Respondent is bound by the Shinjiru MSC Sdn Bhd 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 June 21, 2016, Paknic (Private) Limited confirmed by e-mail to the Forum that the <cialisonline-info.com> domain name is registered with Paknic (Private) Limited and that Respondent is the current registrant of the name. Paknic (Private) Limited has verified that Respondent is bound by the Paknic (Private) Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On June 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@cialiscoupon.biz, and postmaster@cialisonline-info.com. Also on June 22, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 that the domain names be transferred from Respondent to Complainant.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The WhoIs records show that the disputed domain names are held by differently named persons. Nonetheless, Complainant has alleged that the domain names are effectively controlled by the one person and petitions the Panel to hear the two matters in this one Administrative Proceeding.
In support of that petition Complainant refers to the facts that the resolving websites are almost identical in content; both disputed domain names were registered in December 2014 and both registrations carry the same contact information for the holder. The Panel accepts on this evidence that it is more likely than not that a single registrant lies behind both domain names and therefore allows these proceedings to continue against Respondent.[i]
A. Complainant
Complainant asserts trademark rights in CIALIS and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant develops and sells pharmaceutical preparations;
2. Complainant owns the trademark CIALIS, the subject, inter alia,[ii] of United States Patent & Trademark Office Trademark Reg. 2,724,589, registered June 10, 2003;
3. Pharmaceuticals bearing the CIALIS trademark were launched in 2001 and were on sale in the European Union by 2003;
4. The disputed domain names were registered in December 2014;
5. The disputed domain names redirect Internauts to a website at www.reliablemed-supplier.biz which promotes the sale of generic[iii] equivalents to the pharmaceuticals sold by Complainant under the trademark; and
6. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant therefore has rights since it provides proof of its trademark registration with a Federal authority. Further, the disputed domain names take the trademark, a distinctive term, and add matter of no source distinguishing value, being a gTLD and either the descriptive word “coupon” or “online-info”. The Panel finds the domain names to be confusingly similar to the trademark. Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.[iv]
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
The publicly available WhoIs information does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark. Further, the evidence is that the disputed domain names redirect Internauts to a website in the nature of an online pharmacy intended only for the sale of competitive products.
Panel finds that Complainant has established a prima facie case and accordingly the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, the prima facie case against Respondent is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The Panel has already found the disputed domain names to be confusingly similar to the trademark; the requisite likelihood of confusion then follows in this instance. The website to which the domain names redirect exists purely for commercial gain. In terms of paragraph 4(b)(iv) of the Policy, the Panel finds that Respondent has used the domain names to intentionally attract, for commercial gain, internet users to either its website or another on-line location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the that other website.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cialiscoupon.biz> and <cialisonline-info.com>
domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 31, 2016
[i] See, for example, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, et al., D2010-0281 (WIPO May 18, 2010) explaining that “decisions have been rendered against multiple respondents in single proceedings based on the presence of a common administrative or technical contact, or other instances of commonality in the registration information, such as the same postal address or email address,” as well as “where the content of their websites was substantially identical and referred Internet visitors to a common ‘homepage’.
[ii] Notably, Russian Trademark Reg. No. 198,414 albeit that under the Policy there is no requirement for a complainant to own a national registration in the seat of the respondent.
[iii] Albeit that it is said by Complainant that, to date, there are no approved generic substitutes for the drug sold under the trademark.
[iv] See, for example, SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008); Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007); State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006); Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003).
[v] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000.
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