Eli Lilly and Company v. Yana Kovaleva / Private Person / ltd Peter&danik / Denis D. Dolgih
Claim Number: FA1808001801507
Complainant is Eli Lilly and Company (“Complainant”), represented by Abe J Shanehsaz of Faegre Baker Daniels LLP, United States of America. Respondent is Yana Kovaleva / Private Person / ltd Peter&danik / Denis D. Dolgih (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are: <gacialisdtiyk.com>, was registered with Gransy, s.r.o. d/b/a subreg.cz; <bhscialisdjy.com>, <buycialishjmfgj.com>, <bvbmcialisgba.com>, <cheapcialisgbmu.com>, <cialisbmdsr.com>, <cialiscouponghndfe.com>, <cialisdoctorkjl.com>, <cialisfbvghf.com>, <cialisfbvne.com>, <cialisgbnmse.com>, <cialisgenericoplk.com>, <cialisifbnam.com>, <cialiskbg.com>, <cialismbvi.com>, <cialisonlinehjgkgh.com>, <cialisopghe.com>, <cialissalegbndet.com>, <cialistabletfgbmas.com>, <cialisviymw.com>, <dkcialislfn.com>, <dtcialisfva.com>, <fmacialisuhy.com>, <fmcialisytjd.com>, <fncialisokgh.com>, <gecialishjufh.com>, <genericcialisghkfgjfkh.com>, <gmwcialisfnw.com>, <gmwcialiskem.com>, <gvcialisdnw.com>, <gvfcialisghna.com>, <gxcialisukgfgc.com>, <sacialisguyid.com>, <tbnacialiskj.com>, <tgjcialisopfg.com>, <tmcialisutkfh.com>, <uttcialisstdjfxhfdj.com>, <vnacialisfbvn.com>, <whcialisxdutrj.com>, <yicialisyoe.com>, and <ytfcialisnkrt.com>, were registered with Hosting Concepts B.V. d/b/a Openprovider; <cialisbhascse.com>, <cialisdcfev.com>, <cialisdgswryre.com>, <cialisdskew.com>, <cialisggr.com>, <cialisghkgfjm.com>, <cialisietwdffjj.com>, <cialiskkg.com>, <cialisrutrhs.com>, <cialisruyfk.com>, <cialisrydfgj.com>, <cialistgaveff.com>, <cialistiutyjdg.com>, <cialistrihfy.com>, <cialisuitykh.com>, <cialisuotukhfh.com>, <cialisyrudgj.com> and <cialisytigjtuj.com>, were registered with Registrar of Domain Names REG.RU LLC.
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 August 15, 2018; the Forum received payment on August 15, 2018.
On August 17, 2018, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <cialisbhascse.com>, <cialisdcfev.com, cialisdgswryre.com>, <cialisdskew.com>, <cialisggr.com>, <cialisghkgfjm.com>, <cialisietwdffjj.com>, <cialiskkg.com>, <cialisrutrhs.com>, <cialisruyfk.com>, <cialisrydfgj.com>, <cialistgaveff.com>, <cialistiutyjdg.com>, <cialistrihfy.com>, <cialisuitykh.com>, <cialisuotukhfh.com>, <cialisyrudgj.com> and <cialisytigjtuj.com> domain names were registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. On August 19, 2018, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <gacialisdtiyk.com> domain name was registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. On Aug 22, 2018, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <bhscialisdjy.com>, <buycialishjmfgj.com>, <bvbmcialisgba.com>, <cheapcialisgbmu.com>, <cialisbmdsr.com>, <cialiscouponghndfe.com>, <cialisdoctorkjl.com>, <cialisfbvghf.com>, <cialisfbvne.com>, <cialisgbnmse.com>, <cialisgenericoplk.com>, <cialisifbnam.com>, <cialiskbg.com>, <cialismbvi.com>, <cialisonlinehjgkgh.com>, <cialisopghe.com>, <cialissalegbndet.com>, <cialistabletfgbmas.com>, <cialisviymw.com>, <dkcialislfn.com>, <dtcialisfva.com>, <fmacialisuhy.com>, <fmcialisytjd.com>, <fncialisokgh.com>, <gecialishjufh.com>, <genericcialisghkfgjfkh.com>, <gmwcialisfnw.com>, <gmwcialiskem.com>, <gvcialisdnw.com>, <gvfcialisghna.com>, <gxcialisukgfgc.com>, <sacialisguyid.com>, <tbnacialiskj.com>, <tgjcialisopfg.com>, <tmcialisutkfh.com>, <uttcialisstdjfxhfdj.com>, <vnacialisfbvn.com>, <whcialisxdutrj.com>, <yicialisyoe.com>, and <ytfcialisnkrt.com> domain names are registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the names. Gransy, s.r.o. d/b/a subreg.cz, Hosting Concepts B.V. d/b/a Openprovider, and Registrar of Domain Names REG.RU LLC have verified that Respondent is bound by the their respective registration agreements 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 