WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer, Inc. v. Seocho and Vladimir Snezko
Case No. D2001-1199
1. The Parties
The Complainant: Pfizer, Inc., 235 East 42nd Street, New York, New York 10017-5755, United States of America.
The Respondents: Seocho, 1336-2 Seocho-2dong, Seocho-Ku, Seoul, 137-072, Korea, and Vladimir Snezko, Post box 97, Moscow, RU 111538, Russia.
2. The Domain Name and Registrar
The domain name in issue is <wwwpfizer.com> (hereafter "the domain name").
The domain name was registered with BulkRegister.com, Inc., 10 East Baltimore St., Suite 15, Baltimore, MD 21202, United States of America.
The domain name was registered on or about June 15, 2001.
3. Procedural History
(1) The Complaint in Case No. D2001-1199 was filed in email form on October 3, 2001, and in hardcopy form on October 4, 2001.
(2) The WIPO Arbitration and Mediation Center has found that:
- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- Payment for filing was properly made;
- The Complaint complies with the formal requirements;
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- No Response was filed;
- The Respondent was appropriately notified of default;
- The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.
(5) No extensions have been granted or orders issued in advance of this decision.
(6) The expected date of decision in this proceeding is November 27, 2001.
(7) The language of the proceedings is English.
4. Factual Background
A. The Complainant and its marks
Complainant Pfizer Inc. ("Pfizer") is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. Pfizer discovers, develops, manufactures and markets leading prescription medicines for humans and animals, as well as many of the worldís best-known consumer products. In 2000, Pfizer reported revenues of 29.6 billion, with eight of its pharmaceutical products attaining sales of at least $1 billion each.
Complainant has registered the PFIZER name as a trademark throughout the world including several U.S. trademark registrations for PFIZER (U.S. Trademark Registration No. 626,088 issued May 1, 1956, for PFIZER in International Class 5; U.S. Trademark Registration No. 501,762 issued August 24, 1948, for PFIZER and design in International Class 5). All U.S. federal registrations are valid, unrevoked and uncancelled and are incontestable. Pfizer further has a large worldwide portfolio of trade marks registrations for the "PFIZER" mark and logo.
Complainant also uses the PFIZER mark as the domain name for its web site <www.pfizer.com>. This web site contains information about Complainantís products, managing oneís health and other family-appropriate information, and receives approximately 1,000,000 hits per month.
B. The Respondents
The Respondents have not filed a Response. According to BulkRegisterís Whois database, the Respondents in this administrative proceeding are as provided above, of the above addresses. No other information is known about the Respondents.
C. The Domain Name
The domain name <wwwpfizer.com> resolves correctly. At the time of the Complaint the domain name was automatically redirected to the site <bigpenis.com>, offering for sale an on-line penis enlargement manual. At the time of this decision, it was automatically redirected to <www.onlinepills.com>, a site offering online prescriptions for pharmaceuticals together with ads for online gambling.
5. Partiesí Contentions
A. The Complainantís assertions
The Complainant submits that the Respondentsí domain name is identical or confusingly similar to the Complainantís marks, for the following reasons:
- The Respondentís domain name is identical to the PFIZER trademark, the only difference being that "www" has been inserted in front of the PFIZER mark, a practice commonly known as a "typo" or "typosquatting," for the purpose of exploiting usersí typographical mistakes when seeking Complainantís site, namely those users who erroneously omit the period between "www" and "pfizer," see Bayer Aktiengesellschaft v. Yongho Ko (WIPO Case No. D2001-0205).
- The Respondentís domain name is confusingly similar to Pfizer's own website <pfizer.com>.
- The Respondentís domain name is so clearly similar to Complainantís PFIZER mark and tradename that it is likely to cause confusion among Pfizerís customers.
The Complainant submits that the Respondents have no legitimate interest or rights in the domain name, for the following reasons:
- Respondents have no legitimate use for a website with the domain name <wwwpfizer.com>. Complainantís adoption and use of the PFIZER mark precedes Respondentsí registration of the disputed domain name on or about June 15, 2001. It is inconceivable that Respondents did not have knowledge of Complainantís famous PFIZER mark prior to registration of the disputed domain name.
