Westmore · UDRP DecisionOverthecountercialis.net
The Panel ordered transfer of <overthecountercialis.net> after finding that it was confusingly similar to the Complainant’s CIALIS trademark, that the Respondent lacked rights or legitimate interests, and that the domain name had been registered and used in bad faith. The domain incorporated CIALIS in its entirety with the descriptive prefix “overthecounter.” At the time of the Complaint, it had promoted generic versions of the Complainant’s goods and linked to competing pharmaceutical websites, supporting a finding of intentional attraction for commercial gain through confusion.
The timeline behind overthecountercialis.net
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind overthecountercialis.net — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates how adding a phrase describing a method of obtaining a pharmaceutical product may reinforce, rather than dispel, confusion where the domain incorporates a coined and well-known trademark. It also shows that inactivity at the time of decision does not prevent a bad-faith finding when the record establishes earlier commercial use designed to divert users to generic or competing pharmaceutical offerings.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Eli Lilly and Company v. Maksim Gurin Case No. D2014-1103 1. The Parties The Complainant is Eli Lilly and Company, of Indianapolis, United States of America, represented by Faegre Baker Daniels LLP, United States of America. The Respondent is Maksim Gurin of Moscow, Russian Federation. 2. The Domain Name and Registrar The disputed domain name <overthecountercialis.net> is registered with EvoPlus Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2014. On June 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 30, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 30, 2014. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2014. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 6, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a well-known US pharmaceutical company. In the financial year 2012, world-wide sales of the Complainant’s CIALIS product approached USD 2 billion. The Complainant holds exclusive rights in the CIALIS trademark. The Complainant has registered the CIALIS trademark in a variety of forms. The Complainant owns 167 registrations for the CIALIS mark covering 122 countries. The Complainant’s activity on the Internet is primarily done through the website accessed at the domain name <cialis.com>, wherein the Complainant advertises and provides information regarding its pharmaceutical product. The <cialis.com> domain name was registered by the Complainant’s predecessor-in-interest on August 10, 1999. The disputed domain name was registered on August 17, 2013. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its CIALIS trademark, merely adding the non-distinctive and descriptive element “overthecounter” to its CIALIS trademark. The Complainant states that it has not given the Respondent permission, authorization, consent or license to use its CIALIS trademark, and alleges that the disputed domain name, although currently inactive, has been used for commercial purposes, because it contains three prominent BUY NOW links on the home page which advertise generic CIALIS brand products as evidenced by Annex 11 of the Complaint. The Complainant explains that when a user clicks on the first BUY NOW link, he is taken to an online pharmacy located at “www.mydrugsrx.net”. According to the Complaint, this online pharmacy advertises and sells counterfeit and illegal version of Complainant’s CIALIS brand pharmaceutical product. The Complainant states that the online pharmacy boasts on its web page “Prescriptive Medication Without Prescription: Over-the-Counter Cialis”. The Complainant states that by using confusingly similar trademark in the disputed domain name, the Respondent is luring consumers in search of the Complainant CIALIS brand product to its website which links to online pharmacies that advertise and sell counterfeit or illegal pharmaceutical products for the treatment of erectile dysfunction. Consequently, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant alleges that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name contains the Complainant’s distinctive and widely known trademark CIALIS in its entirety. Neither the addition of the descriptive abbreviation “over the counter” as a prefix nor the inclusion of the generic Top-Level Domain suffix denomination “.net” alters the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. Patients seeking CIALIS are likely to assume that the disputed domain name is used for a website to advertise pharmacies where CIALIS is available “over the counter”, that is to say without a doctor’s prescription, or even for a website that sells CIALIS online (see by analogy Pfizer Inc. v. Evgen Shirko, WIPO Case No. D2013-0056 , with respect to the domain name <overthecounterviagra.com>). The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s trademark. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate non commercial or fair use of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and thereby shifted the burden of proof to the Respondent to produce evidence to rebut this presumption. The Respondent was given the opportunity to challenge the case against him. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the disputed domain name. The Panel therefore infers from the Respondent’s silence and the Complainant’s contentions, supported by the Annexes to the Complaint, that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the disputed domain name. For the foregoing, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the disputed domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith. Given the notoriety of the Complainant’s trademark, the coined nature of the word “cialis”, and the extensive promotion of the trademark CIALIS, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. The Panel notes in this regard that the Complainant’s trademark is registered in the country where the Respondent is apparently located, the Russian Federation (see Lilly ICOS LLC v. Anton Berezin , WIPO Case No. D2007-0281 ). Currently the disputed domain name is not in use. At the time of filing the Complaint, the disputed domain name featured an online pharmacy. As described above, the disputed domain name was being used to promote “generic” versions of the Complainant’s goods just as it contains information on competing products (pharmaceuticals) and links to competing websites. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. See, inter alia, Pfizer Inc. v. jg a/k/a Josh Green , WIPO Case No. D2004-0784 ; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi , Inc. , WIPO Case No. D2005-0623 ; and Hoffmann-La Roche Inc. v. Online Pharma, WIPO Case No. D2006-0628 . Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this case. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <overthecountercialis.net> be transferred to the Complainant. Pablo A. Palazzi Sole Panelist Date: August 18, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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