Eli Lilly and Company v. jose javier marijuan zuaza
Claim Number: FA1906001849109
Complainant is Eli Lilly and Company (“Complainant”), represented by Stephanie A. Gumm of Faegre Baker Daniels LLP, Indiana, USA. Respondent is jose javier marijuan zuaza (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cialis.blog>, registered with Soluciones Corporativas IP, SL..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil Jiménez as Panelist.
PRELIMINARY ISSUES:
RESPONDENT’S STATEMENT
Upon receipt of the documentation related with the dispute at hand, Respondent sent a message to the Forum stating that he did not know he was harming anyone and that he would immediately disable the domain which he is not really using. He added that the domain will be free once it expires, or alternative he will place it where he is told to do so. Notwithstanding the implicit offer to transfer the domain, the Panel is of the opinion that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
LANGUAGE OF THE PROCEEDINGS
Complainant states in the Complaint that the language of the Registration Agreement is both in Spanish and English, and submitted copies thereof with the Complaint. It is also stated that the website associated with the Domain Name is in English, and likewise evidence of this fact was provided. 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.
Complainant submitted a Complaint to the Forum electronically on June 21, 2019; the Forum received payment on June 21, 2019.
On June 24, 2019, Soluciones Corporativas IP, SL confirmed by e-mail to the Forum that the <cialis.blog> domain name is registered with Soluciones Corporativas IP, SL and that Respondent is the current registrant of the name. Soluciones Corporativas IP, SL has verified that Respondent is bound by the Soluciones Corporativas IP, SL 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 July 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2019 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.blog. Also on July 2, 2019, 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 July 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil Jiménez 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
This Complaint is based upon the ownership of the trademark CIALIS registered by the Complainant in the United States of America as well as in several jurisdictions around the world. Complainant also relies on the fact that the trademark CIALIS is well known around the world.
Based on the foregoing, Complainant’s main contentions can be summarized as follows:
Complainant owns numerous trademark registrations throughout the world for its CIALIS mark, and rights in the CIALIS mark date back to as early as 1999. Because the Respondent registered the Domain Name on May 6, 2019, Complainant's rights in the CIALIS trademark predate Respondent’s registration date of the dispute domain, and Complainant has both senior and exclusive rights in the CIALIS mark. Complainant also has had an Internet presence, primarily through the website accessed by the domain name <cialis.com>, that it has historically used to advertise and provide information regarding its pharmaceutical product.
Complainant asserts that the disputed domain name <cialis.blog> is confusingly similar to Complainant’s CIALIS mark. The disputed domain name incorporates the distinctive trademark CIALIS in its entirety, with the exception of the gTLD.
It is argued in the Complaint that Respondent has no rights or legitimate interests in respect of the Domain Name. There is no evidence that the Respondent has been commonly known by the term “CIALIS” or the domain dame, and the active website associated with the domain name resolves to an online pharmacy, Pure RX Pills, which promotes and allegedly sells “generic” versions of CIALIS brand product.
Lastly, Complainant argues that the domain name was registered and is being used in bad faith. Respondent is using Complainant's CIALIS mark in the Domain Name to attract Internet consumers to its website from which Respondent derives a financial benefit by advertising and selling counterfeit product, in addition to allegedly competitive products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel has thoroughly reviewed the Complaint together with the evidence submitted to support the allegations, and based on all the documents, the Panel finds:
- That Complainant is the exclusive owner of the trademark CIALIS which is duly registered and in force in the United States and elsewhere in the world.
- That the trademark CIALIS is a widely recognized and well-known trademark, since the documentation attached to the Complaint leave no doubt as regards the extension of the knowledge of the trademark.
- That the disputed domain name <cialis.blog> does resolve to an online pharmacy, Pure RX Pills, which promotes and allegedly sells “generic” versions of CIALIS brand product.
- That in addition to the use of Complainant's CIALIS trademark, Complainant's distinctive CIALIS tablet and Swirl logo (tablet appearance and Swirl logo that are also registered trademarks owned by the Complainant in many countries throughout the world as per evidence attached to the Complaint) are prominently displayed on the Respondent’s website.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademark CIALIS. In addition, it was demonstrated that sales and promotion expenditures lead to conclude that the trademark CIALIS is well-known, to an extent that it would not be possible to validly argue that the existence of said mark was not known. In addition, in the present case Respondent has merely added the <.blog> gTLD to the CIALIS mark in the Domain Name and as a result, the relevant portion of the disputed domain is only the CIALIS mark. Prior panels have noted that because “every domain name requires a TLD, whether it is a traditional or a new gTLD, such TLDs must be disregarded when doing a Policy ¶ 4(a)(i) analysis.” In the present case, Panel is in complete agreement with such line of reasoning.
In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <cialis.blog> is confusingly similar to the trademark CIALIS owned by the Complainant.
Once again, the Panel concurs with the Complainant’s assertion as regards the fact that the usage of the disputed domain name by the Respondent cannot be held as a bona fide offering of goods and services. Indeed, the fact that the Respondent uses the disputed domain name to resolve to an online pharmacy - Pure RX Pills - which promotes and allegedly sells “generic” versions of CIALIS brand product which compete with Complainant’s product and where Complainant’s trademark CIALIS, as well as the CIALIS tablet and Swirl logo are used without any authorization and less with any shame, does indicate that the Respondent’s use of the disputed domain name does not constitute 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).
In light of the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <cialis.blog>.
According to Paragraph 4(b) of the Policy, certain circumstances are evidence of bad faith in the registration and use of a given domain name. Among such circumstances the Policy mentions in Paragraph 4(b)(iv): using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant 's mark as to the source, sponsorship, affiliation, or endorsement of you’re the Respondent’s site or location or of a product or service on the Respondent’s web site or location.
Now, as mentioned before, the fact that the Respondent uses the disputed domain name to resolve to an online pharmacy - Pure RX Pills - which promotes and allegedly sells “generic” versions of CIALIS brand product which compete with Complainant’s product and where Complainant’s trademark CIALIS, as well as the CIALIS tablet and Swirl logo are used as if said trademarks were available for usage by everyone, does indicate that Respondent registered the disputed domain <cialis.blog> attempting to attract for commercial gain internet users to his website, creating a likelihood of confusion with Complainant’s trademark CIALIS. Thus, the bad faith in this behavior is blatant and undeniable.
Due to all the above, it is imperative to conclude that the disputed domain name <cialis.blog> has been registered and is being used in bad faith under 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 <cialis.blog> domain name be TRANSFERRED from Respondent to Complainant
Luz Helena Villamil Jiménez, Panelist
Dated: August 13, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page