Eli Lilly and Company v Edijaison Vieira

WIPO Case No. D2024-5051

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Eli Lilly and Company v. Edijaison Vieira

Case No. D2024-5051

1. The Parties

The Complainant is Eli Lilly and Company, United States of America (“United States”), represented by

Faegre Drinker Biddle & Reath LLP, United States.

The Respondent is Edijaison Vieira, Brazil.

2. The Domain Name and Registrar

The disputed domain name <mounjaronobrasil.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6,
2024. On December 9, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 9, 2024, 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 (Redacted for Privacy, Privacy service provided by
Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email
communication to the Complainant on December 10, 2024, 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 December 10, 2024.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2025.

page 2

The Center appointed Daniel Peña as the sole panelist in this matter on January 10, 2025. 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 recognized pharmaceutical company based in the State of Indiana, United States.

The Complainant owns an injectable pharmaceutical product, prescription-only medicine, trademarked under report announcing revenue of more than USD eight billion during the 2024 fiscal year.
the name of MOUNJARO, for the treatment of type 2 diabetes, approved by the United States Food and
Drug Administration (FDA). The Complainant launched the product in June 2022 and by the end of 2023

MOUNJARO has also been approved by the FDA for distribution in several countries outside United States but not including Brazil.

The Complainant owns multiple trademark registrations for MOUNJARO, across the world, including the following:

- United States trademark for MOUNJARO (word mark), No. 6,809,369, in IC 5, registered on

August 2, 2022, and in force until February 2, 2029.

- Brazilian trademark for MOUNJARO (word mark) No. 919,475,787, registered on November 24, 2020.

The disputed domain name was registered on October 16, 2024.

The Complainant has provided evidence where the disputed domain name redirects to a website
“ for selling “original” and “manipulated” MOUNJARO’s products in Brazil, where

the Respondent is reportedly located.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the Trademark MOUNJARO is distinctive and widely recognized to designate the Complainant’s pharmaceutical product, and that such category has been confirmed by previous panels. See Eli Lilly and Company v. Shoaib Manzoor, XMart Host, Zain Ali and Rauf Bhatti, WIPO Case No. D2023-3674 and Eli Lilly and Company v. Janni Louche, WIPO Case No. D2023-3787.

The Complainant contends that the disputed domain name is confusingly similar to its trademark

MOUNJARO.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
disputed domain name, given that the Respondent is neither using the disputed domain name in connection
with a bona fide offering of goods and services nor making a legitimate noncommercial or fair use of the
disputed domain name; that instead, the Respondent has registered the disputed domain name utilizing a
privacy-shielding service to redirect Internet traffic to a website that sells gray market or potentially
counterfeit versions of the Complainant’s MOUNJARO brand product in the Brazil, where the product has not
been legally approved for distribution, and therefore without a valid prescription; that the Respondent’s use

page 3

does not comply with the Oki Data Test criteria (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case
No. D2001-0903).

The Complainant contends that the disputed domain name was registered and is being used in bad faith, given that the Respondent is purporting to sell the Complainant’s own MOUNJARO’s products without any kind of authorization, in a jurisdiction where the Complainant’s product has not legally been approved for distribution and prescriptions.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must satisfy each of the three following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

No Response or any kind of communication has been submitted by the Respondent, despite the fair opportunity given by the Center to present its case in accordance with paragraph 2(a) of the Rules. Therefore, this Panel shall decide this dispute based on paragraph 15(a) of the Rules and will analyze the evidence submitted by the Complainant on the “balance of probabilities” or “preponderance of the evidence” standard. See, paragraphs 14 and 15(a) of the Rules, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical
or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant
has provided evidence of its rights in the trademarks MOUNJARO on the basis of its multiple trademark
registrations including its United States trademark registration and Brazilian trademark registration.
A trademark registration prima facie satisfies that the rights in the trademark belong to the Complainant
(see WIPO Overview 3.0, section 1.2.1). It has also been established by prior UDRP panels that
incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain
name is confusingly similar to a trademark. Such findings were confirmed, for example, within section 1.7 of

the WIPO Overview 3.0.

