Pfizer Inc. v. Websites

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Websites

Case No. D2004-0730

1. The Parties

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

The Respondent is Websites, United States of America.

2. The Domain Name and Registrar

The disputed domain name <blue-viagra.net> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2004. On September 10, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 10, 2004, eNom 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. 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 the Respondent of the Complaint, and the proceedings commenced on September 14, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 4, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2004.

The Center appointed William R. Towns as the sole

panelist in this matter on October 8, 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

The Complainant develops and markets sildenafil citrate, an oral medication for the treatment of erectile dysfunction, as VIAGRA. The Complainant has used VIAGRA in connection with this product since April 6, 1998, and obtained its first United States registration for the VIAGRA mark on June 2, 1998. Since that time, the Complainant and its wholly owned subsidiaries have obtained numerous trademark registrations for VIAGRA around the world. The Complainant also owns and operates a website at “www.viagra.com”.

The Respondent registered the disputed domain name

<blue-viagra.net> on January 24, 2004. The domain name resolves to a website

bearing the title “Generic Viagra”, where generic sildenafil citrate

(“GSC-100”) is offered for sale at substantially lower prices than

“Viagra ®” is claimed to be available for. On the “About Us”

page of the website, “Generic Viagra” is described as “a pharmaceutical

company offering inexpensive and effective solutions to common health problems”.

The website clearly displays an awareness that VIAGRA is a registered trademark

used by the Complainant to distinguish its product from those of others.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name <blue-viagra.net> is confusingly similar to VIAGRA, a registered trademark that the Complainant urges is not only distinctive but famous. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent was aware of the VIAGRA mark prior to the registration of the domain name, and that the Respondent’s registration and use of the domain name in connection with the offering for sale of a competing product constitutes bad faith.

The Complainant also argues that bad faith is shown by the Respondent’s use of false contact information in connection with the registration of the disputed domain name, and by the Respondent’s use of a domain name intended by the Respondent to attract Internet users to its commercial website by creating confusion as to the Complainant’s affiliation or endorsement of the Respondent’s website. For all of these reasons, the Complainant seeks to have the disputed domain name transferred.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning

allegations of abusive domain name registration and use. Milwaukee Electric

Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,

WIPO Case No. D2002-0774. Accordingly,

the jurisdiction of this Panel is limited to providing a remedy in cases of

“the abusive registration of domain names.” Weber-Stephen Products

Co. v. Armitage Hardware, WIPO Case No.

D2000-0187. See Report of the WIPO Internet Domain Name Process pages 169

& 170. Paragraph 15(a) of the Rules provides that the Panel shall decide

a complaint on the basis of statements and documents submitted and in accordance

with the Policy, the Rules and any other rules or principles of law that the

Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a Respondent may

establish rights or legitimate interests in the domain name. Although the Complainant

bears the ultimate burden of establishing all three elements of Paragraph 4(a),

a number of Panels have concluded that Paragraph 4(c) shifts the burden to the

Respondent to come forward with evidence of a right or legitimate interest in

the domain name, once the Complainant has made a prima facie showing.

See, e.g., Document Technologies, Inc. v. International Electronic Communications

Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel concludes that the Respondent’s domain

name is confusingly similar to Complainant’s VIAGRA mark for purposes

of Paragraph 4(a)(i) of the Policy. The Complainant beyond question has established

rights in the VIAGRA mark through its registration and use in the United States

and elsewhere. At a minimum, that mark is entitled to a presumption of validity

by virtue of its registration with the United States Patent and Trademark Office.

See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises,

Inc., WIPO Case No. D2000-0047.

A domain name that incorporates a complainant’s

mark in its entirety may be confusingly similar to that mark despite the addition

of other words. It is well settled that the addition of a generic term to a

trademark does not necessarily eliminate a likelihood of confusion. Indeed,

there are numerous examples of decisions holding a domain name to be confusingly

similar to a registered trademark when it consists of the mark plus one or more

generic terms. Minnesota Mining and Manufacturing Company v. Mark Overbey,

WIPO Case No. D2001-0727. See, e.g., Hang

Seng Bank Limited v. Websen Inc., WIPO

Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>);

Oki Data Americas, Inc. v. ASD, Inc., WIPO

Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>).