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@cialisggr.com, postmaster@bhscialisdjy.com, postmaster@buycialishjmfgj.com, postmaster@bvbmcialisgba.com, postmaster@cheapcialisgbmu.com, postmaster@cialiscouponghndfe.com, postmaster@cialisdoctorkjl.com, postmaster@cialisfbvghf.com, postmaster@cialisfbvne.com, postmaster@cialisgbnmse.com, postmaster@cialisgenericoplk.com, postmaster@cialisifbnam.com, postmaster@cialiskbg.com, postmaster@cialismbvi.com, postmaster@cialisonlinehjgkgh.com, postmaster@cialisopghe.com, postmaster@cialistabletfgbmas.com, postmaster@cialisviymw.com, postmaster@dkcialislfn.com, postmaster@dtcialisfva.com, postmaster@fmacialisuhy.com, postmaster@fmcialisytjd.com, postmaster@fncialisokgh.com, postmaster@gecialishjufh.com, postmaster@genericcialisghkfgjfkh.com, postmaster@gmwcialisfnw.com, postmaster@gmwcialiskem.com, postmaster@gvcialisdnw.com, postmaster@gvfcialisghna.com, postmaster@gxcialisukgfgc.com, postmaster@sacialisguyid.com, postmaster@tbnacialiskj.com, postmaster@tgjcialisopfg.com, postmaster@tmcialisutkfh.com, postmaster@uttcialisstdjfxhfdj.com, postmaster@vnacialisfbvn.com, postmaster@whcialisxdutrj.com, postmaster@yicialisyoe.com, postmaster@cialisbhascse.com, postmaster@cialisdcfev.com, postmaster@cialisdgswryre.com, postmaster@cialisdskew.com, postmaster@cialisghkgfjm.com, postmaster@cialisietwdffjj.com, postmaster@cialiskkg.com, postmaster@cialisrutrhs.com, postmaster@cialisruyfk.com, postmaster@cialisrydfgj.com, postmaster@cialistgaveff.com, postmaster@cialistiutyjdg.com, postmaster@cialistrihfy.com, postmaster@cialisuitykh.com, postmaster@cialisuotukhfh.com, postmaster@andcialisytigjtuj.com, postmaster@cialisbmdsr.com, postmaster@cialissalegbndet.com, postmaster@cialisyrudgj.com, postmaster@gacialisdtiyk.com, postmaster@ytfcialisnkrt.com. Also on August 27, 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 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn appointed 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Complainant contends that according to LegitScript, a company providing assistance with this proceeding, the disputed domain names have been identified as being under the control of a single criminal enterprise. Complainant argues there are fifty nine (59) disputed domain names in total and that the active websites associated with the disputed domain names are affiliated with the PharmEmpire network that advertises and sells generic versions of Complainant’s CIALIS brand product. Further, Complainant contends all of the websites associated with the Domain Names redirect customers to the flagship pharmacy drugs-365.com and display the same affiliate ID number in the continuous URL. Complainant claims all of the websites associated with the disputed domain names utilize Cloudfare name servers and share the same network affiliation. Further, all of the websites utilize the same dedicated payment portal, secure-payment.net/billing, to process transactions.
As these assertions are undisputed by Respondent, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement. 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 include: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Russian language included in the Registration Agreement. 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). Further, the Panel may weigh the relative time and expense in enforcing the Russian language agreement, 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.”).
Complainant argues that the Domain Names were registered with registrars whose agreements are in both English and Russian. Furthermore, Complainant provides evidence that the hosted website associated with the domain names is in English.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant uses the CIALIS mark to identify its pharmaceutical product that was made available in July of 2001. Complainant has rights in the CIALIS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,724,589, registered Jun. 10, 2003). The disputed domain names are confusingly similar to Complainant’s CIALIS mark as Respondent merely adds random letters and/or generic or descriptive terms to Complainant’s mark (“buy,” “cheap,” “coupon,” “doctor,” “generic,” “online,” or “tablet”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not authorized or otherwise permitted to use Complainant’s CIALIS mark and is not commonly known by the disputed domain names. Additionally, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain names to pass off as Complainant in order to illegally offer “generic” or counterfeit version of Complainant’s products.