The Panel finds the Complainant’s trademark is recognizable within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7. The disputed domain name consists of the Complainant’s MOUNJARO
mark along with the geographic term “brasil”, which is the country name of Brazil in Portuguese as well as
the term “no” with the meaning of “in” also in Portuguese language. In regard to the disputed domain name,
the addition of the terms “brasil” and “no” to the Complainant’s MOUNJARO mark does not prevent the
finding of confusing similarity either. See WIPO Overview 3.0, section 1.8.

The Panel further notes that the generic Top-Level Domain (“gTLD”) “.com” is required only for technical reasons and is generally ignored for the purposes of comparison of the Complainant’s trademarks to the disputed domain name (WIPO Overview 3.0, section 1.11.1).

page 4

In light of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the

Complainant. The Panel also finds that there is no indication that the Respondent is commonly known by the disputed domain name because the Respondent’s name is “Edijaison Vieira” which has no apparent connection with the MOUNJARO trademark.

The Panel finds that the Respondent has no trademark rights related to the disputed domain name. The Complainant has not licensed, authorized, or permitted the Respondent to register the disputed domain name incorporating the Complainant’s marks. The Panel also takes into account that the Respondent is not sponsored by or legitimately affiliated with the Complainant in any way. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegal or fraudulent activity, here claimed as sale of gray
market or illegal pharmaceuticals, can never confer rights or legitimate interests on a respondent.
WIPO Overview 3.0, section 2.13.1. Even if the products sold by the Respondent were genuine (which is
highly unlikely given the website promotes the sale of both “original” MOUNJARO and “manipulated”
MOUNJARO), such use of the disputed domain name does not meet the requirements established by the
“Oki Data Test”, because the website to which the disputed domain name redirects do not disclose the lack
of relationship between the Respondent and the Complainant. WIPO Overview 3.0, section 2.8.

Moreover, the composition of the disputed domain name carries a risk of implied affiliation with the Complainant, which also prevents a finding of rights or legitimate interests. WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy
establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall
be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) of the Policy
provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet
users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website
or location or of a product or service on [the respondent’s] website or location” is evidence of registration and

use in bad faith.

Based on the evidence presented, the disputed domain name was registered and is being used in bad faith. use of the Complainant’s trademarks cannot be a coincidence.

The Complainant has several MOUNJARO trademark registrations predating the disputed domain name. and that “there can be no doubt that the Respondent registered the disputed [D]omain [N]ame with knowledge of the Complainant’s rights”, particularly considering that the Respondent is purporting to sell the Complainant’s goods (albeit in jurisdictions where they are not legally approved for distribution) under the

page 5

descriptive terms. This, in itself, is indicative of bad faith registration and use. See Eli Lilly and Company v. Shoaib Manzoor, XMart Host, Zain Ali, and Rauf Bhatti, WIPO Case No. D2023-3674. Noting that the	disputed domain name that comprise the Complainant’s mark accompanied only by geographical and disputed domain name redirects to a website purportedly selling the Complainant’s MOUNJARO products, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s well-known trademarks. In the circumstances of this case, this is evidence of registration in bad faith.
The disputed domain name redirects to a website that appeared to sell pharmaceutical products under the trademark MOUNJARO of both “original” and “manipulated” versions without disclosing the Respondent’s lack of a relationship with the Complainant. The impression given by this website would cause Internet
users to believe that the Respondent is somehow associated with the Complainant when, in fact, it is not. The Panel holds that by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites in the sense of Policy, paragraph 4(b)(iv). Moreover, panels have held that the use of a domain name for illegal activities, such as claimed in the present case – selling potentially counterfeit products, selling prescription drugs without requiring a prescription and/or selling to countries where the pharmaceutical product does not have marketing authorization – constitutes use in bad faith. WIPO Overview 3.0, section 3.4.
The Panel finds that the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. Thus, the third element of the Policy has been established.
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 <mounjaronobrasil.com> be transferred to the Complainant.
/Daniel Peña/ Daniel Peña Sole Panelist Date: January 22, 2025