Eli Lilly and Company v. Bahodir Ubajdullaev
Claim Number: FA1707001739590
Complainant is Eli Lilly and Company (“Complainant”), represented by Stephanie A. Gumm of Faegre Baker Daniels, LLP, Indiana, USA. Respondent is Bahodir Ubajdullaev (“Respondent”), Turkmenistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cialis.casa>, registered with Alpnames 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.
David A. Einhorn, appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2017; the Forum received payment on July 12, 2017.
On July 19, 2017, Alpnames Limited confirmed by e-mail to the Forum that the <cialis.casa> domain name is registered with Alpnames Limited and that Respondent is the current registrant of the name. Alpnames Limited has verified that Respondent is bound by the Alpnames 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 July 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2017 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@cialis.casa. Also on July 19, 2017, 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 August 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn, 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 name be transferred from Respondent to Complainant.
A. Complainant
~ Complainant failed in its claim earlier this year under the Uniform Rapid Suspension System (“URS”) to have the disputed domain name suspended. See Eli Lilly and Company v. Ubajdullaev, FA1733940 (Forum June 17, 2017) (Claim Denied).~
The CIALIS mark is used by Complainant and registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,724,589, registered June 10, 2003) to identify its rights in a pharmaceutical product intended for the treatment of erectile dysfunction. Respondent’s disputed domain name is identical to the CIALIS mark as the mark is included entirely with the mere addition of the new top-level domain (“TLD”) “.casa.”
Respondent has no rights or legitimate interests in <cialis.casa>. Respondent is not commonly known by the disputed domain name, nor has it gained any permission from Complainant to register the CIALIS mark in any way. Additionally, Respondent is not making use of the disputed domain name for any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, the resolving website displays various advertisements for online pharmacies which promote and allegedly sell “generic” versions of Complainant’s product. The panel in Eli Lilly and Company v. Ubajdullaev, FA1733940 (Forum June 17, 2017) erroneously found that the evidence did not suggest Respondent engaged in counterfeit use of the resolving website.
Respondent registered and used <cialis.casa> in bad faith. As the resolving webpage to the disputed domain name purports to sell counterfeit/competing products of Complainant, such use constitutes bad faith disruption per Policy ¶ 4(b)(iii).The CIALIS mark has garnered worldwide recognition in its brand and is a distinctive mark, Respondent is presumably attempting to profit from Internet confusion as to the source, sponsorship, or affiliation between Complainant and Respondent, demonstrating Policy ¶ 4(b)(iv) bad faith. Lastly, it is inconceivable that Respondent did not have actual or at least constructive knowledge of the CIALIS mark and Complainant’s rights in the mark, showing Policy ¶ 4(a)(iii) bad faith.
B. Respondent
Respondent did not submit a response to the Complainant
The Panel notes that <cialis.casa> was registered on or about February 8, 2017.
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. 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 (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.”).
The CIALIS mark is used by Complainant and allegedly registered with the USPTO (e.g., Reg. No. 2,724,589, registered June 10, 2003) to identify its rights in a pharmaceutical product intended for the treatment of erectile dysfunction. Under Policy ¶ 4(a)(i), panels have agreed in determining a complainant’s rights that a USPTO registration is sufficient. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). This Panel therefore agrees that Complainant has Policy ¶ 4(a)(i) rights in the CIALIS mark.
Next, Complainant asserts that Respondent’s disputed domain name is identical to the CIALIS mark as the mark is included entirely with the mere addition of the new TLD “.casa.” Complainant equivocates this TLD with all other gTLDs, ccTLDs, etc. See generally Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). To date, the only panel that has considered the new “.casa” TLD was Real Madrid Club de Futbol v. Daniel Vidal, Cubelaws, in which the panel stated, “The domain name in dispute reproduced the REAL MADRID brand of the plaintiff, with the exception of the generic top level domains ‘.casa’ and ‘.work’. In the light of this circumstance, the expert understands that the disputed domain names are identical to the REAL MADRID brand.” D2016-0350 (WIPO Apr. 11, 2016) (translated from Spanish). The Panel therefore finds <cialis.casa> identical to the CIALIS mark under Policy ¶ 4(a)(i).
Complainant submits that Respondent has no rights or legitimate interests in <cialis.casa>. Complainant contends that Respondent is not commonly known by the disputed domain name, nor has it gained any permission from Complainant to register the CIALIS mark in any way. Respondent has submitted no additional evidence for the Panel’s consideration, and in light of the available WHOIS information, the Panel finds no basis upon which a finding of “commonly known by” under Policy ¶ 4(c)(ii) is appropriate. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Additionally, Complainant argues that Respondent is not making use of the disputed domain name for any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Complainant alleges that the resolving website displays various advertisements for online pharmacies which promote and allegedly sell “generic” versions of Complainant’s product. Proven counterfeit use bears against a respondent’s rights and legitimate interests. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit, or unauthorized, 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); see also Eli Lilly and Company v. Igor Palchikov, FA 1388612 (Forum 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)). Here, the resolving website includes several hyperlinks (presumably to fraudulent or illegal pharmaceutical sales websites), alleging that the sources are “reputable” and that the pills are “generic”. Complainant states that there is no such thing as a legitimate generic pharmaceutical site, noting that Respondent’s website clearly indicates that all of the pharmaceuticals advertised on its site do not require a prescription, whereas Complainant’s CIALIS brand product can only be sold with a physician’s prescription. As a result, Complainant argues that these products are clearly illegal counterfeit products and the finding of the URS panelist was incorrect. This Panel agrees with Complainant to the extent that it finds that Respondent’s resolving site fails to conjure any notion of a bona fide offering of a good or service per Policy ¶ 4(c)(i), or any legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has therefore satisfied paragraph 4(a)(ii) of the policy
Complainant urges that Respondent registered and used <cialis.casa> in bad faith. Complainant argues that as the resolving webpage to the disputed domain name purports to sell counterfeit/competing products of Complainant, such use constitutes bad faith disruption per Policy ¶ 4(b)(iii). Panels have seen such use as constituting bad faith disruption under the Policy. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Thus, the Panel finds there to be sufficient evidence to demonstrate Respondent has attempted to disrupt Complainant’s legitimate business in bad faith under Policy ¶ 4(b)(iii).
Moreover, as the CIALIS mark has garnered worldwide recognition in its brand and is a distinctive mark, Complainant contends that Respondent is presumably attempting to profit from Internet confusion as to the source, sponsorship, or affiliation between Complainant and Respondent, demonstrating Policy ¶ 4(b)(iv) bad faith. The panel in H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) found that the respondent’s selling of counterfeit products created the likelihood of confusion as to the complainant’s affiliation with the disputed domain name which allowed the respondent to profit from that confusion, demonstrating bad faith under Policy ¶ 4(b)(iv). Similarly, Respondent here is alleged to be making offerings of counterfeit or competing products. This constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Lastly, Complainant asserts that Respondent’s sale of pharmaceutical products, some of which bear the distinctive CIALIS mark, and which are the same types of products offered by Complainant, indicates that Respondent had actual knowledge of Complainant and its rights. The Panel agrees with Complainant regarding Respondent's actual knowledge, and concludes that Respondent registered the disputed domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cialis.casa> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated : August 24, 2017
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