WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Deep Soni and Ashok Soni
Case No. D2000-0782
1. The Parties
The Complainant is:
235 East 42nd Street
New York, New York 10017-5755
Hale and Dorr LLP
Nels T. Lippert
Johanna M. Toth
405 Lexington Avenue
New York, New York 10174
The Respondents are:
33-28 East Patel Nagar
Delhi, Delhi 110006
Orients Rugs & More
359 N. Dover Ct.
Lake Mary, Florida 32746
2. The Domain Name and Registrar
The disputed domain name is: <pfizerindia.com>.
The registrar is: Network Solutions, Inc., 505 Huntman Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on July 13, 2000. On July 18, 2000, the Center requested that the registrar Network Solutions, Inc. (NSI) check and report back on the registrant for the domain name <pfizerindia.com>. On July 21, NSI reported to the Center that the registrant was the Respondents:
Deep Soni (registrant) and Ashok Soni (administrative contact).
On July 24, 2000 the Center forwarded a copy of the Complaint to Respondents by express registered mail and by e-mail, and this proceeding officially began. Respondentsí Response was received by the Center on August 13, 2000.
The Administrative Panel submitted a Declaration of Impartiality and Independence on August 15, 2000, and the Center proceeded to appoint the Panel on August 17, 2000. This Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by August 30, 2000.
4. Factual Background
Complainant, Pfizer Inc., is a Delaware (USA) corporation with principal offices in New York City. Complainant also is the principal shareholder of a subsidiary in India called Pfizer Ltd. Complainant has registered its Pfizer trademark in many countries all over the world, including India. Respondents, Deep Soni and Ashok Soni, are two individuals who at an unspecified time in the past registered the domain name <pfizerindia.com>. Respondents say they intend to use the domain name to create a charitable foundation for Jeffrey Pfizer and his family, German benefactors who helped displaced Indians during the partition of India in 1948.
5. The Partiesí Contentions
A. Complainantís Contentions:
- Complainant has registered the "Pfizer" name as a trademark throughout the world and, in addition, owns several U.S. trademark registrations for "Pfizer".
- The "Pfizer" trademark is famous, and is universally recognized and relied upon as identifying Complainant as the sole source of trademarked pharmaceuticals, consumer health care products and animal health products, and as distinguishing Complainant and Complainantís products from other companies and their products.
- Resondents registered the disputed domain name in an attempt to capitalize on the notoriety of Complainantís trademark.
- The disputed domain name, <pfizerindia.com>, which contains the "Pfizer" trademark, is identical to Complainantís use of its "Pfizer" trademark to identify its Indian subsidiary, Pfizer India, and is confusingly similar to Pfizerís own website "<pfizer.com>".
- Respondents have no legitimate use for a web site with the domain name <pfizerindia.com>.
- Respondents are not, and never have been, representatives of Complainant, nor licensed to use the "Pfizer" mark.
- Even if Respondents did offer goods or services under the "Pfizerindia" or "Pfizer" name, such use would constitute trademark infringement.
- Respondents registered the domain name <pfizerindia.com> with the bad faith intent to profit from their infringing registration. Respondents were well aware the name Pfizer was a registered trademark.
- Because Respondents have no rights or legitimate interests in the use of <pfizerindia.com>, it follows that <pfizerindia.com> was registered for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name.
- Respondents have intentionally attempted to attract for financial gain Internet users to Respondentsí website by creating a likelihood of confusion.
- The domain name <pfizerindia.com> should be transferred to Complainant.
B. Respondentsí Contentions:
- Respondents are not yet operating their website with the disputed domain name because they are still working on it.
- Respondents are developing their website in memory of the Pfizer family, who were living in India during the 1948 partition of India, and who helped many displaced persons.
- For the last thirty (30) years Respondents have been running a small school in India in memory of the Pfizer family. Respondents were first going to register "Jefferypfizerindia.com", but the name was too long, and so Respondents registered the disputed domain name <pfizerindia.com>.
- Respondents will not sell any products that compete with Pfizer Inc.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <pfizerindia.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name: and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
Complainant owns a world famous trademark using the name "Pfizer", a trademark with which this Panel is familiar. Complainant has provided copies of registrations in the U.S. going back to 1948 (U. S. Trademark Registration No. 501, 762, Int. Class 5, Complaint Annex 4). Respondentsí disputed domain name <pfizerindia.com>, in its non-generic aspects, is identical to Complainantís famous trademark. This Panel so finds.
Legitimate Rights or Interests
Claimant contends Respondents have no interest in the disputed domain name other than selling it back to Complainant for profit. Respondents state they will construct a website that will function as a kind of a cyberspace memorial for a German family called Pfizer that helped displaced persons during the partition of India in 1948.
Respondents do not provide any evidence to support their version of their motivations for registering the disputed domain name. While it is uncertain whether Respondents wanted, as Complainant alleges, to sell the disputed domain name back to Complainant, this Panel still is highly skeptical regarding Respondentsí unsubstantiated narrative. Why would a charitable foundation seek a registration in the international top level domain for commercial entities? More importantly, even if the Panel accepts as true Respondentsí version of how it came to register the disputed domain name, this Panel still can not agree that this charitable foundation is an acceptable reason for their registering the famous trademark "pfizer" in the top-level commercial domain.
This Panel finds the Respondents have no right or legitimate interest in the disputed domain name.
Registered and Used in Bad Faith
As stated above, this Panel is skeptical of Respondentsí unsubstantiated story about wanting to create a website devoted to German benefactors Jeffrey Pfizer and his family. Such a usage does not correspond with the registration in the top-level commercial domain. This Panel finds, rather, that the only credible motive for Respondentsí registration was to gain the use of a world-famous trademark. The registration in the face of actual and constructive notice is in bad faith. (see the Policy 4 (b) for the Panelís authority to go beyond the enumerated instances of bad faith).
Notably, at one point Respondent stated it first intended to register the domain name"jefferypfizerindia.com" but this was too long. Yet, in a conversation between this Panel and NSI on August 28, 2000, NSI said this name was not too long and could be registered. During this same conversation, the NSI spokesman stated that up to sixty-seven (67) characters may be registered in a domain name.
This Panel does not yet know what active use, if any, Respondents intended to make of the disputed domain name. However, this Panel is of the opinion that, since we have already determined that Respondentsí registration of the disputed domain name was in bad faith and was an infringing use of Complainantís trademark, even Respondentsí passive holding of the domain is bad faith usage.
This Panel finds Respondents have both registered the domain name in bad faith and are using it in bad faith.
Pursuant to ICANN Policy para 4(i) and Rule 15, this Panel orders that the disputed domain name <pfizerindia.com> be transferred to Complainant, Pfizer Inc. This domain name is identical in its nongeneric elements to Complainantís world famous trademark. Also, the Respondents, Deep Soni and Ashok Soni, have no legitimate rights in the domain name and registered and are using it in bad faith.
Dennis A. Foster
Dated: August 29, 2000