WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Internet Gambiano Productions LLC
Case No. D2002-0325
1. The Parties
The Complainant in this proceeding is Pfizer Inc. ("Complainant"), a Delaware corporation having a principal place of business at 235 East 42nd Street, New York, New York 10017, United States of America.
The Respondent is Internet Gambiano Productions LLC., the registrant of the domain name in issue ("Respondent"), with a listed mailing address of 15938 Las Vegas Blvd. Ste. #14, Las Vegas, Nevada 89108, United States of America.
2. The Domain Name and Registrar
The domain name in issue is <www-viagra.com>.
The registrar of the domain name in issue is Tucows, Inc., d/b/a opensrs.org ("Registrar") with a corporate address of 96 Mowat, Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
On April 5, 2002, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name in issue and paid the required filing fee for appointing a single member Panel.
On April 17, 2002, the Center found the Complaint to be in compliance with the formal requirements of ICANNís Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANNís Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and sent a "Notification of Complaint and Commencement of Administrative Proceeding" ("Notification") and the Complaint to the Respondent at the postal address and e-mail addresses listed in the domain name registration. The documents sent by courier were returned to the Center. With respect to the e-mail transmission of these documents, the Center did not receive error messages or notices of non-delivery when the Notification and Complaint were sent to the e-mail addresses listed in the domain name registration.
On April 20, 2002, the Center received an e-mail message from Gil Lopez at <email@example.com > in response to the Centerís Notification, stating that Mr. Lopez "will not comment on any details regarding this complaint" and authorizing the Center to make the transfer of the domain name in issue to the Complainant. On April 22, 2002, the Center acknowledged the Respondentís e-mail message and advised the Respondent that the Center does not have a general power to issue an order transferring a specific domain name and that unless the Complainant requests the suspension of the proceedings, the Center is obliged to continue the procedure. Further e-mail messages dated April 30, 2002, were sent by representatives of the Respondent, the Complainant and the Registrar concerning attempts to transfer the domain name in issue to the Complainant. However, nothing in the record for this proceeding shows that such transfer occurred or that the proceeding was terminated or suspended by the Complainant.
Accordingly, after the required twenty day period had expired as sent forth in paragraph 5(a) of the Rules and no response from the Respondent, other than Mr. Lopezís e-mail messages, was received, the Center sent a "Notification of Respondent Default" on May 27, 2002, to the Respondent by e-mail with a copy to the Complainant.
On June 4, 2002, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. The Panelist, as required, submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center and the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties on June 6, 2002.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Centerís finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the Panel was properly constituted and appointed. The Panelist also finds that the Center has fully discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding. Although a representative of the Respondent submitted e-mail messages to the Center with respect to this proceeding, the Panelist concurs with the Centerís finding that the Respondent has not filed a response with respect to this proceeding and that the Respondent is accordingly in default. The Panelist shall therefore issue a decision based on the Complaint, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant bases the Complaint on U.S. Registration No. 2,162,548 (first use and first use in commerce 4/06/98; issued 6/2/1998) and various worldwide registrations for the mark VIAGRA used in connection with a compound for treating erectile dysfunction. The Complainant provided a copy of the U.S. registration information for the mark VIAGRA ("Mark") as Annex 3 to the Complaint. The Complainant also provided a list of the Complainantís worldwide trademark registrations for the Mark as Annex 4 to the Complaint. The Complainant is also the owner of the domain name <viagra.com> which was registered on June 20, 1997. A copy of the corresponding whois record for this domain name was included as Annex 5 to the Complaint.
The domain name in issue was registered on August 1, 2001, to the Respondent. There is currently no web site accessible at the domain name in issue. A copy of the whois record for the domain name was attached as Annex 1 to the Complaint.
5. Partiesí Contentions
The Complainant asserts that it is one of the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. The Complainant asserts that it discovers, develops and markets leading prescription medicines for humans and animals as well as many of the worldís best-known consumer products. The Complainant asserts that it has expended millions of dollars and extensive resources on research, development and marketing of sildenafil citrate under the VIAGRA® brand, which is the first approved oral medication for the treatment of erectile dysfunction. The Complainant further asserts that it operates a web site at <www.viagra.com> which is visited by a vast number of U.S. consumers.
The Complainant asserts that it has continuously used the Mark on or in connection with sildenafil citrate products in the United States since April 6, 1998. The Complainant asserts that the Mark is a coined and fanciful term with no denotative meaning, and that the Mark is universally recognized and relied upon as identifying the Complainant as the sole source of the drug and as distinguishing the Complainantís product from the goods and services of others. The Complainant further asserts that the Mark has become famous throughout the world and in the United States as a result of extensive publicity. The Complainant asserts that prior to the FDA approval of sildenafil citrate on March 27, 1998, the Complainantís VIAGRA® brand sildenafil citrate received significant media attention.
