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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Lilly ICOS LLC v Cialister [2006] DRS 3234 (12 May 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3234.html Cite as: [2006] DRS 3234 |
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Nominet UK Dispute Resolution Service
DRS 03234
Lilly ICOS LLC v Mike Cialister
Decision of Independent Expert
Complainant: Lilly ICOS LLC
Country: US
Respondent: Mike Cialister
Country: PL
onlinecialis.co.uk ("the Domain Name")
The complaint was entered into Nominet's system on 23rd March 2006. Nominet validated the complaint and informed the Respondent by letter dated 28th March 2006, noting that the Dispute Resolution Service had been invoked and that the Respondent had until 19th April 2006 to submit a Response. No Response was received.
On 20th April 2006 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy Version 2 ("the Policy"). The fee was duly paid on 24th April 2006.
On 24th April 2006 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet duly appointed me as Expert with effect from 2nd May 2006.
None.
The Complainant is a large international pharmaceutical company. It researches, develops and markets pharmaceutical products worldwide. One of its best known products is the Cialis (tadalafil) pill, a treatment for erectile dysfunction, which has been on sale in the EC since 22 January 2003.
The Complainant owns a large number of trade mark registrations for CIALIS around the world, including in the UK and European Community. The Complainant (or perhaps its predecessor in title) registered the domain name cialis.com on 10th August 1999, and has used it since at least June 2001.
I know very little about the Respondent, save that the Nominet WHOIS search with which I have been provided shows that the Domain Name was registered by him or on his behalf on 17th June 2005.
The print-out of the site accessible under the URL http://www.onlinecialis.co.uk with which I have been provided is headed "Buy Brand & Generic Cialis, Online Cialis Center", depicts a branded 'Cialis' pill next to the caption 'relax and take your time with 36-hour Cialis' and proceeds to list prices for multi-packs of Cialis 20mg pills. There then follows a large volume of textual information concerning the regulation and efficacy of the Complainant's Cialis product.
Complaint
The Complainant makes the following submissions in its Complaint:
"This Complaint is based on the following grounds:
A. The Complainant has rights in the CIALIS trademark
Complainant's rights in the CIALIS trademark date back to as early as 17 June 1999, when it filed for registration of the mark with the United States Patent and Trademark Office. The CIALIS mark was registered on the principal register (Registration No. 2,724,589) on 10 June 2003, and the CIALIS mark has also been registered in the United Kingdom since 24 June 1999 (Registration No. 2201146) (Annex 1). Complainant's decision to use the CIALIS trademark to identify its pharmaceutical product was made public in July 2001. Examples of some of the early media coverage of Complainant's product are attached as Annex 2.
Complainant began selling pharmaceutical products identified by the CIALIS mark on 22 January 2003 in the European Union, followed soon thereafter by sales in Australia and New Zealand. Complainant began sales in the United States in November, 2003. Examples of some of the media coverage of Complainant's launch of its product in various markets are attached as Annex 3. In total, Complainant has obtained more than eighty-seven (87) registrations for the CIALIS mark covering more than 117 countries.
The CIALIS trademark is the subject of pending registration applications filed by Complainant in twenty-four (24) countries. Detailed information regarding Complainant's registrations and applications for the CIALIS mark is set forth in Annex 4 to this Complaint. Copies of some of Complainant's certificates of registration for the CIALIS mark, together with the Declaration of Laura Pacheco, Trademark Associate for Eli Lilly and Company, are attached as Annex 5 to this Complaint.
Because Respondent registered the Domain Name on 17 June 2005 (Annex 6), Complainant's rights in the CIALIS trademark predate Respondent's registration date, and Complainant has both senior and exclusive rights in the CIALIS mark.
Complainant also has an Internet presence, primarily through the website accessed by the domain name(Annex 7), that it uses to advertise and provide information regarding its pharmaceutical product. The domain name was registered by Eli Lilly and Company on 10 August 10 1999, and Complainant has used the cialis.com domain name to identify a website since at least June, 2001 (Annex 8).
