Pfizer Inc. v. Juan Gonzalez

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Pfizer Inc v. Juan Gonzales

Case No. D2004-0589

1. The Parties

Complainant is Pfizer Inc, New York, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.

Respondent is Juan Gonzales, Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <generic-viagra-online.com> (the “Domain

Name”) is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2004. On August 3, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Name. On August 3, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2004. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 2, 2004.

The Center appointed Anna Carabelli as Sole Panelist in this matter on September 8, 2004, indicating that, absent exceptional circumstances, the decision would be due by September 22, 2004.

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 is a multinational pharmaceutical corporation engaged, amongst other, in the development, manufacture and marketing of prescription medicines for humans and animals. Complainant’s products include sildenafil citrate, an oral medication for the treatment of erectile dysfunction, marketed under the trademark “VIAGRA” .

Complainant has provided evidence of trademark registrations for the words “VIAGRA” in the United States (Registration No. 2,162,584 dated June 2, 1998 - see Annex 3) and in many other countries, including Panama, owned by Complainant or by its wholly owned subsidiaries.

According to the US certificate of registration, the first use of the trademark in commerce was April 6, 1998.

The VIAGRA medication was approved by the United States Food and Drug Administration (FDA) in March 1998.

In June 1997, Complainant registered the domain name <viagra.com> and maintains an active website at the URL “www.viagra.com”.

Respondent registered the Domain Name on July 21, 2003.

As shown by the printout of the relevant pages of the website to which the Domain Name resolves, headed “Generic Viagra” (Annex 6), Respondent advertises and sells, together with Complainant’s product “Pfizer Viagra”, various other competing products having “the same active ingredient as brand name Viagra: 100% Sildenafil Citrate”.

Respondent’s website contains links to an Online

Pharmacy, “Generic Cialis Pharmacy”, which pays up to 25% commission

on all sales of the Viagra competing products “Generic Cialis” and

“Generic Viagra” when the purchaser accesses the online pharmacy

by clicking one of the buttons, banners or text links added on the website of

an affiliate .

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the VIAGRA medication has attracted enormous media attention even prior to FDA approval which was also highly publicized and subject to public scrutiny and commentary;

- by virtue of this extensive publicity and post-approval advertising and promotion, the VIAGRA trademark has become famous worldwide as designating Complainant’s brand of oral therapy for erectile dysfunction and is to be considered as an extremely valuable commercial asset;

- the VIAGRA trademark is a coined and fanciful term having no denotative meaning;

- the Domain Name wholly incorporates Complainant’s trademark with the addition of common terms “generic” and “online”;

- the Domain Name is confusingly similar to Complainant’s trademark since a common term preceding or following a trademark does not create a new or different mark in which Respondent has rights;

- Respondent has no rights or legitimate interests in the Domain Name;

- in particular, Respondent is not and has never been a representative of Complainant or licensed to use the VIAGRA trademark; furthermore Respondent is not commonly known by the Domain Name;

- Respondent’s use of the Domain Name to advertise and sell an alleged generic version of VIAGRA and the fact that his website provides a link to an online pharmacy supplier, “Generic Cialis Pharmacy”, which grants commissions up to 25% on all products and sales carried out through their affiliates, does not constitute a use in connection with a bona fide offering of goods and services;

- Respondent registered and has been using the Domain Name in bad faith;

- Respondent clearly had knowledge of Complainant’s famous trademark prior to registration of the Domain Name;

- By taking Complainant’s trademark as his domain name, Respondent is attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s trademark as to source, sponsorship, affiliation or endorsement.

In support of its contentions Complainant refers to a number of factors and to previous Panel decisions.

Consequently, Complainant requests the transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by the respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A: Identical or Confusingly Similar

Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.

In the Panel’s view it is beyond dispute that

Complainant has trademark rights in the “VIAGRA” name which is an

invented word with a high degree of inherent distinctiveness and is well known

in respect of a drug addressing erectile dysfunction (Pfizer Inc v. The Magic

Islands, WIPO Case No. D2003-0870;

Pfizer Inc. v. Martin Marketing, WIPO

Case No. D2003-0793).

The Domain Name entirely incorporates Complainant’s trademark “VIAGRA” with the addition of the descriptive and generic term “generic”.

It is an established principle that the mere addition of generic terms and/or

numbers does not create a different trademark in which the respondent has rights

and cannot be considered sufficient to avoid confusion between the domain name

and the complainant’s trademark (GA Modefine SA v. Riccardo Bin Kara-Mat,

WIPO Case No. D2002-0195; Parfums Christian

Dior v. 1 Netpower, Inc., WIPO Case No.

D2000-0022; Nintendo of America, Inc. v. Gray West International,

WIPO Case No. D2000-1219; Kabushiki

Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics

Corp, WIPO Case No. D2000-0464).

Through the suffix “online”, which indicates

the presence on the Internet, the likelihood of confusion appears rather aggravated

than diminished. Indeed, as stated by the Panel in Exxon Mobil Corporation

v. Joseph Fisher, WIPO Case No. D2000-1412,

the “online” term “is the e-commerce equivalent of shop or

store” and misleads Internet users into believing that at the URL “www.generic-viagra-online.com”

they can access Complainant’s website containing information and services

associated to the trademark “VIAGRA” (Calvin Klein Trademark

Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy Development

USA, WIPO Case No. D2002-0336; Barclays

Bank PLC v. Mr. Mohammed Hassan, WIPO

Case No. D2001-0253; Revlon Consumer Products Corporation v. Domain Manager,

PageUp Communications, WIPO Case No. D2003-0602).