- Respondents are not and never have been representatives of Complainant or licensed to use the PFIZER mark. Furthermore, Respondents have caused the disputed domain name <wwwpfizer.com> to be used as a link address to the site <bigpenis.com> offering for sale an on-line penis enlargement manual. Upon information and belief, there is no connection between the term <wwwpfizer> and this site. Bayer Aktiengesellschaft (No rights or legitimate interest found when panel determined that there appeared to be no connection between the disputed domain name and the linked site). Upon information and belief, Respondentsí use of the PFIZER mark to direct traffic to <bigpenis.com> has been for a fee, and this type of use cannot constitute a bona fide offering of services. Royal Bank of Canada v. Personal (WIPO Case No. D2001-0761). Moreover, such use, in the U.S. for instance, constitutes 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, Inc. v. Estco Technology Group (WIPO Case No. D2000-0413) ("[I]n order for Respondentsí Internet business to be "legitimate" under the Policy, it must make non-infringing use of Complainantís world famous mark") (copy attached as Annex 13).
- Additionally, Respondents are intentionally diverting Pfizer customers through the use of the domain name <wwwpfizer.com> which contains a common typo, namely, the elimination of the period between "www" and the domain name, and which those customers might therefore enter by mistake. Novus Credit Services Inc. v. Personal (WIPO Case No. D2000-1158).
- Consequently, there is no evidence that Respondents are making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. Respondents are instead misleading and diverting Pfizerís customers to its website thereby creating the impression that <wwwpfizer.com> is in some way associated with, or sponsored by, Complainant. Further, upon information and belief, the term "wwwpfizer" is not used by Respondents to identify either their business or the business of the web site <bigpenis.com>, to which <wwwpfizer.com> is linked. Lastly, the addition of the prefix "www" to the PFIZER mark appears to be designed to take advantage of mistakes consumers are likely to make when intending to enter Complainantís web site.
The Complainant submits that the Respondents have registered and are using the domain name in bad faith, for the following reasons:
- Respondents, in common with the public, are well aware of the vast and valuable goodwill and reputation represented and symbolized by the PFIZER trademark. It is therefore inconceivable that Respondents were not aware that the PFIZER mark, as used by Complainant, is recognized and relied upon by medical professionals and the public throughout the United States and the world as the sole means to identify and distinguish Complainant's goods and services from the goods and services of others. Pfizer currently has registered and utilizes the internet site <pfizer.com>. Respondents, recognizing the value of the Internet to Complainant in augmenting its ability to communicate with customers and potential customers, registered the domain name <wwwpfizer.com> with the bad faith intent to profit from such registration, and blatantly used the term: <wwwpfizer> which is virtually identical to Complainantís PFIZER trademark, to do so.
- This bad faith is exemplified by the following: (i) Respondents have deliberately registered a domain name with a blatant and common typographical error, known as typosquatting, to the well-known PFIZER mark in order to confuse consumers, see Google (WIPO Case No. D2001-0060) (a minor spelling variant alone is sufficient to prove bad faith) (Annex 7); see also Pig Improvement Co. v. Platinum Net, Inc. (WIPO Case No. D2000-1594), (addition of "www" before mark of another is nothing more than an obvious attempt to trade on the value of anotherís mark and there is no conceivable good faith use for this practice); (ii) Respondents were clearly aware of the PFIZER trademark prior to the registration of <wwwpfizer.com>, as is evidenced by the deliberate addition of "www" in front of the PFIZER mark as an attempt to take advantage of typographical errors of Internet users seeking Complainantís web site, see America Online, Inc. v. Chan (WIPO Case No. D2001-0004) (Respondentsí knowledge of Complainantís mark before he registered the disputed domain name constitutes bad faith); (iii) <wwwpfizer.com> was intended to and does mirror Complainantís famous trademark, PFIZER; (iv) Respondentsí deliberate use of a common typo; the addition of the "www" prefix to Complainantís PFIZER mark, indicates that Respondents knew or should have known of Pfizerís registration and use of the mark prior to registering the disputed domain name, see America Online, Inc. v. Chan (WIPO Case No. D2001-0004) (a finding of bad faith was made where Respondents 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); (v) <wwwpfizer.com> is substantially similar to Pfizerís corporate name, which is commonly used to identify Pfizer as a company as well as a wide variety of pharmaceutical, consumer and animal health care products, and is confusingly similar to Pfizerís own website <pfizer.com>; (vi) <wwwpfizer.com> is practically identical to Complainantís registered mark PFIZER, which is legitimately used to identify Pfizer as the sole source of the drugs and distinguish Pfizerís goods and services from the goods and services of others; (vii) because Respondents have no rights or legitimate interest in the use of <wwwpfizer.com>, it can be concluded that <wwwpfizer.com> was registered to facilitate dilution, cybersquatting or infringement of Complainantís PFIZER trademark throughout the U.S. and the world; and (viii) by using the domain name <wwwpfizer.com>, Respondents have intentionally attempted to attract for financial gain Internet users to Respondentsí website by creating a likelihood of confusion with Complainantís PFIZER mark as to the source, sponsorship, affiliation or endorsement of Respondentsí site. Respondentsí actions are intentional, willful and in bad faith, and were committed with full knowledge of the ownership by Complainant of the PFIZER trademark and Complainant's exclusive rights to use and license such mark.
