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Hoffmann-La Roche AG v.
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Antoine Tardif / Cybernet Marketing, WIPO Case No. The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case: (i) The domain name is confusingly similar to the CIALIS mark as it fully incorporates the word “cialis” and the addition of the descriptive word “medication” does not prevent a finding of confusing similarity. The mere addition of the term “medication” to the domain name does not negate the distinctiveness of the Complainant’s CIALIS mark. (ii) The Respondent has no rights or legitimate interests in respect of the domain name: The Complainant has not given the Respondent any permission, authorization, consent or license to use its CIALIS mark. The Respondent’s sole reason for registering and using the domain name is to benefit from the reputation of the trademark CIALIS and illegitimately trade on its fame for commercial gain and profit.
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The Respondent’s use of the domain name is furthermore not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods and services placed on the market by its owner because the Respondent advertises and sells generic CIALIS la cialis product under the domain name. (iii) The domain name was registered in bad faith since the Respondent had knowledge of the well-known and highly distinctive CIALIS mark at the time of the registration of the confusingly similar domain name. Furthermore, the domain name is also being used in bad faith. The Respondent is using the domain name to attract Internet consumers to its website where it advertises and sells generic CIALIS product. Thus, the Respondent is attempting (for commercial purposes) to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known mark CIALIS as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the products or services posted on or linked to the Respondent’s website.
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The Respondent did not reply to the Complainant’s contentions. Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements are present: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and (ii) the Respondent has no rights or legitimate interests in respect of the domain name, and (iii) the domain name has been registered and is being used in bad faith. To establish confusing similarity, it is not required to establish that the registration and use of a domain name cause confusion as to their source, but whether the mark and the alphanumeric string constituting a domain name are confusingly similar when directly compared. CIALIS is a highly distinctive identifier of the source of the Complainant’s product, with a strong international reputation, and it is the only distinctive part of the domain name. The mere addition of the generic word “medication” following the trademark does not eliminate the similarity between the Complainant’s distinctive mark and the domain name, as “medication” is a descriptive component of the domain name which describes the type of product the Complainant sells under the name CIALIS and therefore is without any significance. Macalve e-dominios S.A., WIPO Case No.�D2006-0451 -
| Product | Dosage | Quantity + Bonus | Price | |
|---|---|---|---|---|
| Cialis Generic | 10mg | 180 + 8 Pills | 236.88€ 225.60€ | |
| Cialis Super Active | 20mg | 20 + 4 Pills | 92.35€ 87.95€ | |
| Cialis Generic | 2.5mg | 360 + 10 Pills | 260.03€ 247.65€ | |
| Cialis Generic | 40mg | 60 + 6 Pills | 130.98€ 124.74€ | |
| Cialis Generic | 5mg | 60 + 4 Pills | 86.02€ 81.92€ | |
| Cialis Generic | 10mg | 10 Pills | 31.41€ 29.91€ | |
| Cialis Generic | 60mg | 360 + 10 Pills | 570.52€ 543.35€ | |
| Cialis Generic | 60mg | 30 + 2 Pills | 85.33€ 81.27€ | |
| Cialis Generic | 10mg | 30 + 4 Pills | 63.32€ 60.30€ | |
| Cialis Generic | 20mg | 10 Pills | 31.49€ 29.99€ | |
| Cialis Black | 80mg | 90 + 6 Pills | 207.88€ 197.98€ | |
| Cialis Generic | 40mg | 20 Pills | 59.47€ 56.64€ | |
| Cialis Black | 80mg | 270 + 10 Pills | 502.88€ 478.93€ | |
| Cialis Professional | 40mg | 90 + 2 Pills | 348.59€ 331.99€ | |
| Cialis Generic | 2.5mg | 10 Pills | 28.51€ 27.15€ | |
| Cialis Super Active | 20mg | 180 + 20 Pills | 521.59€ 496.75€ |
D2005-1177 -
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In accordance with the Rules, paragraph 2(a) and paragraph 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September�27,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�17,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October�18,�2006. The Center appointed Brigitte Joppich as the sole panelist in this matter on October�30,�2006.
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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. The Complainant, Lilly ICOS LLC, a limited liability company organized under the laws of the State of Delaware, U.S.A, is a joint venture between ICOS Corporation and Eli�Lilly and Company. The Complainant first applied for registration of the trademark CIALIS in 1999 and since then has obtained more than 130 registrations for the CIALIS mark covering more than 117 countries. The Complainant began selling pharmaceutical products identified by the CIALIS mark on January�22,�2003, in the European Union, followed soon thereafter by sales in Australia and New Zealand.
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The sales in the United States of America started in November�2003. To date, the Complainant’s sales of CIALIS brand product exceed $1 billion dollars and the CIALIS brand drug has been the subject of extensive media coverage. Eli Lilly and Company is the owner of the domain name
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D2005-0356 -
- Keep track of your response to Cialis and report any concerns to your doctor.
- Lilly’s Cialis may be used in combination with other treatments under medical supervision.
- The safety profile of Lilly Cialis has been well documented in clinical studies.
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Redzone, WIPO Case No.
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It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of descriptive words (cf. D2000-1493 - <4microsoft2000.com>, Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No.�D2005-0694 -
| Country | Legal Status | Prescription Required | Import Restrictions | Penalties for Illegal Purchase |
|---|---|---|---|---|
| USA | Prescription only | Yes | Strict import controls | Fines, prosecution |
| UK | Prescription required | Yes | Controlled import | Legal action |
| Australia | Prescription mandated | Yes | Limited import permitted | Fines, confiscation |
| Canada | Prescription required | Yes | Moderate import controls | Penalties possible |
Wilson, Sr., WIPO Case No.�D2000-1525 -
| Product Name | Active Ingredient | Dosage Forms | Price Range (USD) | Available Countries |
|---|---|---|---|---|
| Cialis Lilly | Tadalafil | Tablets (2.5 mg - 20 mg) | $50 - $200 | USA, UK, Canada, Australia |
| Cialis Daily | Tadalafil | Once daily tablets | $70 - $180 | USA, Germany, Japan |
| Cialis Super Active | Tadalafil | Fast-acting tablets | $60 - $150 | UK, France, India |
| Cialis Softgel | Tadalafil | Softgel capsules | $55 - $190 | Canada, Australia |
The Respondent did not give evidence of any of the circumstances specified in the Policy, paragraph 4(c), or any other circumstances in favor of rights or legitimate interests in the domain name. The domain name is highly unlikely to be derived from either the Respondent’s personal name or the name or the nature of the business operated by him, nor is the Respondent commonly known by the domain name. The Respondent’s use of the domain name is furthermore not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods and services placed on the market by its owner as the Respondent is using the domain name to advertise and sell generic CIALIS product from competitors of the Complainant.
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They have the best price around for this medication. Good site to use for affordable medicine. The site is easy to use and they remind me when it's time to refill my Prescription. Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif The Complainant is Lilly ICOS LLC, of Wilmington, Delaware, United States of America, represented by Baker & Daniels LLP, of United States of America.
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The Respondent is Cybernet Marketing/Antoine Tardif, of Alberta, Canada. The disputed domain name
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a request for registrar verification in connection with the domain name at issue. On September�15,�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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September�26,�2006. 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”), 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”). This usage is neither a bona fide offering of goods and services under the Policy, paragraph 4(c)(i), nor a legitimate non-commercial or fair use under the Policy, paragraph 4(c)(iii), as the Respondent is exploiting the Complainant’s trademarks within the domain name presumably to divert Internet users searching for the products of the Complainant to the Respondent’s website offering generic CIALIS product (cf.
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