WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc v. lipidor.com DNS Services
Case No. D2003-1099
1. The Parties
The Complainant is Pfizer Inc, 235 East 42nd Street, New York, NY 10017-5755, United States of America, of United States of America, represented by Hale and Dorr, LLP of United States of America.
The Respondent is lipidor.com DNS Services, lipidor.com, DNS Services, 635 Tennessee Street, Suite 202, San Francisco, CA 94107, United States of America, of United United States of America.
2. The Domain Name and Registrar
The disputed domain name <lipidor.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on December 2, 2002. On December 4, 2002, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On December 5, 2002, 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 the "Supplemental 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 December 6, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 30, 2002.
The Center appointed David Sandborg as the sole panelist in this matter on January 21, 2003. 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
Complainant Pfizer Inc. ("Pfizer") discovers, develops, manufactures and markets prescription medicines for humans and animals, including the human pharmaceutical atorvastatin calcium ("LIPITOR").
Pfizerís LIPITOR® brand therapy for cholesterol-lowering was approved by the United 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 wholly owned subsidiary, Pfizer Ireland Pharmaceuticals, 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. The LIPITOR trademark is also registered in many other countries.
5. Partiesí Contentions
The Complainantís contentions are summarized as follows:
Domain name is Identical or Confusingly Similar
The Respondent registered the domain name <lipidor.com> without authorization seeking to capitalize on the notoriety of the Complainantís trademark and tradename.
<lipidor.com> (i) is virtually identical to the LIPITOR trademark, the only difference being that the letter "t" in the LIPITOR mark has been replaced by the letter "d", a practice which has become known as "typo-squatting" (ii) consists predominantly of the term "Lipidor" the pronunciation of which is practically indistinguishable from the pronunciation of the Complainantís LIPITOR mark; (iii) was registered in order to confuse users who may attempt to locate the Complainantís website by spelling its name phonetically; (iv) is confusingly similar to Pfizer's own website "lipitor.com", and (v) is so clearly similar to the Complainantís LIPITOR and tradename that it is likely to cause confusion among Pfizerís customers.
Respondent Has No Rights Or Legitimate Interest In <lipator.com>
Complainant contends that the Respondent has no legitimate use for a website with the domain name <lipidor.com>. The Complainantís adoption and use of the LIPITOR mark precedes the Respondentís registration, on or about February 27, 2002, of the disputed domain name. The Respondent had knowledge of the Complainantís LIPITOR mark prior to the registration of the disputed domain name.
The Respondent is not and never has been a representative of the Complainant or licensed to use the LIPITOR mark.
Web-Forwarding Does Not Constitute A Bona Fide Offering Of Services
The Respondent does not offer goods or services through the domain name <lipidor.com>. As of November 19, 2002, the Respondent used <lipidor.com> solely as a link address to redirect consumers to the on-line pharmacy website "<smartmeds.com>". The <smartmeds.com> website markets and purports to sell various drugs such as Xenical, Propecia, and Celebrex and Meridia® which are manufactured by competing pharmaceutical companies. The Respondentís use of the term "Lipidor" to redirect traffic to <smartmeds.com> is likely for a fee.
The Complainant further contends that the Respondent intentionally chose the term "Lipidor" because it is confusingly similar to the LIPITOR mark. Specifically, the Respondentís use of the <lipidor.com> domain name intentionally and misleadingly redirects or diverts Internet users away from the Complainantís <lipitor.com> website, which offers useful information about the LIPITOR drug, in order to generate commercial gain for the Respondent. Complainant asserts that this is not a legitimate use.
"Typosquatting" Indicates Lack of A Legitimate Interest
Complainant alleges, upon information and belief, that the Respondent has purposefully selected the term "Lipidor" which contains a common "typo" to the Complainantís LIPITOR mark, to divert consumers, who are attempting to locate the Complainantís site, to the website of <smartmeds.com>. The term "Lipidor" has an almost identical pronunciation as the Complainantís LIPITOR mark. Upon information and belief, Complainant contends that the Respondent intends to profit from the ensuing confusion. As a result of the Respondentís actions, the Complainant has been and will continue to be deprived of visits by Internet users. These tactics, which take advantage of mistakes consumers may make when attempting to locate the official, Pfizer-sponsored website, do not constitute a legitimate use of the disputed domain name.
Additionally, Complainant alleges, the Respondentís likely intent is to use the "typo" to the LIPITOR mark to confuse customers as to Pfizerís sponsorship of the <smartmeds.com> website when consumers, believing it to be at a Pfizer-sponsored website, are instead funneled to a website where not only Pfizerís products, but those of various competitors, are marketed and purportedly sold. Such unauthorized use of the LIPITOR mark to enable the purported sale of the Complainantís products on a site linked to the disputed domain name, which also sells and markets products of competitors, does not constitute a legitimate use of the domain name.