The Complainant alleges that the Respondent registered the domain name in issue on or about August 1, 2001, seeking to capitalize on the notoriety and fame of the Complainantís Mark. The Complainant asserts that the domain name in issue is confusingly similar to the Complainantís Mark and the Complainantís web site at <www.viagra.com>. The Complainant further asserts that the only distinctive element of the domain name in issue is the Complainantís famous Mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in issue. The Complainant asserts that the Respondent is not, and has never been, a representative of the Complainant, that the Respondent is not licensed to use the Mark and that the Respondent is not commonly known by the Mark. The Complainant further asserts that it is inconceivable that the Respondent did not have knowledge of its Mark prior to the registration of the domain name in issue. The Complainant also asserts that the Respondent offers neither goods nor services through the domain name in issue and that the Respondentís passive use of the domain name in issue is not a legitimate use. The Complainant alleges that the Respondent registered the domain name in issue with the intent to divert the Complainantís customers in bad faith and for commercial gain and that the second level domain "www-viagra" is not used by the Respondent to identify its business.
The Complainant asserts that the Respondent registered and is using the domain name in bad faith by registering the domain name which is virtually identical to the Complainantís Mark with knowledge of the Complainantís trademark rights with the intent to take advantage of typographical errors and to confuse and mislead Internet users as to the origin, sponsorship, or association of the products or services offered or sold on <www-viagra.com>. The Complainant asserts that the Respondent intends to attract for financial gain Internet users to a web site by creating a likelihood of confusion. The Complainant further asserts that the Respondentís use of the Mark may prevent or hinder Internet users from accessing the Complainantís services on the Complainantís web site by confusing and/or frustrating Internet users.
No response was received from the Respondent with respect to this proceeding.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holderís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
The Panelist can rule in a complainantís favor only after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
The Complainant provided sufficient documentation showing that it is the owner of and has rights in the mark VIAGRA. A review of the second-level domain of the domain name <www-viagra.com> shows that the domain comprises the prefix "www", that generally signifies the "World Wide Web" with respect to the Internet, hyphenated from the Complainantís mark VIAGRA. The Panelist does not find such a prefix hyphenated from the Complainantís Mark sufficient to differentiate or distinguish the domain name in issue from the Mark. The Panelist therefore finds that the domain name in issue is confusingly similar to the Complainantís mark VIAGRA and that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
No evidence has been presented that the Respondent is commonly known by the domain name in issue or that at any time has the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Mark in any manner. In addition, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain name in connection with any type of bona fide offering of goods or services or that the Respondent is currently using the domain name for any purpose, commercial or otherwise. Rather a review of the uncontested evidence submitted shows that the Respondent registered the domain name in issue well after the Complainantís first use and first use in commerce of the mark VIAGRA. The evidence also shows that the Mark was clearly well-known at the time of the Respondentís registration of the domain name in issue. Thus, the evidence submitted by the Complainant supports the finding that the Respondent registered the domain name in issue with knowledge of the Mark and for the purpose of capitalizing on the confusion created by the domain nameís similarity to the Mark. The Panelist therefore finds that Element (ii) has been satisfied based on the Respondent having failed to establish rights or legitimate interests in the domain name in issue.
Element (iii) - Domain Name Registered and Used in Bad Faith
Based upon the uncontested evidence submitted by the Complainant, the Panelist finds that the Respondent clearly was aware of and had knowledge of the Complainantís Mark when registering the domain name in issue. This finding is supported by the evidence showing that the domain name in issue was registered well after the first use and the first use in commerce by the Complainant of its Mark. Moreover, this finding is supported by the Complainantís uncontested evidence showing the Mark being a coined arbitrary term that has no meaning apart from the Complainantís products and having a strong reputation and being widely known at the time the Respondent registered the domain name in issue. Furthermore, the Panelist finds that the Respondent has registered the domain name in issue in an apparent attempt to confuse or divert Internet users seeking or searching for the Complainantís web site. Coupled with the above findings that the domain name in issue is confusingly similar to the Complainantís Mark and that the Respondent has no rights or legitimate interests in the domain name, the Panelist finds that the Respondent registered the domain name in issue in bad faith.
The Complainant has also asserted and submitted uncontested evidence to show that the Respondent currently offers neither goods nor services at the domain name in issue and that the domain name does not resolve to a web site or other online presence. The Complainant accordingly asserts, without challenge from the Respondent, that such constitutes passive use or holding of the domain name. It is additionally noted that no evidence has been provided by the Respondent of any actual or contemplated legitimate noncommercial, good faith or fair use of the domain name since it was registered. Further, it is noted that the Respondent has provided false contact information in the whois record for the domain name in issue based upon the failed attempt of the Center to deliver the Notification and the Complaint to the Respondent by courier.
Viewing these assertions and the uncontested evidence in their entirety, the Panelist accordingly finds that the Respondentís inactions and actions together result in the domain name being used in bad faith and that Element (iii) has been satisfied.
The Panelist concludes that: (i) the domain name <www-viagra.com> is confusingly similar to the Complainantís Mark; (ii) the Respondent has no rights or legitimate interests in the domain name; and (iii) the Respondent has registered and is using the domain name in bad faith. The Panelist therefore requires that the registration of the domain name <www-viagra.com> be transferred to the Complainant.
Dated: June 20, 2002