- Furthermore, Pfizer has established considerable goodwill in the PFIZER trademark and has expended billions of dollars in promoting the word as a symbol for quality pharmaceuticals. As a result, the Pfizer web site is visited by a wide variety of consumers interested in a broad range of human pharmaceuticals and animal health products. Moreover, pfizer.com is a family web site providing valuable information for both children and adults. Respondent has deliberately used a common typo, the addition of "www" before the PFIZER mark to trick these consumers into visiting the linked website <bigpenis.com>. Respondentís purposeful misappropriation of the goodwill that Pfizer has developed in the mark by registering the domain name <wwwpfizer.com> and linking this web site to <bigpenis.com>, which contains pornographic content and graphic sexual images, significantly tarnishes Pfizerís reputation and is evidence of Respondentís bad faith. This content is inappropriate for family viewing, and Respondentís continued use of the PFIZER mark in this manner diminishes the goodwill and reputation that the term "pfizer" embodies.
- As a direct consequence of Respondentsí 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 <wwwpfizer.com> or <bigpenis.com>. Respondentsí purposefully deceptive domain name anticipates, relies on, and profits from this consumer confusion or mistake.
- In maintaining the domain name <wwwpfizer.com>, Respondents have acted and continue to act intentionally, willfully and in bad faith with the intent to capitalize upon Complainant's property rights and diminish the value of the PFIZER trademark and Complainant's goodwill.
Accordingly the Complainant requests that the Panel order that the domain name be transferred to the Complainant.
B. The Respondentsí assertions
The Respondents have not filed a Response.
6. Discussion and Findings
Paragraph 4.a. requires the Complainant to make out three elements:
a) The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and
b) The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and
c) The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).
A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The Complainant has provided the registration documents for its PFIZER marks in the US, and elsewhere. I conclude that the Complainant Ė as a registered proprietor of the marks Ė has established the first requirement of this paragraph; that is, that it has rights in a relevant trademark.
The second requirement is that the domain name be identical or confusingly similar to the marks. I conclude that the domain name is confusingly similar to the Complainantís marks. The addition of the generic acronym for the World Wide Web, viz "www", to the Complainantís mark does not remove any confusion in the mind of the consumer. It is clear that, in fact, the Respondents are endeavouring to "typosquat" Pfizerís main domain name <www.pfizer.com>, assuming that users will neglect to include the period between the third and second level domain names. See e.g. InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069; Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274; Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205. As such, the Respondents are relying on the confusing similarity between the domain name, and the PFIZER marks. The second requirement of paragraph 4.a.(i) is clearly made out.
The Complainant has shown that it has rights in trademarks, and that the domain name is confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.
B. The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP.
In the absence of a Response, I consider it necessary to analyse whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:
"(i) before any notice to you 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 (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 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."
There is absolutely no evidence that any of the scenarios of Paragraph 4.c apply here. The Complainantís marks are well-known throughout the world, it has registrations in many countries, and the mark itself is very distinctive. It is unlikely that someone could establish a legitimate interest in any name that included the word "pfizer." Moreover, the domain name previously resolved to a website for penis enlargement, and currently resolves to an online drug prescription site which sells well-known drugs without obvious medical supervision. It is obvious that the Respondent has no legitimate interest such as contemplated by paragraph 4.c.
As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.
C. The Respondent registered and is using the domain name in bad faith.
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
It is clear that these two features are found in this case. I consider it to be bad faith registration where a Respondent has registered a domain name which is clearly seeking to typosquat the Complainantís famous mark and primary web-site. Equally, one can make the same conclusion about bad faith use being satisfied by the ongoing use of the domain name for typosquatting. Moreover we have here the fact that the current use of the domain name is to sell drugs, a number of which are produced by the Complainant. It is such an obvious example of ongoing bad faith use that little more need be said.
I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.
The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.
I hereby order that the domain name <wwwpfizer.com> be transferred forthwith to the Complainant.
Dated: November 28, 2001