Upon information and belief, Complainant contends that the Respondent has intentionally registered the domain name for the purpose of making illegitimate or unfair use of the Complainantís LIPITOR mark. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. The Respondent is instead misleading and diverting Pfizerís customers to the <smartmeds.com> website, thereby creating the impression that <lipidor.com> and/or <smartmeds.com> are in some way associated with, or sponsored by, Pfizer. Further, upon information and belief, the term "Lipidor" is not used by the Respondent to identify either its business or the business of the on-line pharmacy website <smartmeds.com>.
<lipidor.com> Was Registered And Is Being Used In Bad Faith
Bad Faith Registration
The Respondent, in common with the public, is well aware of the goodwill and reputation represented and symbolized by the LIPITOR trademark. It is therefore inconceivable that the Respondent was not aware that the LIPITOR mark, as used by the Complainant, is recognized and relied upon by medical professionals and the public throughout the world as the sole means to identify and distinguish the Complainant and the Complainantís goods and services from the goods and services of others. Pfizer currently has registered and utilizes the Internet site "lipitor.com". The Respondent, recognizing the value of the Internet to the Complainant in augmenting its ability to communicate with customers and potential customers, registered the domain name <lipidor.com> with the bad faith intent to profit from such registration, and blatantly used the term: "Lipidor" which looks and sounds virtually identical to the Complainantís LIPITOR trademark, to do so.
The Complainant further contends that this bad faith registration is exemplified by the following:
(i) the Complainantís mark is a mark that has a strong reputation around the world;
(ii) although the Respondent was aware of the LIPITOR mark, the Respondent deliberately registered a domain name with only a minor spelling variant, known as typosquatting, to the well-known LIPITOR mark in order to confuse consumers and to profit from such confusion.
(iii) the Respondent was clearly aware of the LIPITOR trademark prior to the registration of <lipidor.com>, as is evidenced by the worldwide fame of the LIPITOR mark.
(iv) the Respondentís deliberate use of a common typo; the substitution of the letter "d" for the "t" in the LIPITOR mark, while maintaining an almost identical pronunciation, indicates that the Respondent knew or should have known of Pfizerís registration and use of the mark prior to registering the domain name.
(v) because the Respondent has no rights or legitimate interest in the use of <lipidor.com>, the issue of bad faith registration need not even be considered.
Bad Faith Use
Complainant alleges that the Respondentís bad faith use of the domain name is determined, not by whether the Respondent is making a positive action in bad faith, but instead by whether all of the other circumstances of the case indicate bad faith by the Respondent, citing Telstra Corp. v. Nuclear Marshmallows (D2000-0003).
Bad faith use of the domain name is exemplified in this case by the following:
(i) LIPITOR is a famous mark that generates worldwide recognition and attention by consumers and professionals alike;
(ii) the Respondent intentionally used a common typo to the famous LIPITOR mark, exchanging the "t" for a "d", in order to confuse and divert customers from Pfizerís legitimate web sitewebsite at <lipitor.com>;
(iii) the pronunciation of the terms "Lipidor" and LIPITOR are practically identical;
(iv) the Respondent forwards the domain name for a fee to the <smartmeds.com> web sitewebsite, which purports to sell both Pfizer products as well as the products of other pharmaceutical companies;
(v) the Respondent seeks to profit from this illegitimate use;
(vi) <lipidor.com> is deliberately, misleadingly and confusingly similar to the Complainantís registered LIPITOR mark, which is legitimately used to identify Pfizer as the sole source of its drugs and to distinguish Pfizerís goods and services from the goods and services of others;
(vii) because the Respondent has no rights or legitimate interest in <lipidor.com>, and the domain name links to a web sitewebsite selling both Pfizer products as well as products from other pharmaceutical companies, it can be concluded that <lipidor.com> was registered to facilitate dilution, cybersquatting or infringement of the Complainantís LIPITOR trademark throughout the U.S. and the world; and
(viii) by using the domain name <lipidor.com>, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondentís or its affiliatesí web sitewebsite by creating a likelihood of confusion with the Complainantís LIPITOR mark as to the source, sponsorship, affiliation or endorsement of the <smartmeds.com> web sitewebsite.
The Respondentís actions are intentional, willful and in bad faith, and were committed with full knowledge of the ownership by the Complainant of the LIPITOR trademark and the Complainant's exclusive rights to use and license such mark.
The Respondent has failed to submit a Response to the Complainantís Complaint. The Center did receive an e-mail message from the Registrant of <Llipidor.com> indicating an intention to abandon the domain name without contest. Accordingly, the Panel will treat this as a default case.
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."
