WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. United Pharmacy Ltd.

Case No. D2001-0446

 

1. The Parties

Complainant is Pfizer Inc., ("Complainant" or "Pfizer"), a corporation organized and existing under the laws of the State of Delaware, USA, with its principal place of business located at 235 East 42nd Street., New York, New York 10017 USA.

Respondent is United Pharmacy Limited, ("Respondent" or "United"), located at 83 Texaco Road, Mechanicsburg, Pennsylvania 17055 USA and at Cedar House, 41 Cedar Avenue, Hamilton, HM12, Bermuda.

 

2. The Domain Names and Registrar

The domain names at issue are <lipitorpharmacy.com> and <zoloftpharmacy.com> (the "Domain Names"). The registrar is Register.com, Inc., 575 Eighth Avenue, 11th Floor, New York, New York 10019 USA.

 

3. Procedural History

On March 27, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On March 29, 2001, the Center received a hardcopy of the Complaint. On April 2, 2001, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On April 12, 2001, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

On April 18, 2001, the Center received a faxed message from Respondentís representative. On April 20, 2001, the Center replied to the faxed message.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On April 23, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On April 25, 2001, the Respondent again communicated with the Center in hardcopy, which communication did not constitute a Response. On May 16, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On May 22, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

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, including many of the worldís best-known consumer products. In particular, Pfizer has expended millions of dollars and extensive resources on the research, development and marketing of human pharmaceuticals such as atorvastatin calcium ("LIPITOR") and sertraline HCL ("ZOLOFT").

LIPITOR®

Pfizerís LIPITOR brand therapy for cholesterol-lowering was approved by the United States Food and Drug Administration (the "FDA") on December 17, 1996, and the mark has been used on or in connection with the LIPITOR atorvastatin calcium product in the U.S. since January 28, 1997. Pfizerís LIPITOR brand atorvastatin calcium is the most-prescribed cholesterol-lowering medicine in the United States and one of the worldís largest-selling pharmaceuticals. With sales exceeding $4 billion in 1999, LIPITOR brand atorvastatin calcium captured 41% of the U.S. market share. Pfizer Ireland Pharmaceuticals, a wholly owned subsidiary of Pfizer, is the record owner of United States Trademark Registration No. 2,074,561 for the trademark LIPITOR. The LIPITOR trademark registration was issued on June 24, 1997, on the Principal Register maintained by the United States Patent and Trademark Office to Warner-Lambert Company, which subsequently assigned the mark and registration thereof to Warner-Lambert Export Limited, which became Pfizer Ireland Pharmaceuticals by change of name. This federal registration is valid, unrevoked and uncancelled. The LIPITOR trademark is also registered around the world.

Atorvastatin calcium is marketed in the United States exclusively under Pfizerís registered trademark LIPITOR and is available in the United States solely and exclusively from Pfizer. By virtue of extensive publicity, and Pfizerís own post-approval advertising and promotion, Pfizerís LIPITOR trademark has become well-known throughout the world, and especially in the United States, as designating Pfizerís atorvastatin calcium for treatment of cardiovascular disease.

Pfizerís LIPITOR trademark is a coined and fanciful term having no denotative meaning. The LIPITOR trademark is universally recognized and relied upon as identifying Pfizer as the sole source of the drug, and as distinguishing Pfizerís product from the goods and services of others. As a result, the LIPITOR trademark has acquired substantial goodwill and is an extremely valuable commercial asset.

ZOLOFT®

Pfizerís ZOLOFT brand therapy for central nervous system disorders was approved by the United States Food and Drug Administration (the "FDA") on December 30, 1991. The mark was first used on or in connection with Pfizerís sertraline HCL product on October 22, 1991, and has been used on or in connection with such product since its commercial introduction in the U.S. on or about February 3, 1992. ZOLOFT brand sertraline HCL is one of the most-prescribed antidepressant medicines in the world. ZOLOFT also is used for the treatment of panic disorder, obsessive-compulsive disorder, and post-traumatic stress disorder. Pfizer is the owner of United States Trademark Registration No. 1,704,085 for the trademark ZOLOFT. The ZOLOFT trademark registration was issued on July 28, 1992, on the Principal Register maintained by the United States Patent and Trademark Office based upon a first use date of October 22, 1991. This federal registration is valid, unrevoked and uncancelled and is now incontestable. The ZOLOFT trademark is also registered by Pfizer, or a wholly owned subsidiary, around the world.

