URS DEFAULT DETERMINATION
Eli Lilly and Company v. Stanislav Bezusov
Claim Number: FA1608001690464
DOMAIN NAME
<cialis.forsale>
PARTIES
| Complainant: Eli Lilly and Company of Indianapolis, IN, United States of America | |
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Complainant Representative: Faegre Baker Daniels, LLP
Stephanie A. Gumm of Indianapolis, IN, USA
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| Respondent: Stanislav Bezusov Stanislav Bezusov of Ivano-Frankivsk, Ivano-Frankivska, II, UA | |
REGISTRIES and REGISTRARS
| Registries: FORSALE Registry | |
| Registrars: Regtime Ltd. |
EXAMINER
| 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 Examiner in this proceeding. | |
| Ms. Kateryna Oliinyk, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: August 23, 2016 | |
| Commencement: August 23, 2016 | |
| Default Date: September 7, 2016 | |
| Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Findings of Fact: Findings of Fact: Under URS 9.1. the evidences will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire records used by the Examiner to make a Determination. URS 8.2. reads that the burden of proof shall be clear and convincing evidences. Under URS 8.6. if the Examiner finds that all three standards provided for by URS 8.1. are satisfied by clear and convincing evidences and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favour of the Complainant. Under URS 6.1. if at the expiration of the 14 Calendar Day Response period (or extended period if granted), the Registrant does not submit an answer, the Complaint proceeds to Default. Further URS 6.3. reads that all Default cases proceed to Examination for review on the merits of the claim. Complainant holds a series of valid trademark registrations for the CIALIS mark (U.S. Registration No. 2,724,589), registered well before delegation date of the contested domain name <cialis.forsale>. Complainant currently uses the CIALIS mark in commerce for pharmaceuticals, and CIALIS as the invented word possesses high degree of distinctiveness. The Complainant contemplates that the Respondent registered the domain name, appropriating the CIALIS mark trademark, to divert internet users to the conflicting website which constitutes the unauthorized online pharmacy selling the pharmaceuticals which pretend to be CIALIS or generics of CIALIS. Complainant believes that such products are most likely counterfeits. |
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Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The registered domain name <cialis.forsale> fully incorporates the word mark CIALIS for which the Complainant holds valid national registrations and that is in current use. It is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus .forsale is of no consequence here. Respectively, the Examiner finds that the contested domain name is confusingly similar with the Complainant’s "CIALIS" mark under URS 1.2.6.1. (i). [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Examiner determines that the Respondent is not commonly known by the "CIALIS" name and that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s "CIALIS" mark in a domain name or otherwise. The domain name is used for the commercial purpose as the online pharmacy for selling different pharmaceuticals, including "CIALIS" and generics to this innovative medication. Thus, the Respondent acted intentionally for commercial gain to misleadingly divert consumers to his website. Yet the more, the products sold through the unauthorized channels under the CIALIS name and with reference to this name are not the original, and there is no pharmacovigilance over these products. Thus, the Examiner believes that such use of the Complainant’s name also falls under the trademark tarnishment. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. By visiting the site, customers will most likely expect to reach the website to buy the original "CIALIS", and expect that the website is operated by someone who has any ties with or relation to the Complainant which is strongly present onto the international market and is known worldwide. The Respondent who has never been granted the right to use the "CIALIS" mark and who does not have any affiliation ties with the Complainant is using the confusion in the minds of consumers over the use of the "CIALIS" mark to divert users to the own website to increase the traffic to the domain name. The website is used for the online pharmacy where different pharmaceuticals are sold, include the “CIALIS”-like. Likelihood of confusion is not diminished by the possibility that the user will discover, upon arriving at Respondent’s website, that the website it reached is not the website it was seeking. Thus, this is the clear cut case of the bad faith use of the trademark and trademark tarnishment. Thus, the Examiner finds the Contested Domain Names misleading that supports finding of bad faith registration under URS 1.2.6.3.(d). FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
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Ms. Kateryna Oliinyk Examiner
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