In the light of the above and of the fact that the addition of the gTLD.com has no legal significance when comparing the Domain Name and Complainant’s trademark, the Panel finds that this element has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

Complainant has provided evidence of its rights in the trademark for the term “VIAGRA” and that the Domain Name was registered by Respondent on or about July 21, 2003. Based on Complainant’s submissions, the Panel considers that at that time Complainant had acquired a considerable reputation throughout the world for the “VIAGRA” mark in respect of a drug addressing erectile dysfunction.

Complainant also contends that Respondent is not and never has been a representative of Complainant or licensed to use the VIAGRA trademark and that is not commonly known by the Domain Name. Complainant further contends that Respondent’s use of the Domain Name does not constitute a use in connection with a bona fide offering of goods and services, since Respondent’s website (i) advertises and sells an alleged generic version of VIAGRA; and (ii) is connected to an online pharmacy supplier selling various competing products of the genuine Viagra sildenafil citrate which grants Respondent up to 25% commission on each sale.

In line with previous UDRP decisions (Chanel Inc. v. Cologne Zone, WIPO

Case No. D2000-1809; National Collegiate Athletic Association and March

Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center

Entertainment, WIPO Case No. D2000-0700;

Pfizer Inc. v. The Magic Islands, WIPO

Case No. D2003-0870; Nikon, Inc. and Nikon Corporation v. Technilab Inc.,

WIPO Case No. D2000-1774) the Panel

considers that no good faith can be assumed in Respondent’s conduct, in

view of the fact that the Domain Name is confusingly similar with Complainant’s

trademark and is used in connection with the promotion and sale of competing

products.

In the light of the above, Complainant has established prima facie evidence

that none of the three circumstances establishing legitimate interests or rights

mentioned above applies. As stressed by many UDRP decisions, in such a case

the burden of proof shifts to the respondent to rebut the evidence (see among

others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO

Case No. D2002-0806; International Hospitality Management – IHM

S.p.A. v. Enrico Callegari Ecostudio, WIPO

Case No. D2002-0683).

Because Respondent failed to submit an answer to the Complaint, and given that the allegations of the Complaint prima facie do not raise substantial doubts, the Panelist accepts as true all allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel is convinced that Respondent registered and has been using the Domain Name in bad faith, to intentionally attract for commercial gain Internet users to his website by trading on the goodwill associated with the VIAGRA brand and mark and creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and of the products and services offered on the site (paragraph 4 c (iv) of the Policy).

As mentioned in paragraph 6(A) above, Complainant’s trademark “VIAGRA” has acquired worldwide reputation, identifying the sildenafil citrate pharmaceutical product developed, manufactured and marketed by Complainant. It is therefore inconceivable that Respondent registered the Domain Name unaware of Complainant’s rights in its VIAGRA mark and with an intent to use it in good faith. Respondent appears rather to have intentionally registered the Domain Name, entirely incorporating Complainant’s mark, to take advantage of the goodwill associated with the VIAGRA trademark.

Furthermore, the printout of the relevant pages of Respondent’s website “generic-viagra-online.com” shows that Respondent has been using the Domain Name to promote and sell, for commercial gain, sildenafil citrate pharmaceutical products as “generic Viagra”, which directly compete with Complainant’s genuine Viagra.

This is further evidence of Respondent’s bad faith registration and use

of the Domain Name under paragraph 4 (c) (iii) of the Policy (Kabushiki Kaisha

Toshiba d/b/a Toshiba Corp. v. Liu Xingdong, WIPO

Case No. D2003-0408; Ansell Healthcare Products Inc. v. Australian Therapeutics

Supplies Pty, Ltd., WIPO Case No. D2001-0110;

The Body Shop International plc v. A-Team/ Lasse Nygaard, WIPO

Case No. DAS2003-0001; Bartercard Ltd & Bartercard International

Pty Ltd . v. Ashton-Hall Computer Services., WIPO

Case No. D2000-0177).

In addition, the fact that Respondent’s website is affiliated with an

online pharmacy, which promises up to 25% commission for each sale made with

any Internet user captured through the affiliates’ websites, shows Respondent’s

intent, for commercial gain, to re-direct Internet users, especially potential

customers of Complainant, from the latter’s website to the web page of

the “Generic Cialis Pharmacy”, which directly competes with Complainant.

As the Panel found in NetWizards, Inc. v. Spectrum Enterprises,

WIPO Case No. D2000-1768 “the registration

and use of a domain name to re-direct Internet users to websites of competing

organizations constituted bad faith use and registration” (see also Zwack

Unicum Rt. v. Erica J. Duna, WIPO

Case No. D2000-0037, E.R. Squibb & Sons LLC. v. Roy Duke,

WIPO Case No. D2003-0806).

In the light of the foregoing, Respondent’s conduct amounts to unfair

competition because current and potential Viagra users may choose

a competitor’s product based on the absence of Complainant’s product

in the website to which they are re-directed.

7. Decision

For all the foregoing reasons, the Panel orders, in

accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, that the

Domain Name <generic-viagra-online.com> be transferred to Complainant.

Anna Carabelli

Sole Panelist

Dated: September 22, 2004

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