Sertraline HCL is marketed in the United States exclusively under Pfizerís registered trademark ZOLOFT, and is available in the United States solely and exclusively from Pfizer. By virtue of extensive publicity, and Pfizerís own post-approval advertising and promotion, Pfizerís ZOLOFT trademark has become well-known throughout the world, and especially in the United States, as designating Pfizerís sertraline HCL for treatment of depression, panic disorder, obsessive-compulsive disorder and post traumatic stress disorder.

Pfizerís ZOLOFT trademark is a coined and fanciful term having no denotative meaning. The ZOLOFT trademark is universally recognized and relied upon as identifying Pfizer as the sole source of the drug, and as distinguishing Pfizerís product from the goods and services of others. As a result, the ZOLOFT trademark has acquired substantial goodwill and is an extremely valuable commercial asset.

 

5. Partiesí Contentions

A. Complainant contends that it has numerous registrations of the trademarks LIPITOR and ZOLOFT. Complainant further contends that the Domain Names are confusingly similar to the LIPITOR and ZOLOFT marks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent failed to contest Complainantís assertion that it has registrations of the LIPITOR and ZOLOFT marks or that the Domain Names are confusingly similar to the trademark.

Respondent failed to contest Complainantís assertion that Respondent has no rights or legitimate interest in the Domain Names.

Respondent failed to contest Complainantís assertion that Respondent registered and used the Domain Names in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Even though Respondent has failed to file a Response or to contest Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that 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) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has registrations of the trademarks LIPITOR AND ZOLOFT and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the ENCARTA mark. 15 U.S.C. ß 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. ßß 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is the Panel's belief that Respondent has not met its burden.

Respondent has not contested the assertions by Complainant that it has valid registrations of the trademark. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.

Confusingly Similar

Complainant further contends that the Domain Names are confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Complainant alleges that Respondent, seeking to capitalize on the notoriety of Complainant's trademarks, registered without authorization the domain names, <lipitorpharmacy.com> and <zoloftpharmacy.com>, which (i) wholly incorporate Pfizerís well-known, registered LIPITOR and ZOLOFT marks and (ii) are confusingly similar to Pfizer's use of its LIPITOR and ZOLOFT trademarks to identify Pfizer as the sole source of its brand of atorvastatin calcium and sertraline HCL respectively. Complainant further alleges that the addition of generic words such as "store" or "pharmacy" is not sufficient to avoid confusion "since the ability of generic terms to distinguish the domain name from the trademark of the Complainant is limited." Nikon Inc. et al. v. Photocom Korea (WIPO Case No. D2000-1338); See also Chanel Inc. v. Estco Tech Group, (WIPO Case No. D2000-0413).

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998).

The Sole Panelist notes that the entirety of the LIPITOR and ZOLOFT marks is included in each respective Domain Name. Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000), (finding that a domain name was "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks.") Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).

The Sole Panelist further notes that the Respondent has failed to contest the assertion that the Domain Names are confusingly similar to the trademarks pursuant to the Policy paragraph 4(a)(i).

Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the LIPITOR and ZOLOFT marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant asserts that Respondent has no legitimate use for websites with the domain names <lipitorpharmacy.com> and <zoloftpharmacy.com>. Complainantís adoption and use of the LIPITOR mark precedes Respondentís registration of the disputed domain name on or about May 5, 2000. Complainantís adoption and use of the ZOLOFT mark precedes Respondentís registration of the disputed domain name on or about April 30, 2000, and that Respondent had actual and constructive knowledge of Pfizerís famous LIPITOR and ZOLOFT marks prior to registration of the Domain Names.