See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO

Case No. D2000-0662 (first element of Policy is satisfied where domain name

wholly incorporates complainant’s mark).

Accordingly, the Panel finds that the domain name registered by the Respondent is confusingly similar to the Complainant’s VIAGRA mark.

C. Rights or Legitimate Interests

The record reflects that the Complainant has not licensed or otherwise authorized

the Respondent to use the VIAGRA mark in connection with the conduct of the

Respondent’s business or as part of Respondent’s domain name. The

record further reflects the Complainant’s registration and use of its

VIAGRA mark long before the Respondent’s registration of the <blue-viagra.net>

domain name, and it is evident from the Respondent’s own website that

Respondent is aware that VIAGRA is a registered trademark owned by the Complainant.

There is no indication that the Respondent has been commonly known by the disputed

domain name, or that the Respondent is attempting to make any legitimate noncommercial

use of the domain name. Unless rebutted by other evidence, this suffices to

make a prima facie showing for purposes of Paragraph 4(a)(ii) that the

Respondent lacks rights or legitimate interests in the disputed domain name.

See Compagnie de Saint Gobain v. Com-Union Corp., WIPO

Case No. D2000-0020.

Once a complainant makes a prima facie showing that a respondent lacks

rights to the domain name at issue, the respondent must come forward with proof

that it has some legitimate interest in the domain name to rebut this presumption.

Document Technologies, Inc. v. International Electronic Communications Inc.,

WIPO Case No. D2000-0270. Pursuant to

Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate

interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

While the Respondent has not provided a reply to the Complainant’s contentions,

the ultimate burden of proof on the legitimacy issue remains with the Complainant.

Document Technologies, Inc. v. International Electronic Communications Inc.,

WIPO Case No. D2000-0270. Accordingly,

the Panel considers it appropriate to examine the record in its entirety to

determine whether any evidence exists supporting a claim by Respondent of rights

or legitimate interests in the disputed domain name.

Regarding Paragraph 4(c)(ii), the Panel finds no indication in the record that

the Respondent has been commonly known by the disputed domain name, although

there is some indication that the Respondent may be known by the name “Generic

Viagra”. Nevertheless, the Panel reads Paragraph 4(c)(ii) to require that

the Respondent had rights prior to and not merely following from use of the

domain name. Paule Ka v. Paula Korenek, WIPO

Case No. D2003-0453. This is particularly relevant, where as here, the Respondent,

marketing a generic equivalent of the Complainant’s product, has adopted

a domain name so obviously connected with the Complainant and its product that

the very use of the domain name suggests “opportunistic bad faith”.

See Research In Motion Limited v. Dustin Picov, WIPO

Case No. D2001-0492; Chanel, Inc. v. Cologne Zone, WIPO

Case No. D2000-1809 (finding no legitimate interest in use of CHANEL as

part of domain name leading to website selling various types of perfume). See

also Paule Ka v. Paula Korenek, WIPO

Case No. D2003-0453; Palm, Inc. v. South China House of Technology Consultants

Ltd., WIPO Case No. D2000-1492 (even

a respondent commonly known by a name corresponding to the domain name should

not be able to take advantage of this if the name was adopted with mala fide

intent.).

For purposes of Paragraph 4(c)(i), the Panel considers it likely that the Respondent

was using the disputed domain name in connection with the offering for sale

of generic sildenafil citrate on its website before receiving notice of this

dispute. Nevertheless, the critical inquiry under Paragraph 4(c)(i) is whether

the Respondent was using the domain name in connection with a bona fide

offering of goods or services. In determining whether an offering of goods or

services is bona fide under Paragraph 4(c)(i), the dispositive question

is whether the use of the disputed domain name in connection with the offering

otherwise constitutes bad faith registration or use of the domain name under

Paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. UltSearch,

Inc, WIPO Case No. D2000-1840 (for

offering under Paragraph 4(c)(i) to be considered bona fide, domain name

use must be in good faith under Paragraph 4(a)(iii)).

