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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Mama Mia

Case No. D2006-0385

 

1. The Parties

The Complainant is Lilly ICOS LLC, Indianapolis, Indiana, United States of America, represented by Baker & Daniels, Indianapolis, Indiana, United States of America.

The Respondent is Mama Mia, Dresda Ruhr, Germany.

 

2. The Domain Name and Registrar

The disputed domain name <cialis-store.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2006. On March 28, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On March 31, 2006, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2006.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on May 24, 2006. 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

Complainant Lilly ICOS LLC is a joint venture between ICOS Corp. and Eli Lilly and Co. Complainant owns a United States Trademark Registration (No. 2,724,589) for the mark CIALIS, as used on a pharmaceutical product. The mark was registered in the United States on June 10, 2003, based on an application filed on June 17, 1999.

Complainant began selling pharmaceutical products under the CIALIS mark on January 22, 2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand. Complainant began sales of the drug CIALIS in the United States in November 2003. To date, the CIALIS mark is the subject of more than 87 registrations covering more than 117 countries and sales of CIALIS brand product exceed $1 billion. The CIALIS brand drug also has been the subject of extensive media coverage. See Exhibits 5-9 to the Complaint. Eli Lilly is the owner of the domain name <cialis.com> that it uses to advertise and provide information regarding its pharmaceutical product.

Respondent registered the disputed domain name, <cialis-store.com>, on July 5, 2005.

 

5. Parties’ Contentions

A. Complainant

Complainant maintains that the domain name <cialis-store.com> is confusingly similar to the CIALIS mark. In support of such contention, it argues that the addition of the descriptive word “store” to its mark does not prevent a finding of confusing similarity.

Complainant also contends that Respondent has no rights or legitimate interests in the domain name. According to Complainant, the “www.cialis-store.com” website directs Internet users to another website, “www.evameds.biz/ct/,” that advertises “generic” CIALIS product in a “soft tab” form. Complainant does not make its CIALIS brand product in a “soft tab” form and such a product has never been approved by the United States Food and Drug Administration (FDA). The Complainant further notes that the “www.evameds.biz/ct/” website provides consumers with the opportunity to purchase other medications, such as generic VIAGRA and LEVITRA, which compete with CIALIS. Complainant also observes that Respondent’s website offers to “swap links” with other websites so as to potentially create a “network” of linked websites promoting products competitive with CIALIS.

With respect to the issue of “bad faith” registration and use, Complainant argues that Respondent is using the CIALIS mark in the disputed domain name to attract Internet users to its “www.cialis-store.com” website at which Respondent advertises “generic” CIALIS brand product for sale and that Respondent likely benefits financially from linking consumers to websites where “generic” CIALIS is sold. Respondent’s use of the CIALIS mark in the disputed domain name wrongfully implies that Complainant is endorsing and/or supporting the website and the products advertised thereon, Complainant contends. Complainant observes that Respondent’s website includes a picture of Complainant’s product packaging and displays Complainant’s “C” logo on the top left-hand corner of the web page.

In further support of its contention that the domain name was registered and is being used in “bad faith,” Complainant urges that “Mama Mia” is likely not the true name of Respondent and that Respondent’s use of the domain name is potentially harmful to the health of many unsuspecting consumers who may purchase unlawfully sold pharmaceutical products advertised on Respondent’s website under the mistaken impression they are dealing with Complainant and receiving safe and effective FDA-approved drugs. Complainant emphasizes that CIALIS is only available on a physician’s prescription and is made, labeled and sold in strict compliance with the FDA and other health authority laws and regulations.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name, <cialis-store.com>, is confusingly similar to the mark CIALIS. The generic term “store” and the gTLD “.com” have no trademark significance and, thus, their addition to the domain name does not avoid a finding of confusing similarity between CIALIS and <cialis-store.com>. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (addition of words “drug,” “online,” “buying,” and “guide” to CIALIS mark did not eliminate confusing similarity between CIALIS and <cialis-drug-online-buying-guide.com> domain name); Lilly ICOS LLC v. Dylan Dupre, WIPO Case No. D2006-0331 (domain name <cialiswonder.com> ordered transferred); Lilly ICOS LLC v. Ronald Bode, WIPO Case No. D2006-0366 (domain name <cialis-medical-board.com> ordered transferred).

The Panel further concludes that, as a result of its registration and use of the CIALIS mark, Complainant clearly has rights in such mark.

B. Rights or Legitimate Interests

There is no evidence that Respondent has rights or legitimate interests in the domain name <cialis-store.com>. Given the confusing similarity between CIALIS and <cialis-store.com> and the evidence in the case file, the Panel cannot find that Respondent is using the domain name in connection with a bona fide offering of goods or services and none of the other circumstances set forth in paragraph 4(c) is applicable.

C. Registered and Used in Bad Faith

The Panel concludes that the domain name <cialis-store.com> was registered and is being used in bad faith. The evidence establishes that, through the use of the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, as well as to various linked websites, by creating a likelihood of confusion with Complainant’s CIALIS mark as to the source, sponsorship, affiliation, or endorsement of such websites or of the products advertised at such websites. The potential health hazards to the general public from the use of products found on Respondent’s website and the various linked websites is especially worrisome to the Panel and further supports a determination that the disputed domain name be transferred from Respondent to Complainant.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cialis-store.com> be transferred to the Complainant.

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Jeffrey M. Samuels
Sole Panelist

Dated: June 7, 2006