Complainant further asserts that Respondent is not and never has been a representative of Complainant or licensed to use the LIPITOR or ZOLOFT marks. Complainant believes that Respondent offers neither goods nor services under the "lipitorpharmacy" or "zoloftpharmacy" names. Even if Respondent did sell goods or services under the "lipitorpharmacy" or "zoloftpharmacy" names, such use, in the United States for instance, would constitute trademark infringement and dilution in violation of Sections 32 and 43 of the Trademark Act of 1946 (the "Lanham Act"), 15 U.S.C. ß 1114, ß1125. See Chanel v. Estco (WIPO Case No. D2000-0413) ("[I]n order for Respondentís Internet business to be "legitimate" under the Policy, it must make non-infringing use of Complainantís world famous mark.") Consequently, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain by misleading and diverting Pfizerís customers to its websites thereby creating the impression that it sells products associated with, or sponsored by, Complainant. Therefore, Respondent has no legitimate justification for having registered Complainant's trademarks as domain names, and has no apparent use for the domain names other than to profit in bad faith from the goodwill and fame of Pfizerís LIPITOR and ZOLOFT marks.

In the face of Complainantís allegations, Respondent has chosen not to respond and has therefore not contested Complainantís allegations.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

The file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product

Complainant asserts that Respondent has actual knowledge of the LIPITOR and ZOLOFT marks because of the extensive publicity and use associated with the products. Pfizer currently has registered and utilizes the Internet sites <lipitor.com> and <zoloft.com>. Respondent, recognizing both the fanciful and distinctive quality of the terms "Lipitor" and "Zoloft" and the value of the Internet to Complainant in augmenting its ability to communicate with customers and potential customers, registered the Domain Names <lipitorpharmacy.com> and <zoloftpharmacy.com> with the bad faith intent to profit from such registrations, and blatantly used the terms: "lipitorpharmacy" and "zoloftpharmacy," which fully incorporate Pfizer's LIPITOR and ZOLOFT trademarks, to do so.

Complainant further assets that Respondentís bad faith is exemplified by the following: (i) Complainantís marks are invented and coined marks that have strong worldwide reputations; (ii) although Respondent was clearly aware of the LIPITOR and ZOLOFT trademarks, as is evidenced by this single Respondentís use of both, Respondent wholly incorporated each of them as the predominant and recognizable portion of the Domain Names <lipitorpharmacy.com> and <zoloftpharmacy.com>, which were intended to and do mirror Pfizerís famous trademarks, LIPITOR and ZOLOFT, see America Online, Inc. v. Anson Chan (WIPO Case No. D2001-0004) (Respondentís knowledge of Complainantís mark before he registered the disputed domain name constitutes bad faith); (iii) Respondentís use of two unrelated Pfizer trademarks, LIPITOR and ZOLOFT, clearly indicates that Respondent knew or should have known of Pfizerís registration and use of the marks prior to registering the domain names, see America Online, Inc. v. Anson Chan (WIPO Case No. D2001-0004) (a finding of bad faith was made where Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name), see also SportSoft Golf, Inc. v. Hale Irwinís Golfers Passport (NAF case FA 94956), Marriott International, Inc. v. John Marriot (FA94737), Canada Inc. v. Sandro Ursino (AF-0211); (iv) <lipitorpharmacy.com> and <zoloftpharmacy.com>, (a) deliberately and misleadingly include Pfizerís registered marks LIPITOR and ZOLOFT, which are legitimately used to identify Pfizer as the sole source of the drugs and distinguishing Pfizerís LIPITOR and ZOLOFT products from the goods and services of others, and (b) are confusingly similar to Pfizer's LIPITOR and ZOLOFT marks; (v) because Respondent has no rights or legitimate interest in the use of <lipitorpharmacy.com> and <zoloftpharmacy.com> it only follows that <lipitorpharmacy.com> and <zoloftpharmacy.com> were registered for the illegitimate purpose of selling, renting, or otherwise transferring the domain name registrations to Pfizer or to a competitor of Pfizer for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain names; (vi) because Respondent has no rights or legitimate interest in the use of <lipitorpharmacy.com> or <zoloftpharmacy.com>, it can be concluded that <lipitorpharmacy.com> and <zoloftpharmacy.com> were registered to facilitate dilution, cybersquatting or infringement of Pfizer's LIPITOR and ZOLOFT trademarks throughout the United States and the world; and (vii) by using the domain names <lipitorpharmacy.com> and <zoloftpharmacy.com>, Respondent has intentionally attempted to attract for financial gain Internet users to Respondentís websites by creating a likelihood of confusion. Respondentís actions are intentional, willful and in bad faith, and were committed with full knowledge of the ownership by Complainant of the LIPITOR and ZOLOFT trademarks and Complainant's exclusive rights to use and license such marks. See Ferrovial Servicios, S.A. v. Alvamiren, S.L. (WIPO Case No. D2001-0016) (Panel may find bad faith even if Domain Name is being used passively).

