Eli Lilly and Company v. Jan Janssen / Pelres
Claim Number: FA1610001698528
Complainant is Eli Lilly and Company (“Complainant”), represented by Stephanie A. Gumm of Faegre Baker Daniels, LLP, Indiana, USA. Respondent is Jan Janssen / Pelres (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cialis.sex>, registered with Super Registry Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his or knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2016; the Forum received payment on October 17, 2016.
On October 24, 2016, Super Registry Ltd confirmed by e-mail to the Forum that the <cialis.sex> domain name is registered with Super Registry Ltd and that Respondent is the current registrant of the name. Super Registry Ltd has verified that Respondent is bound by the Super Registry Ltd 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 October 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@cialis.sex. Also on October 21, 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 November 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant has registered its CIALIS mark with the United States Patent and Trademark Organization (“USPTO”) (e.g., Reg. No. 2,724,569, registered June 10, 2003), and has rights in the mark under Policy ¶ 4(a)(i) that it uses to market pharmecuetical drugs. See Compl., at Attached Annex 5. Respondent’s <cialis.sex> domain name is identical to its CIALIS mark, because it only differs by the “.sex” top-level domain (“TLD”) which is not to be considered for confusing similarity analysis under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not granted Respondent any sort of permission to use its CIALIS mark, and Respondent is not commonly known as <cialis.sex>. Respondent is using the domain name to divert Internet users to purchasing its CIALIS product from an illegal competitor. See Compl., at Attached Annex 7. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent registered and has been using the disputed domain name in bad faith. Respondent presumably receives revenue for referring mistaken Internet users to a third-party pharmacy, and is commercially gaining by the confusion as to the source, sponsorship, affilliation, or endorsement of the resolving page of the disputed domain name. Further, Respondent had actual notice of the CIALIS mark, and chose to display Complainant’s mark on its website in order to sell more either counterfeit or illegal versions of Complainant’s CIALIS branded product.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a famous company engaged in the pharmaceutical industry.
2. Complainant has registered its CIALIS mark with the United States Patent and Trademark Organization (“USPTO”) (e.g., Reg. No. 2,724,569, registered June 10, 2003).
3. Respondent registered the <cialis.sex> domain name on March 10, 2016.
4. Respondent is using the domain name to divert Internet users to purchasing counterfeit or illegal versions of Complainant’s CIALIS branded product from a competitor.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends it has registered its CIALIS mark with the USPTO (e.g., Reg. No. 2,724,569, registered June 10, 2003), and that it has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Annex 5. Panels have found that USPTO registration confers rights in a mark, even when the registration is not in the country that a respondent is operating in. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel finds that Complainant has rights in its CIALIS mark.
The second issue that arises is whether the disputed <cialis.sex> domain name is identical or confusingly similar to Complainant’s CIALIS marks. Complainant additionally contends that Respondent’s <cialis.sex> domain name is identical to its CIALIS mark. Complainant argues that Respondent’s domain name features the entire distinctive CIALIS mark, and that the “.sex” TLD suffix is irrelevant and descriptive of its CIALIS prescription drug. See Compl., at Attached Annex 3. Panels have held that a descriptive TLD may be disregarded for conducting confusing similarity analysis under Policy ¶ 4(a)(i). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA 1594837 (Forum Jan. 22, 2015) (“While the addition of gTLDs are generally considered irrelevant to the confusing similarity analysis, the Panel finds that Respondent’s election of the “.lawyer” and “.attorney” descriptive terms do heighten the likelihood of confusion because Complainant’s MCGUIREWOODS mark is used to promote the services of lawyers and attorneys.”). As such, the Panel holds that Respondent’s domain name is confusingly similar to Complainant’s CIALIS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CIALIS mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on March 10, 2016;
(c) Respondent has used the domain name to divert Internet users to purchasing counterfeit or illegal versions of Complainant’s CIALIS branded product from a competitor;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <cialis.sex> domain name. Complainant submits that it has not licensed or otherwise authorized Respondent to use its CIALIS mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the domain name in question lists “Jan Janssen” as the registrant with “Pelres” organization. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not commonly known by <cialis.sex>;
(f) Complainant further submits that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using Complainant’s marks on the resolving website of the disputed domain name to divert mistaken internet users to a third-party website that sells counterfeit or illegal versions of Complainant’s CIALIS brand pharmaceutical product. Complainant has submitted screen shots of Respondent’s website that it contends is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name. See Compl., at Attached Annex 7. Panels have held that a respondent attempting to use a complainant’s mark to sell complainant’s products without proper authorization does not confer any rights or legitimate interests in the domain name. 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). As such, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent has registered and is using the <cialis.sex> domain name in bad faith. Complainant argues that Respondent is purportedly attempting to portray itself as having a relationship with Complainant in a bad faith attempt to attract Internet users for commercial gain under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s use of its CIALIS mark, in conjunction with redirecting Internet users to a third-party website that illegally offers Complainant’s products, creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Panel note’s Respondent’s alleged resolving website at the disputed domain name. See Compl., at Attached Annex 7. Complainant presumes that Respondent is commercially gaining when mistaken Internet users click one of the links and get referred to a third party website. Panels have held a respondent is commercially gaining in bad faith for either selling counterfeit iterations of complainant’s goods, or for selling a complainant’s goods without proper authorization. See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). As such, the Panel holds Respondent’s use of <cialis.sex> to be in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant additionally argues that Respondent had actual knowledge of its CIALIS mark when it registered the <cialis.sex> domain name. Complainant argues its CIALIS mark has achieved substantial fame, and has provided media recognition of its CIALIS brand product all over the world. See Compl., at Attached Annexes 3, 4, and 10. Complainant additionally submits that Respondent had actual knowledge, because Respondent featured the CIALIS mark on its resolving website and displays the language, “we show you where to buy Cialis Online cheap to improve your sexlife!” See Compl., at Attached Annex 7. While the UDRP does not recognize constructive notice alone as sufficient grounds to find bad faith, panels have inferred that a respondent had actual knowledge from both the fame of a complainant’s mark, or the use of a complainant’s mark by the respondent. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (“[Respondent] has intended to take advantage of Yahoo!’s fame and goodwill. To justify this effort, [Respondent] has twisted the ordinary meaning of ‘due diligence,’ has created a transparent facade of alleged good faith by filing intent to use applications for trademark registrations, and has extrapolated far too much from his California trademark registration.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Accordingly, as the Panel finds that Respondent had actual notice of Complainant’s rights in the CIALIS mark when it registered the <cialis.sex> domain name, the Panel finds Respondent in bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <cialis.sex> domain name using the CIALIS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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.sex> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 15, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page