Eli Lilly and Company v. Ubajdullaev
Claim Number: FA1705001733940
Complainant: Eli Lilly and Company of Indianapolis, Indiana, United States of America.
Complainant Representative: Faegre Baker Daniels, LLP of Indianapolis, Indiana, USA.
Respondent: Ubajdullaev of Ashxabad, TM.
Respondent Representative: none
REGISTRY and REGISTRAR
Registry: Top Level Domain Holdings Limited
Registrar: 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 Examiner in this proceeding.
Debrett Gordon Lyons as Examiner.
Complainant submitted: May 31, 2017
Commencement: May 31, 2017
Default Date: June 15, 2017
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").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Even though the Respondent has defaulted, URS Procedure 1.2.6 requires the 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 is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is the registered owner of United States Federal Trademark Regn. No. 2,724,589, registered from June 10, 2003, for the work mark CIALIS, as well as documents to show that the trademark is in current use.
The disputed domain name takes the Complainant’s trademark and merely adds the TLD, “.casa”. It is well established that the TLD is not an element of distinctiveness that is taken into consideration when evaluating the identity or confusing similarity between trademark and disputed domain name. Where the TLD is the only matter added to the trademark it is accepted that the domain name is (legally) identical to the corresponding trademark. Accordingly, the Examiner finds that the disputed domain name is identical to the Complainant’s trademark.
The Examiner finds clear and convincing evidence that URS Procedure 1.2.6.1 is satisfied.
[1.2.6.2.] The Registrant has no legitimate right or interest to the disputed domain name.
The Complainant argues that the Respondent has no right or legitimate interest to the disputed domain name, that it has never been authorized by the Complainant to register the disputed domain name, that it has no connection or affiliation with the Complainant, and that there has been no bona fide use of the domain name.
The disputed domain name resolves to a website, in Complainant’s words, “advertising counterfeit and competitive pharmaceutical products sold through various online pharmacies”.
The Examiner’s observes that the resolving website does not disclose any “competitive pharmaceutical products”; all are referenced by the trademark and there are none carrying other brand names. Further, there is no evidence that the products so marked are “counterfeit”. Complainant’s assertion that the website advertises “variations [which] have not been approved by any health authority” must be reconciled with the actual references on the website which are to “Brand Cialis”, “Generic Cialis”, “Cialis Soft” and “Cialis Professional”. Of those, the first two speak for themselves; that is to say, they are not brand “variations”. The Examiner’s cursory internet searches show a great many sites offering for sale pharmaceutical products described as “Cialis Soft” and “Cialis Professional”. There is no clear evidence one way or another as to whether the products so marked were first put on the market by Complainant.
By failing to reply, Respondent has not denied Complainant’s assertions or shown rights or legitimate interests in the disputed domain name. Nonetheless, the Complaint lacks clear and convincing evidence that Respondent has no rights to or legitimate interests in the disputed domain name. Accordingly, URS Procedure 1.2.6.2 is not satisfied.
[1.2.6.3.] The disputed domain name was registered and is used in bad faith.
No findings required.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent:
Debrett Gordon Lyons, Examiner
Dated: June 17, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page