Eli Lilly and Company v. Daniel Kobelau / Max Piper
Claim Number: FA1711001757951
Complainant is Eli Lilly and Company (“Complainant”), represented by Abe J. Shanehsaz of Faegre Baker Daniels LLP, Indiana, USA. Respondent is Daniel Kobelau / Max Piper (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cialis.work> and <cialis.news>, registered with NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2017; the Forum received payment on November 9, 2017.
On Nov 10, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <cialis.work> and <cialis.news> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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.work, postmaster@cialis.news. Also on November 20, 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 December 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 is a pharmaceutical company who sells its products all around the world. Complainant first started selling its products in 1999. Complainant registered the CIALIS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,724,589, registered June 10, 2003). See Compl. Annex 5. Respondent’s <cialis.work> and <cialis.news> domain names are identical or confusingly similar to Complainant’s mark as they consist of the CIALIS mark and the generic top-level domain (“gTLD”) “.work” or “.news.”
Respondent has no rights or legitimate interests in the <cialis.work> and <cialis.news> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the websites associated with the domain names resolve to pages advertising various online pharmacies, which promote and allegedly sell “generic” or counterfeit versions of CIALIS brand product, such as “CIALIS SUPER ACTIVE.” See Compl. Annex 7. This sale of products which are not approved by the FDA is deceitful and illegal.
Respondent registered and uses the <cialis.work> and <cialis.news> domain names in bad faith. Respondent has established a pattern of bad faith by registering multiple domain names in the instant case by registering multiple identical or confusingly similar domain names incorporating Complainant’s mark. Further, Respondent uses Complainant's CIALIS mark in the domain names to disrupt Complainant’s business and drive Internet traffic to its website, and is likely profiting from the purchase of any counterfeit products from the associated online pharmacies. See Compl. Annex 7. This sale of counterfeit pharmaceutical products is illegal, which further establishes Respondent’s bad faith. Additionally, until Complainant sent notice of its property right in the CIALIS mark to Respondent, the resolving website for the <cialis.work> domain name was inactive. Finally, Complainant has extensively marketed and advertised its pharmaceutical product using the CIALIS mark, thus Respondent knew of Complainant’s mark at the time it registered the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <cialis.work> and <cialis.news> domain names on June 15, 2017 and June 12, 2017, respectively.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the dispute domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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.”).
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.”
The Panel finds that Respondent has produced enough evidence to indicate that the Respondents are all one in the same entity and will proceed accordingly.
The Panel finds that the disputed domain names, <cialis.work> and <cialis.news>, are confusingly similar to Complainant’s valid and subsisting trademark, CIALIS. Complainant has adequately plead its rights and interests in this trademark. Respondent arrives at the disputed domain names by merely adding to the trademark in its entirety the g TLDs “.work” and “.news.” This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no right, license or permission to register the disputed domain names. Respondent is not commonly known by the disputed domain names. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the websites associated with the domain names resolve to pages advertising various online pharmacies, which promote and allegedly sell “generic” or counterfeit versions of CIALIS brand product, such as “CIALIS SUPER ACTIVE.” See Compl. Annex 7. This sale of products which are not approved by the FDA may be deceitful and illegal.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Complainant alleges that Respondent has established a pattern of bad faith by registering multiple domain names in the instant case by registering multiple identical or confusingly similar domain names incorporating Complainant’s mark. The registration of multiple identical or confusingly similar domain names incorporating a registered mark can demonstrate bad faith registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum November 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). The Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith use and registration under Policy ¶ 4(b)(ii).
Further, Complainant argues that Respondent uses Complainant's CIALIS mark in the disputed domain names to disrupt Complainant’s business and drive Internet traffic to its website and is likely profiting from the purchase of any counterfeit products from the associated online pharmacies. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshots of the resolving disputed domain names, which display pharmaceutical products similar to those of Complainant. See Compl. Annex 7. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant also argues that Respondent uses the disputed domains to engage in the illegal sale of unauthorized pharmaceutical products. Using a domain name for an illegal purpose can evidence bad faith use. See Google Inc. v Domain Admin / Whois Privacy Corp., FA150400161605239 (Forum Mar. 22, 2015) (Respondent’s use of the at-issue domain name to aid illegal activities under Complainant’s trademark and thereby tarnish the GOOGLE mark also suggests Respondent’s bad faith.). Complainant claims that the products offered on the domain are unauthorized and thus illegally distributed. See Compl. Annex 7. The Panel declines the invitation to adjudicate what may or may not be the illegal distribution of pharmaceutical products and passes not judgement on this claim.
Complainant claims that until Complainant sent notice of its rights in the CIALIS mark to Respondent, the resolving website for the <cialis.work> domain name was inactive. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant does not provide a screenshot of the alleged inactive webpage. The Panel also makes no finding regarding the claim that Respondent inactively held the disputed domain names as it finds not evidence in the record to support such a claim.
Complainant lastly claims that Respondent had actual knowledge of Complainant’s CIALIS mark. Given the fame of the CIALIS trademark and the totality of the circumstances, the Panel finds that Respondent had actual prior knowledge of Complainant’s trademark and its rights thereto.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain names.
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.work> and <cialis.news> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: December 20, 2017
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