Complainant further asserts that as a direct consequence of Respondentís actions, the public will be misled as to the accuracy of the information provided or the origin, sponsorship, or association of the products offered or sold, if any, on <lipitorpharmacy.com>and <zoloftpharmacy.com>. Respondentís purposefully deceptive Domain Names anticipate, rely on and profit from this consumer confusion or mistake. In maintaining the Domain Names <lipitorpharmacy.com> and <zoloftpharmacy.com>, Respondent has acted and continues to act intentionally, willfully and in bad faith with the intent to capitalize upon Complainant's property rights and diminish the value of the LIPITOR and ZOLOFT trademarks and Complainant's goodwill.

Attraction for Commercial Gain through Confusion 4(b)(iv)

Among Complainantís allegations is the assertion that the Respondent has intentionally attempted to attract Internet users for its own commercial gain by creating a likelihood of confusion with the LIPITOR and ZOLOFT marks.

The Sole Panelist found above that the Domain Names are confusingly similar to either the LIPITOR or ZOLOFT marks pursuant to the Policy paragraph 4(a)(i). Complainant asserts that Respondent can have no other purpose that its own commercial gain. Respondent has failed to contest this assertion.

The Sole Panelist finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

Nonexclusive Criteria

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Actual or Constructive Knowledge

One factor found to support a finding of bad faith is Respondentís knowledge of the Complainantís marks before Respondent registered the Domain Names. Complainant has alleged, without refutation, that Respondent had actual knowledge of the LIPITOR and ZOLOFT marks.

In addition, Respondent had constructive notice of the LIPITOR and ZOLOFT marks, as a trademark search on the date of the registration of the Domain Names would have revealed Complainantís trademark registrations in the United States. Actual or constructive knowledge of the Complainantís rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000), (Respondentís knowledge of complainantís mark at the time of registration of the domain name suggests bad faith).

See, e.g., CCA Industries v. Dailey (bikinizone.com), WIPO Administrative Panel Decision in WIPO Case No. D2000-0148 (constructive notice found where domain name confusingly similar to complainantís mark and mark registered prior to respondentís domain name); Young Genius Software AB v. MWD (younggenius.com), WIPO Administrative Panel Decision in WIPO Case No. D2000-0591 (constructive notice found where complainant had trademark registration in Sweden and domain name registration under the .se top-level domain name prior to respondentís domain name registration); The Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038 (March 17, 2000), (Respondent's awareness of complainant's mark when he registering the domain name at issue supported an inference of bad faith).

Use of Entire Mark without Plausible Good Faith Use

A second factor is the use of Complainantís entire mark in each of the respective Domain Names, thus making it difficult to infer a legitimate use of the Domain Names by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with Complainant that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of <cellularonechina.com>, because the domain name included Complainantís entire trademark. In light of Cellular Oneís trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ∂ 7.

Respondentís Domain Names use the entirety of Complainantís trademarks. No plausible explanation exists as to why Respondent selected the LIPITOR and ZOLOFT marks as part of the Domain Names other than to trade on the goodwill of Complainant.

Respondent has failed to come forward with any facts to contradict the assertions of Complainant.

Nonexclusive Factors

The evidence establishes: (i) actual and constructive knowledge by Respondent of Complainantís rights in the LIPITOR and ZOLOFT marks upon the registration of the Domain Names; and (ii) the use of Complainantís entire mark creating an absence of any plausible use of the Domain Names that would constitute good faith.

Conclusion

Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names <lipitorpharmacy.com> and <zoloftpharmacy.com> are confusingly similar to Complainantís registered trademarks LIPITOR and ZOLOFT, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Pfizer Inc.

 


 

Richard W. Page
Sole Panelist

Dated: June 8, 2001