The Panel concludes that the Respondent is not using

the disputed domain name in connection with a bona fide offering of goods

or services. It is a clear inference from the record that Respondent knew at

the time of the registration of the disputed domain name that the Complainant

had established rights in the VIAGRA mark. The Complainant has made a substantial

showing that VIAGRA is a famous mark in the United States, but in any event

the mark is clearly distinctive. The Respondent simply has no legitimate interest

in using the VIAGRA mark as part of a domain name that directs Internet users

to a website where a competing generic product is offered for sale. See Chanel,

Inc. v. Cologne Zone, WIPO Case No. D2000-1809

(finding no legitimate interest in use of CHANEL as part of domain name leading

to website selling various types of perfume).

As noted in Research In Motion Limited v. Dustin

Picov, WIPO Case No. D2001-0492, when

a domain name is so obviously connected with a Complainant and its products,

its very use by a registrant with no connection to the Complainant suggests

“opportunistic bad faith”. The Panel cannot ascribe to the Respondent’s

registration and use of the disputed domain name in connection with an offering

of a generic equivalent of VIAGRA anything other than the intent to disrupt

the business of a competitor, which clearly constitutes bad faith under the

Policy. See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong,

WIPO Case No. D2003-0408; Ansell Healthcare

Products, Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO

Case No. D2001-0110.

Accordingly, the Panel finds that the Respondent’s bad faith registration

and use of the disputed domain name precludes any bona fide offering

of goods or services under Paragraph 4(c)(iii) of the Policy. Philip Morris

Incorporated v. Alex Tsypkin, WIPO Case

No. D2002-0946; Amphenol Corporation v. Applied Interconnect, Inc., WIPO

Case No. D2001-0296. The Panel also finds that the Respondent has not been

commonly known by the domain name for purposes of Paragraph 4(c)(ii), and that

the Respondent has not made any legitimate noncommercial or fair use of the

domain name. Accordingly, the Panel concludes that Respondent has no rights

or legitimate interest in the disputed domain name for purposes of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.

As noted above, there can be no dispute that the Respondent

had knowledge of the VIAGRA mark at the time of registration of the disputed

domain name, and no dispute that the Respondent is using the domain name to

attract Internet users to a commercial website where a generic equivalent of

the VIAGRA is offered for sale. The Panel has found above that the Respondent’s

primary purpose in registering and using the disputed domain name was to attract,

for commercial gain, Internet users to this website, thereby disrupting the

business of the Complainant. This constitutes bad faith registration and use

of the disputed domain name for purposes of Paragraph 4(b)(iii) and Paragraph

4(a)(iii) of the Policy. Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation

v. Liu Xingdong, WIPO Case No. D2003-0408;

Ansell Healthcare Products, Inc. v. Australian Therapeutics Supplies Pty,

Ltd., WIPO Case No. D2001-0110.1

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <blue-viagra.net>, be transferred to the Complainant.

William R. Towns

Sole Panelist

Date: October 17, 2004

1 The Complainant argues

that bad faith registration and use of the disputed domain name is shown under

Paragraph 4(b)(iv) by the Respondent’s use of the domain name to create

a likelihood of confusion with the Complainant’ mark as to the source,

sponsorship, affiliation, or endorsement of the Respondent’s website.

Because the Panel finds clear and compelling evidence in the record of bad faith

registration and use under Paragraph 4(b)(iii), the Panel considers it unnecessary

to address this issue. The Panel also notes that the Respondent by all appearances

provided false contact information when registering the disputed domain name,

which some Panels also have considered to be evidence of bad faith. See Telstra

Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003.

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