Lilly ICOS LLC v Joe Pestrak
Claim
Number: FA0504000464558
Complainant is Lilly ICOS LLC (“Complainant”),
represented by John R. Troll, of Baker & Daniels,
300 North Meridian Street, Suite 2700, Indianapolis, IN 46204. Respondent is Joe Pestrak (“Respondent”), 85 Lorne St., St. Catharines, Ontario
L2P 3C5, Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <drcialis.us>, registered with Go Daddy
Software, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 19, 2005.
On
April 19, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <drcialis.us> is registered
with Go Daddy Software, Inc. and that Respondent is the current registrant of
the name. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
April 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 10, 2005 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules).
Having
received no formal Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 16, 20005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the "Panel")
finds that the National Arbitration Forum has discharged its responsibility
under Paragraph 2(a) of the Rules.
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental
Rules and any rules and principles of law that the Panel deems applicable,
without the benefit of any formal Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <drcialis.us>
domain name is confusingly similar to Complainant’s CIALIS mark.
2. Respondent does not have any rights or
legitimate interests in the <drcialis.us> domain name.
3. Respondent registered or used the <drcialis.us>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Lilly ICOS LLC, is engaged in the pharmaceutical drugs industry and has used
the CIALIS mark to market its pharmaceutical drug as early as 1999. Complainant registered the CIALIS mark with
the United States Patent and Trademark Office (Reg. No. 2,724,589, issued June
10, 2003). Complainant has also
obtained more than eighty-seven registrations for the CIALIS mark in over 117
countries and the mark is subject to pending trademark registration in an
additional twenty-four countries.
Respondent
registered the <drcialis.us> domain name on October 16, 2003. Respondent is using the disputed domain name
to redirect Internet users to a commercial webpage where Complainant’s
pharmaceutical drug is advertised for sale.
Respondent’s webpage also displays Complainant’s CIALIS mark in its
identical color scheme and font form and offers several links to multiple web
sites from which generic versions of Complainant’s brand product may be
purchased.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Given the
similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”)
and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in
rendering its decision.
Complainant has
established that it has rights in the CIALIS mark through registration with the
United States Patent and Trademark Office and through continuous use of the
mark in commerce for the last six years.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption).
The <drcialis.us>
domain name registered by Respondent is confusingly similar to Complainant’s
CIALIS mark because the domain name incorporates Complainant’s mark in its
entirety and deviates from it only by the addition of the descriptive
abbreviation “dr.” The abbreviation is
universally understood to mean “doctor.”
The mere addition of a generic or descriptive abbreviation to a
registered mark does not negate the confusing similarity of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See
Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001)
(finding that the generic term “INC” does not change the confusing similarity);
see also Arthur Guinness Son &
Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant combined with a generic word or term); see also Modern
Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003)
(“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or
shorthand for ‘Modern Props.’ ‘Mod’ connotes [sic] ‘modern’ regardless of any
other dictionary meanings, so the names are substantially similar in
meaning.”); see also Minn. State Lottery
v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the
<mnlottery.com> domain name is confusingly similar to the complainant’s
MINNESOTA STATE LOTTERY registered mark).
Moreover,
Respondent’s second-level domain contains Complainant’s mark in its
entirety. Further, the addition of a
country-code as the top-level domain has been determined by previous panels to
be inconsequential when conducting an analysis under Policy ¶ 4(a)(i); thus,
Respondent’s domain name is confusingly similar to Complainant’s mark. See Tropar Mfg. Co. v. TSB, FA 127701
(Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the
country-code “.us” fails to add any distinguishing characteristic to the domain
name, the <tropar.us> domain name is identical to Complainant’s TROPAR
mark); see also Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the disputed domain
name. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, it is assumed that Respondent lacks rights and legitimate
interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding that where the complainant has asserted that the
respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on the respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see
also Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that
under certain circumstances the mere assertion by the complainant that the
respondent has no rights or legitimate interests is sufficient to shift the
burden of proof to the respondent to demonstrate that such rights or legitimate
interests do exist); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interests in the domain names).