B. The Domain Name is an abusive registration
Section 3(a)(ii) of the Dispute Resolution Services rules define an abusive registration as a domain name which is used in a manner which has confused people or businesses into believing that the Domain name is registered to, operated or authorized by, or otherwise connected with the complainant. An argument that people could be confused can also be used to show an abusive registration without evidence of actual confusion. See Pfizer Inc. v. Pfizer-Viagra, DRS 03244 (Nominet UK Dispute Resolution Service, 14 February 2006) (Annex 15). Such is the case here.
Complainant spent approximately 39 million dollars to market and sell its CIALIS brand product worldwide in 2004, and worldwide sales of CIALIS brand product in that year were in excess of $550 million dollars. Further, in 2005, the year in which Respondent registered the Domain Name, worldwide sales of CIALIS brand product totaled $746.6 million dollars (35% higher than the reported worldwide sales in 2004) (Annex 9). To date, Complainant's sales of CIALIS brand product exceed $1 billion dollars.
For all of these reasons, Complainant believes that it is reasonable to infer that the CIALIS trademark is well-known. Therefore, because it is reasonable to infer that the CIALIS trademark is well-known, it is highly likely that Respondent knew of Complainant's CIALIS mark at the time of registering the confusingly similar Domain Name. Complainant also submits that the CIALIS mark is an invented word that has a high degree of individuality, inherent distinctiveness and no common colloquial use. As stated in the treatise, McCarthy on Trademarks & Unfair Competition, "generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non distinctive matter to it." Citing 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §23:50 (4th ed. 1998).
In the present case, the addition of the descriptive word "online" to Complainant's CIALIS trademark does not prevent confusion among consumers as to the source of the "Generic Cialis" products advertised on the website that Respondent has associated with the Domain Name (Annex 10). On the contrary, Respondent creates confusion by its use of the term "Generic Cialis" for products which have neither been sold nor approved by Complainant. Respondent exacerbates this confusion by its use of an enlarged photo of Complainant's CIALIS product at the top of website, the design in which Complainant has obtained U.S. trademark rights (U.S. Trademark Registration No. 2833222) (Annex 11).
Respondent has no rights or legitimate interests in the Domain Name. It is apparent from the website associated with the Domain Name that Respondent is attempting to capitalize on the valuable reputation and goodwill of the CIALIS mark by using Complainant's CIALIS trademark to lure consumers in search of Complainant's CIALIS brand product to the website associated with the Domain Name, whereupon Respondent provides consumers with an option of purchasing either "Generic" or brand CIALIS product. When an Internet consumer clicks on the hyperlink enabling consumers to buy "generic cialis at lowest prices," the consumer is directed to XLPharmacy.com (Annex 12), which sells the "generic equivalent" to brand CIALIS product. The XLPharmacy.com website also describes an affiliate program (Annex 13) to which Respondent likely belongs. It is difficult to imagine why Respondent facilitates click-through traffic to an online pharmacy having an affiliate program if not for the promise of financial compensation. Accordingly, Respondent likely receives a payment each time it links a consumer to the www.xlpharmacy.com page and the consumer purchases a product therefrom.
Complainant has not given Respondent permission, authorization, consent or license to use its CIALIS mark (Annex 14). Despite this fact, however, the Domain Name resolves to a website enabling Respondent to cash in on the strength of Complainant's CIALIS mark and the reputation of the pharmaceutical product with which the CIALIS mark is associated.
Because Respondent is using Complainant's CIALIS trademark in the Domain Name and on its website without Complainant's permission, Respondent is wrongfully implying that Complainant is endorsing and/or supporting the website and the products advertised on the site. This use of Complainant's trademark unfairly disrupts Complainant's business. See Pfizer Inc. v. Pfizer-Viagra, DRS 03244 (Nominet UK Dispute Resolution Service, 14 February 2006) (Annex 15).
Lastly, Respondent's use of Complainant's CIALIS mark in 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 that they are dealing with Complainant and, therefore, will be receiving safe and effective drugs approved by the U.S. Food and Drug Administration or other health authorities around the world. Therefore, Respondent's use of Complainant's CIALIS trademark in the Domain Name and on its website not only risks Complainant's business and good will, Respondent's use of the CIALIS mark also takes unfair advantage of and is unfairly detrimental to Complainant's rights. See Pfizer Inc. v. Pfizer-Viagra, DRS 03244 (Nominet UK Dispute Resolution Service, 14 February 2006) (Annex 15)."
