Pfizer, Inc. v. Vartan Seferian

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Pfizer Inc.

v. Vartan Seferian

Case No.

D2001-0316

1.

Parties

The Complainant in this

administrative proceeding is Pfizer Inc., a corporation organized and existing

under the laws of the State of Delaware, with its principal place of business

in New York, New York, U.S.A.

The Respondent is Vartan

Seferian, an individual who resides at 4912 Dempster, Skokie, Illinois 60077,

U.S.A.

2. Domain Name and Registrar

The domain name in dispute

is as follows <viagratea.com>. The domain name was registered by Respondent

with Network Solutions, Inc. (NSI) on March 24, 1999.

3. Procedural Background

On March 2, 2001, the WIPO

Arbitration and Mediation Center received from Complainant via e-mail a complaint

for decision in accordance with the Uniform Domain Name Dispute Resolution Policy,

adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on

August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute

Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the

WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental

Rules).

In an e-mail dated March

13, 2001, WIPO advised Complainant's counsel that the complaint was deficient

in that Complainant did not expressly consent to submit, with respect to any

challenge by Respondent to a decision to transfer or cancel the domain name

in dispute, to jurisdiction in the location of the domain-holder's address.

The complaint, thereafter, was amended accordingly.

The complaint, as amended,

was filed in compliance with the requirements of the Rules and the Supplemental

Rules, payment was properly made, the administrative panel was properly constituted,

and the panelist submitted the required Statement of Acceptance and Declaration

of Impartiality and Independence.

The instant Administrative

Proceeding was commenced on March 20, 2001.

Respondent failed to file

a response and a Notification of Respondent Default, dated April 10, 2001, was

sent by WIPO to Respondent.

The decision of the Panel

was due to WIPO on or before May 8, 2001.

4. Factual Background

Complainant Pfizer Inc.

(Pfizer) is a company with global operations that discovers, develops, manufactures

and markets leading prescription medicines for humans and animals. Pfizer has

expended millions of dollars and extensive resources on research, development

and marketing of VIAGRA brand sildenafil citrate, the first approved oral therapy

for male impotence. The availability of Pfizer's VIAGRA brand sildenafil citrate

represents a major medical breakthrough and the VIAGRA product has been the

subject of extensive public scrutiny.

Pfizer's VIAGRA brand oral

therapy was approved by the U.S. Food and Drug Administration on March 27, 1998,

and the mark has been used on or in connection with the sildenafil citrate product

in the U.S. since April 6, 1998. Pfizer owns U.S. Trademark Registration No.

2,162,548 for the mark VIAGRA. See Complaint, Annex 3. The VIAGRA mark is also

registered by Pfizer, or by a wholly owned subsidiary, around the world. See

Complaint, Annex 4.

As noted above, Respondent

registered the domain name in dispute on March 24, 1999. Respondent offers to

sell an herbal tea product on the <viagratea.com> web site.

5. Parties' Contentions

Complainant contends that

the domain name <viagratea.com> is identical or confusingly similar to

the mark VIAGRA, in which Pfizer has rights, in that the disputed domain name

wholly incorporates Pfizer's registered VIAGRA mark.

Complainant further argues

that Respondent has no rights or legitimate interests in <viagratea.com>.

In support of this argument, Complainant notes that:

1. It is inconceivable

that Respondent did not have knowledge of the VIAGRA mark prior to registration

of the domain name.

2. Respondent is not

and never has been a representative of Complainant or licensed to use the VIAGRA

mark.

3. While Respondent

allegedly offers to sell an herbal tea product on the <viagratea.com>

web site, Respondent does not fill orders for the product.

4. Even if Respondent

did sell goods or services under the "viagratea" name, such use, at least in

the U.S., would constitute trademark infringement and dilution and, thus, Respondent

cannot be found to be making a legitimate noncommercial or fair use of the domain

name without intent for commercial gain to misleadingly divert Pfizer's customers

to its web site and to create an impression that its products are associated

with or sponsored by Complainant.

Complainant further argues

that the domain name should be considered as having been registered and used

in "bad faith" because:

1. While Respondent

was clearly aware of the VIAGRA mark, it wholly incorporated the mark as the

predominant and recognizable portion of the domain name.

2. Respondent has no

rights or legitimate interests in the use of <viagratea.com> and no product

by that name can be or is actually sold on the web site. Thus, it follows that

<viagratea.com> was registered for the illegitimate purpose of selling,

renting, or otherwise transferring the domain name registration to Pfizer or

to a competitor of Pfizer for valuable consideration in excess of the domain

name registrant's out-of-pocket costs directly related to the domain name.

3. Respondent has no

rights or legitimate interest in the use of <viagratea.com>. Thus, it

can be concluded that <vigratea.com> was registered to facilitate dilution,

cybersquatting or infringement of Pfizer's VIAGRA mark throughout the U.S. and

the world.

4. By using the domain

name <viagratea.com>, Respondent has intentionally attempted to attract,

for financial gain, Internet users to Respondent's web site by creating a likelihood

of confusion.

5. As a direct consequence

of Respondent's actions, the public will be misled as to the origin, sponsorship,

or association of the products offered or sold, if any, on the <viagratea.com>

web site and, as no product is actually sold on Respondent's web site, consumers

will be disappointed when genuine Pfizer products are not received.

6 . Discussion and

Findings

The Panel has carefully

reviewed the evidence presented and determines that Complainant clearly has

met all the requirements set forth in para. 4.a. of the Policy.

First, there is no question

that the domain name in dispute is identical or confusingly similar to Complainant's

VIAGRA mark. The inclusion of the generic term "tea" and of the top-level domain

name .com in Respondent's domain name is without legal significance.

It is also clear that Complainant,

through its use and registration of its VIAGRA mark throughout the world, has

rights in the mark.

Further, the Panel determines

that Respondent has no rights or legitimate interests with respect to the domain

name, within the meaning of para. 4.c. of the Policy. The evidence establishes

that while Respondent offers to sell an herbal tea product on the <viagratea.com>

web site, no product is actually sold. Under such circumstances, the Panel concludes

that Respondent is not engaged in a "bona fide" offering of goods or services,

within the meaning of para. 4.c. (i) of the Policy. There also is no evidence

that Respondent is commonly known by the domain name or that any use is noncommercial

or "fair."

Finally, the Panel

finds evidence of the requisite "bad faith" registration and use of the domain

name. Given the widespread, virtually unprecedented, publicity that accompanied

the approval of the VIAGRA brand product, it is inconceivable that Respondent

was not aware of the mark at the time he registered the domain name in dispute.

The Panel further concludes that there is no question that Respondent, in registering

and "using" the domain name <viagratea.com>, intentionally and willfully

intended to capitalize upon Complainant's trademark rights. Moreover, while

Respondent's web site is technically "active" and goods are offered for sale

at such site, the fact that such goods are not actually sold renders applicable

a long line of panel decisions (see, e.g., Telstra Corp. Ltd. v. Nuclear

Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)) to the effect

that the "passive" holding of a domain name is evidence of "bad faith" registration

and use.

7. Decision

In view of the above, the

Panel grants Complainant's request for transfer to it of the domain name <viagratea.com>.

Jeffrey

M. Samuels

Sole Panelist

Dated: May

7, 2001

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