Respondent registered and uses the disputed domain names in bad faith. Respondent’s registration of multiple domain names using Complainant’s mark demonstrates a pattern of bad faith. Further, Respondent attempts to disrupt Complainant’s business and divert, for commercial gain, users to the disputed domain names where Respondent attempts to sell counterfeit versions of Complainant’s good. Respondent’s sale of potentially harmful pharmaceutical products also constitutes bad faith. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the CIALIS mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a response. The Panel notes that the disputed domain names were registered on:
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<cialisggr.com> |
February 2, 2018 |
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<bhscialisdjy.com> |
October 24, 2017 |
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<buycialishjmfgj.com> |
April 1, 2018 |
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<bvbmcialisgba.com> |
October 23, 2017 |
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<cheapcialisgbmu.com> |
April 15, 2018 |
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<cialiscouponghndfe.com> |
March 28, 2018 |
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<cialisdoctorkjl.com> |
March 27, 2018 |
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<cialisfbvghf.com> |
April 1, 2018 |
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<cialisfbvne.com> |
November 27, 2017 |
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<cialisgbnmse.com> |
March 27, 2018 |
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<cialisgenericoplk.com> |
April 10, 2018 |
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<cialisifbnam.com> |
March 19, 2018 |
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<cialiskbg.com> |
December 8, 2017 |
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<cialismbvi.com> |
November 23, 2017 |
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<cialisonlinehjgkgh.com> |
April 11, 2018 |
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<cialisopghe.com> |
November 26, 2017 |
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<cialistabletfgbmas.com> |
April 1, 2018 |
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<cialisviymw.com> |
December 6, 2018 |
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<dkcialislfn.com> |
March 13, 2018 |
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<dtcialisfva.com> |
March 13, 2018 |
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<fmacialisuhy.com> |
October 30, 2017 |
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<fmcialisytjd.com> |
February 28, 2018 |
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<fncialisokgh.com> |
February 25, 2018 |
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<gecialishjufh.com> |
February 22, 2018 |
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<genericcialisghkfgjfkh.com> |
April 10, 2018 |
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<gmwcialisfnw.com> |
October 30, 2017 |
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<gmwcialiskem.com> |
October 21, 2017 |
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<gvcialisdnw.com> |
March 17, 2018 |
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<gvfcialisghna.com> |
March 27, 2018 |
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<gxcialisukgfgc.com> |
February 25, 2018 |
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<sacialisguyid.com> |
February 22, 2018 |
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<tbnacialiskj.com> |
October 30, 2017 |
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<tgjcialisopfg.com> |
March 19, 2018 |
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<tmcialisutkfh.com> |
February 28, 2018 |
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<uttcialisstdjfxhfdj.com> |
February 11, 2018 |
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<vnacialisfbvn.com> |
November 15, 2017 |
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<whcialisxdutrj.com> |
February 13, 2018 |
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<yicialisyoe.com> |
March 17, 2018 |
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<cialisbhascse.com> |
January 17, 2018 |
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<cialisdcfev.com> |
February 1. 2018 |
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<cialisdgswryre.com> |
January 20, 2018 |
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<cialisdskew.com> |
February 2, 2018 |
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<cialisghkgfjm.com> |
January 15, 2018 |
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<cialisietwdffjj.com> |
December 26, 2017 |
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<cialiskkg.com> |
February 1, 2018 |
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<cialisrutrhs.com> |
January 20, 2018 |
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<cialisruyfk.com> |
December 22, 2017 |
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<cialisrydfgj.com> |
February 8, 2018 |
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<cialistgaveff.com> |
January 17, 2018 |
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<cialistiutyjdg.com> |
February 8, 2018 |
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<cialistrihfy.com> |
January 15, 2018 |
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<cialisuitykh.com> |
December 22, 2017 |
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<cialisuotukhfh.com> |
December 22, 2017 |
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<cialisytigjtuj.com> |
December 26, 2017 |
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<cialisbmdsr.com> |
March 28, 2018 |
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<cialissalegbndet.com> |
March 28, 2018 |
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<cialisyrudgj.com> |
December 22, 2017 |
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<gacialisdtiyk.com> |
February 19, 2018 |
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<ytfcialisnkrt.com> |
February 13, 2018 |
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.”).
Complainant claims to have rights in the CIALIS mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides a copy of its USPTO registration for the CIALIS mark (e.g., Reg. No. 2,724,589, registered Jun. 10, 2003). Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the CIALIS mark per Policy ¶ 4(a)(i).
Next, Complainant argues that the disputed domain names are confusingly similar to Complainant’s CIALIS mark. Specifically, Complainant contends Respondent merely incorporates the mark in its entirety and adds letters, or generic/descriptive terms. Adding letters, or generic/descriptive terms, to a complainant’s mark may not sufficiently mitigate any confusing similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). It is undisputed that Respondent merely incorporates Complainant’s CIALIS mark and adds random letters, and generic/descriptive terms. Consequently, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s CIALIS mark per Policy ¶ 4(a)(i).
