Eli Lilly and Company v. Pelres Investments Ltd. / Jan Janssen
Claim Number: FA1808001800003
Complainant is Eli Lilly and Company (“Complainant”), represented by Stephanie A. Gumm of Faegre Baker Daniels, LLP, Indiana, USA. Respondent is Pelres Investments Ltd. / Jan Janssen (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <apcialis.com>, <buy-cialis-online-cheap.com>, <canada-cialis.com>, <cheap-cialis.com>, <cheap-cialis.org>, <cheapestcialis.com>, <cialis-australia.com>, <cialis-black.com>, <cialis-cheap.com>, <cialis-daily.com>, <cialis-professional.com>, <cialis-xl.com>, <cialisbrand.com>, <cialisdailytadalafil.com>, <cialisjelly.com>, <cialisoraljelly.com>, <cialispillen.com>, <cialissex.com>, <cialissoftpills.com>, <cialissuperactive.com>, <pharmacycialis.com>, <tadalafil-cialis.com>, <viagra-cialis-levitra.com>, and <xlpharmacycialis.com> (the “Domain Names”), registered with Epik Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2018; the Forum received payment on August 3, 2018.
On Aug 08, 2018, Epik Inc. confirmed by e-mail to the Forum that the <apcialis.com>, <buy-cialis-online-cheap.com>, <canada-cialis.com>, <cheap-cialis.com>, <cheap-cialis.org>, <cheapestcialis.com>, <cialis-australia.com>, <cialis-black.com>, <cialis-cheap.com>, <cialis-daily.com>, <cialis-professional.com>, <cialis-xl.com>, <cialisbrand.com>, <cialisdailytadalafil.com>, <cialisjelly.com>, <cialisoraljelly.com>, <cialispillen.com>, <cialissex.com>, <cialissoftpills.com>, <cialissuperactive.com>, <pharmacycialis.com>, <tadalafil-cialis.com>, <viagra-cialis-levitra.com>, and <xlpharmacycialis.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 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2018 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@apcialis.com, postmaster@buy-cialis-online-cheap.com, postmaster@canada-cialis.com, postmaster@cheap-cialis.com, postmaster@cheap-cialis.org, postmaster@cheapestcialis.com, postmaster@cialis-australia.com, postmaster@cialis-black.com, postmaster@cialis-cheap.com, postmaster@cialis-daily.com, postmaster@cialis-professional.com, postmaster@cialis-xl.com, postmaster@cialisbrand.com, postmaster@cialisdailytadalafil.com, postmaster@cialisjelly.com, postmaster@cialisoraljelly.com, postmaster@cialispillen.com, postmaster@cialissex.com, postmaster@cialissoftpills.com, postmaster@cialissuperactive.com, postmaster@pharmacycialis.com, postmaster@tadalafil-cialis.com, postmaster@viagra-cialis-levitra.com, and postmaster@xlpharmacycialis.com. Also on August 10, 2018, 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 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
A. Complainant
Complainant is the owner of the well-known trade mark CIALIS registered, inter alia, in the US and UK(since 1999), with first use recorded as 2002. It has owned <CIALIS.com> since 1999. CIALIS is an invented word with a high degree of distinctiveness.
The Domain Names are confusingly similar to Complainant’s mark as adding a generic or geographical term to a trade mark does not distinguish a domain name from that trade mark.
The Domain Names are being used to offer unapproved pharmaceutical generic products which are illegal and compete with Complainant’s official product on a web site using Complainant’s CIALIS word mark, its official logo and the appearance of Complainant’s packaging and product without permission. This is not a bona fide offering of goods and services or a legitimate noncommercial fair use and cannot give rise to rights or a legitimate interest in a Domain Name.
The Domain Name has been registered and used in bad faith having used the Domain Name to offer such products to disrupt Complainant’s business and cause confusion on the Internet under Policy ¶¶ 4(b)(iii) and (iv) and having been registered to prevent Complainant from reflecting its mark in a corresponding domain name whilst engaging in a pattern of such conduct under Policy ¶ 4(b)(ii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the well-known trade mark CIALIS registered, inter alia, in the US and UK (since 1999), with first use recorded as 2002. It has owned <CIALIS.com> since 1999. CIALIS is an invented word with a high degree of distinctiveness.
The Domain Names registered between 2015 and 2018 have been used to offer competing products without the permission of Complainant.
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.”).
Identical or Confusingly Similar
The Domain Names consist of Complainant's CIALIS mark (which is registered, inter alia, in the UK since 1999 for pharmaceutical goods and services with first use recorded as 2002) and/or generic or geographically descriptive terms or names of products and/or a hyphen or hyphens and a gTLD.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The same is true for geographical terms or names of similar products.
The Panel agrees that the addition of a hyphen or hyphens to Complainant's CIALIS mark does not distinguish the Domain Names from Complainant's registered trade mark pursuant to the Policy. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003) (finding the addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)).
A gTLD does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar to Complainant’s CIALIS registered mark.
As such the Panel holds that Paragraph ¶ 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its marks. There is no evidence or reason to suggest Respondent is commonly known by the Domain Names. The use of the Domain Names is commercial and so cannot be legitimate non-commercial or fair use.
The web sites attached to the Domain Names use Complainant's CIALIS mark and/or its official logo and do not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the respondent's use of a confusingly similar domain name to advertise services which competed with the complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Names and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panelist, the use made of the Domain Names in relation to Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by Complainant as Complainant’s trade marks and/or its logo are used without permission. The use of Complainant's logo on Respondent's web sites shows that Respondent is aware of Complainant and its business. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites likely to disrupt the business of Complainant.
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paras. 4(b)(iv) and 4(b)(iii). There is no need to consider further grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apcialis.com>, <buy-cialis-online-cheap.com>, <canada-cialis.com>, <cheap-cialis.com>, <cheap-cialis.org>, <cheapestcialis.com>, <cialis-australia.com>, <cialis-black.com>, <cialis-cheap.com>, <cialis-daily.com>, <cialis-professional.com>, <cialis-xl.com>, <cialisbrand.com>, <cialisdailytadalafil.com>, <cialisjelly.com>, <cialisoraljelly.com>, <cialispillen.com>, <cialissex.com>, <cialissoftpills.com>, <cialissuperactive.com>, <pharmacycialis.com>, <tadalafil-cialis.com>, <viagra-cialis-levitra.com>, and <xlpharmacycialis.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 6, 2018
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