Response
The Respondent did not file a Response.
General
Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
These matters must be affirmatively proven by the Complainant, notwithstanding the failure by the Respondent to file a Response. The effect of the Respondent's default, under paragraph 15(c) of the Procedure, (there being no exceptional circumstances in this case) is that I may draw such inferences from the Respondent's non-compliance as I consider appropriate.
Complainant's Rights
The Complainant must prove on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.
The definition of 'Rights' in the Policy "includes, but is not limited to, rights enforceable under English law." At the very least this encompasses United Kingdom and European Community trade mark registrations and unregistered rights in the nature of the goodwill necessary to found a passing off action in England and Wales.
In the present case the Complainant has amply demonstrated its ownership of Rights in the mark CIALIS, since well before the Domain Name was registered. It is the proprietor of UK and EC trade mark registrations for the word-only mark CIALIS dating back to 24 June 1999, nearly 6 years prior to the registration of the Domain Name. Moreover from the evidence and submissions before me, it is abundantly clear that the Complainant has conducted substantial business and has built up significant goodwill in the UK under and by reference to the name CIALIS.
I am further satisfied that the name CIALIS is similar to the Domain Name onlinecialis.co.uk (ignoring, as I am required to do, the first and second level suffixes). The addition of the term ONLINE is entirely non-distinctive in the context of domain names and CIALIS would be readily perceived by the public as the most distinctive and dominant component of the Domain Name.
Abusive Registration
Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Complainant's case appears to be put under both limbs of paragraph 1: both initial registration and subsequent use are alleged to be abusive.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out under paragraph 3(a) of the Policy. The Complainant cites and relies upon paragraph 3(a)(ii), which reads as follows:
"3(a)(ii) Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant"
A non-exhaustive list of countervailing factors are set out under paragraph 4(a) of the Policy. I do not regard any of the factors therein set out as being particularly pertinent to the facts of this dispute.
In my assessment this is a clear case: the facts speak for themselves. From the substantial volume of evidence annexed to the Complaint, my conclusions are as follows:
- The trade mark CIALIS is well-known and was well known as at the date of registration of the Domain Name.
- It can be safely inferred from (i) the distinctiveness and repute of the mark CIALIS, (ii) the Domain Name itself, (iii) the use which has been made of the Domain Name, and (iv) the lack of any innocent explanation put forward by the Respondent; that the Respondent registered the Domain Name in full knowledge of the Complainant's Rights.
- Moreover the Complainant has satisfied me that, on the balance of probabilities, the Respondent's motive in registering and using the Domain Name was to attempt to capitalize on the valuable reputation of the mark CIALIS by using it to earn money from driving internet traffic in search of the Complainant's CIALIS brand product, to his own website.
- The Domain Name, and the way it has been used, are likely to have created the false impression that there is a commercial connection between the Respondent and the Complainant (c.f. the Decision of the Appeal Panel in DRS 03027 EPSON Europe BV -v- Cybercorp Enterprises).
In the light of these conclusions there is very little to be said in the Respondent's defence. I have not closed my mind to the possibility that "Mr. Mike Cialister" was merely registering a derivation of his own surname for perfectly innocent, personal use; but the prominence and reputation of the Complainant's CIALIS product at the date of registration, together with the use which has in fact been made of the Domain Name, renders this scenario improbable in the extreme.
The ultimate question for my consideration is whether, on the evidence as a whole, the Complainant has discharged the burden of proving that the Domain Name was registered or has been used in a manner which takes unfair advantage of and/or is unfairly detrimental to the Complainant's Rights. For the reasons I have set out above, I am satisfied that the Complainant has discharged that burden and I conclude on the evidence before me that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Having concluded that the Domain Name is an Abusive Registration, the Expert determines that the Domain Name, onlinecialis.co.uk, should be transferred to the Complainant.
May 12th, 2006
Philip Roberts