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain names. Complainant alleges that Respondent is not authorized or otherwise permitted to use Complainant’s CIALIS mark and is not commonly known by the disputed domain names. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of records identify the registrant of the disputed domain names as either “Yana Kovaleva,” “Yana Kovaleva / Private Person,” or “ltd Peter&danik / Denis D. Dolgih,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names domain name.
Next, Complainant contends Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues that Respondent uses the disputed domain names to sell unauthorized and counterfeit versions of Complainant’s pharmaceutical products. Use of a disputed domain name to sell counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant further contends that Respondent’s sale of these “generic” pharmaceutical products is illegal and not approved by any health authority. Further, Complainant provides screenshots of the disputed domain names’ websites which purport to sell Complainant’s products at discounted prices. As such, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶¶ 4(a)(ii).
Complainant claims Respondent registered and is using the disputed domain names in bad faith. Specifically, Complainant contends that Respondent’s registration of fifty-nine (59) domain names incorporating the CIALIS mark demonstrates a pattern of bad faith. Registration of multiple domain names in a UDRP case may be evidence of bad faith under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Consequently, the Panel finds that Respondent engages in a pattern of bad faith per Policy ¶ 4(b)(ii).
Next, Complainant contends Respondent attempts to use the disputed domain names to disrupt Complainant’s business. Complainant also argues that Respondent attempts to attract, for commercial gain, users to the disputed domain name where it sells counterfeit versions of Complainant’s pharmaceutical products. Using a confusingly similar domain name to sell counterfeit products to either disrupt or commercially benefit constitutes evidence of bad faith under Policy ¶¶ 4(b)(iii) or (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Complainant has provided a screenshot of the disputed domain names’ resolving website which purports to sell a “generic” version of Complainant’s products. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
Furthermore, Complainant argues Respondent is using the disputed domain names in furtherance of illegal activity. Specifically, Complainant contends that Respondent attempts to sell unauthorized, unregulated pharmaceutical products, which may be harmful to consumers. Using a disputed domain name in furtherance of an illegal activity may constitute bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin, FA1605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith); see also Minn. State Lottery v. Mendes, FA 96701 (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). In light of Complainant’s arguments, and that Respondent has not disputed that it has engaged in illegal activity, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant claims that due to the extensive use and notoriety of Complainant’s CIALIS mark, Respondent had notice of Complainant’s rights in the mark. The Panel agrees with Complainant and infers that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). Therefore, the Panel finds that respondent has registered and used the disputed domain names in bad faith per 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 <cialisggr.com>, <bhscialisdjy.com>, <buycialishjmfgj.com>, <bvbmcialisgba.com>, <cheapcialisgbmu.com>, <cialiscouponghndfe.com>, <cialisdoctorkjl.com>, <cialisfbvghf.com>, <cialisfbvne.com>, <cialisgbnmse.com>, <cialisgenericoplk.com>, <cialisifbnam.com>, <cialiskbg.com>, <cialismbvi.com>, <cialisonlinehjgkgh.com>, <cialisopghe.com>, <cialistabletfgbmas.com>, <cialisviymw.com>, <dkcialislfn.com>, <dtcialisfva.com>, <fmacialisuhy.com>, <fmcialisytjd.com>, <fncialisokgh.com>, <gecialishjufh.com>, <genericcialisghkfgjfkh.com>, <gmwcialisfnw.com>, <gmwcialiskem.com>, <gvcialisdnw.com>, <gvfcialisghna.com>, <gxcialisukgfgc.com>, <sacialisguyid.com>, <tbnacialiskj.com>, <tgjcialisopfg.com>, <tmcialisutkfh.com>, <uttcialisstdjfxhfdj.com>, <vnacialisfbvn.com>, <whcialisxdutrj.com>, <yicialisyoe.com>, <cialisbhascse.com>, <cialisdcfev.com>, <cialisdgswryre.com>, <cialisdskew.com>, <cialisghkgfjm.com>, <cialisietwdffjj.com>, <cialiskkg.com>, <cialisrutrhs.com>, <cialisruyfk.com>, <cialisrydfgj.com>, <cialistgaveff.com>, <cialistiutyjdg.com>, <cialistrihfy.com>, <cialisuitykh.com>, <cialisuotukhfh.com>, <andcialisytigjtuj.com>, <cialisbmdsr.com>, <cialissalegbndet.com>, <cialisyrudgj.com>, <gacialisdtiyk.com>, and <ytfcialisnkrt.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 3, 2018
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