The Panel may
accept all reasonable allegations and inferences in the Complaint as true
because Respondent has not submitted a response. See 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.”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. 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 Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent is
using the disputed domain name to redirect Internet users to a commercial
website where Complainant’s pharmaceutical products are offered for sale. The Panel finds Respondent’s use of a
confusingly similar domain name to redirect Internet users to a commercial
website is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iv). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website); see
also Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of
the complainant’s mark “as a portal to suck surfers into a site sponsored by
the respondent hardly seems legitimate”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) (finding that “unauthorized providing of information and
services under a mark owned by a third party cannot be said to be the bona fide
offering of goods or services”); see also Pfizer, Inc. v. Internet Gambiano
Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA
mark was clearly well-known at the time of the respondent’s registration of the
domain name it can be inferred that the respondent is attempting to capitalize
on the confusion created by the domain name’s similarity to the mark).
Furthermore,
Respondent is not commonly known by the disputed domain name, and does not have
Complainant’s authorization to use the CIALIS mark or offer goods and services
under Complainant’s CIALIS mark.
Respondent has not presented any evidence and there is no proof in the
record suggesting that Respondent is commonly known by the disputed domain names. Therefore, Respondent has not established
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a
domain name when the respondent is not known by the mark).
No
evidence has been produced that would suggest Respondent has a legitimate
connection with the <drcialis.us> domain name, or that Respondent
has established secondary meaning under the CIALIS identifier. Respondent has
also failed to proffer any evidence that would contradict such a conclusion.
Such circumstances fail to support a finding that Respondent is the owner or
beneficiary of a trademark or service mark that is identical to the <drcialis.us>
domain name; thus, Respondent fails to establish rights in the domain name
under Policy ¶ 4(c)(i). See CDW Computer Centers, Inc. v. The Joy Comp.
FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did
not come forward with a Response, the Panel could infer that Respondent had no
trademark or service marks identical to <cdw.us> and therefore had no
rights or legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied
Respondent is
incorporating Complainant’s mark in its domain name to lead Internet users to a
commercial website where Respondent offers Complainant’s product for sale and
displays several links to other commercial websites offering similar
pharmaceutical drug-related products.
The Panel finds that Respondent is using the domain name to attract
Internet users to Respondent’s website for Respondent’s commercial gain, which
constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if a respondent profits from its diversionary use of a
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where the respondent registered and used an infringing
domain name to attract users to a website sponsored by the respondent); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain); see also H-D Michigan, Inc. v. Petersons
Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed
domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)
through the respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
Furthermore,
Respondent registered the domain name for the primary purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Respondent’s website that directly competes with Complainant. Registration of a domain name for the
primary purpose of disrupting the business of a competitor is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area); see
also Hewlett Packard Co. v. Full Sys.,
FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and
used the domain name primarily for the purpose of disrupting the business of
the complainant by offering personal e-mail accounts under the domain name
<openmail.com> which is identical to the complainant’s services under the
OPENMAIL mark); see also EBAY,
Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites); see
also EthnicGrocer.com, Inc. v.
Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith
where Respondent’s sites pass users through to Respondent’s competing
business).
Moreover,
Respondent’s registration of a domain name that incorporates Complainant’s
well-known registered mark in its entirety and deviates only with the addition
of the generic and descriptive “dr.” abbreviation, suggests that Respondent
knew of Complainant’s rights in the CIALIS mark. Furthermore, the generic or descriptive term incorporated in the
domain name is related to Complainant’s pharmaceutical business. Thus, the Panel finds that Respondent likely
chose the <drcialis.us> domain name based on the distinctive and
well-known qualities of Complainant’s mark.
See Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the “domain names are so obviously connected with
the Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
(finding that the respondent demonstrated bad faith where the respondent was
aware of the complainant’s famous mark when registering the domain name as well
as aware of the deception and confusion that would inevitably follow if he used
the domain names); see also G.D. Searle & Co. v. Pelham, FA 117911
(Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred that Respondent had
knowledge of Complainant’s rights in the CELEBREX mark because Respondent is
using the CELEBREX mark as a means to sell prescription drugs, including
Complainant’s CELEBREX drug.”)
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <drcialis.us> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
May 31, 2005
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