Where a Respondent has failed to submit a Response to the Complaint, Paragraph 5(e) provides that the Panel shall decide the dispute based upon the complaint, in the absence of exceptional circumstances. The Panel finds no exceptional circumstances in this case.
Paragraph 4 (a) of the Policy requires that the following three elements be alleged and proven in order for a Complainant to prevail:
a. Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
b. Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint; and
c. Respondentís domain name has been registered and is being used in bad faith
The Panel finds that the Complainant has satisfied these requirements and is entitled to prevail in this proceeding for the following reasons:
A. Identical or Confusingly Similar
Complainant has established in this proceeding its rights in the LIPITOR mark through registrations in the US and numerous other countries.
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. Through extensive advertising and marketing, the LIPITOR trademark has become well-known throughout the world, and especially in the United United States, as designating Pfizerís atorvastatin calcium for treatment of cardiovascular disorder and cholesterol reduction.
Respondent has replaced the letter "t" in the Lipitor mark with the letter "d", a practice which has become known as "typo-squatting", see Playboy Enterprises International, Inc. v. SAND WebNames-For Sale (D2001-0094) (a typical case of "typo-squatting" is "where the infringing name is one letter less than or different from the Complainantís mark")
A number of panels have held that slight misspellings are not sufficient to distinguish a challenged domain name from an established mark, see Google v. Namerental.com (D2001-0060) (Finding that the domain name <ggoogle.com> was confusingly similar to the Complainantís "GOOGLE" mark), see also American Airlines, Inc. v. Zuccarini (FA0009000095695) (finding that the domain name <amaricanairlines.com> was confusingly similar to the Complainantís "AMERICAN AIRLINES" mark). As stated in a WIPO decision, "mere additions of minor misspellings to a Complainantís mark do not create a new or different mark with which a Respondent has rights; it results in a domain name that is confusingly similar." America Online Inc. v. Zuccarini (D2000-1495).
The Panel finds that <lipidor.com> is confusingly similar to Complainantís LIPITOR mark.
B. Rights or Legitimate Interest
Complainant has alleged facts and circumstances to establish that Respondent has no rights or legitimate interest in respect of the domain name at issue. Such facts and circumstances, without contrary evidence being offered by the Respondent, are sufficient to permit a finding in Complainantís favor on this issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007.
Additionally, the panel notes that the Complainantís adoption and use of the LIPITOR mark preceded the Respondentís registration of the disputed domain name by several years. In light of all the facts and circumstances, including the extensive publicity and marketing of the mark, it can be reasonably inferred that the Respondent had knowledge of the Complainantís famous LIPITOR mark prior to the registration of the disputed domain name.
The Respondent does not offer goods or services through the domain name <lipidor.com>. Rather, Respondent has used <lipidor.com> solely as a link address to redirect consumers to the on-line pharmacy website <smartmeds..com>. The <smartmeds.com> website markets and purports to sell LIPITOR® as well as various other drugs such as Xenical, Propecia, Celebrex and Meredia®, which are manufactured by competing pharmaceutical companies. The Panel draws the reasonable inference that the Respondentís use of the term "Lipidor" to redirect traffic to <smartmeds.com> is likely for a fee. It has been held that use of a Complainantís trademark and reputation to redirect traffic to the website of another for a fee does not constitute a bona fide offering of goods or services. Royal Bank of Canada v. Personal (D2001-0761).
The Respondent is not and never has been a representative of the Complainant or licensed to use the LIPITOR mark.
By not submitting a Response, Respondent has failed to show any facts or circumstances which could have established any rights or legitimate interests in the Domain Name under Paragraph 4(c) of the Policy.
For all of the above reasons the Panel finds that Respondent has no rights or legitimate interest in the Domain Name at issue.
C. Registered and Used in Bad Faith
Under Paragraph 2 of the Policy, it is clear that when one registers a domain name, one represents and warrants that, to the best of his knowledge, the registration of the domain name will not infringe on the rights of any third party. Given the facts and circumstances of this case taken together with the absence of any Response by Respondent, the Panel concludes that the Respondent registered the domain name at issue while being aware of the previously registered LIPITOR mark of the Complainant.
The Panel further concludes that by using a common typo ---the substitution of the letter "d" for the letter "t"--- the Respondent intended to take advantage of any confusion created by such misspelling in order to divert potential customers to the website <smartmeds.com>, and to create the impression that <smartmeds.com> and <lipidor.com> were associated with, or sponsored by, Pfizer. The Complainant has alleged, and Respondent has failed to deny, or to supply any contrary evidence, that the domain name at issue has been so used.
Moreover, it is undisputed that Respondent is not and has not ever been a representative of the Complainant or licensed to use the LIPITOR mark.
Finally, the Panel finds that all of the circumstances of the case, taken together, indicate bad faith by the Respondent, see Telstra Corp. v. Nuclear Marshmallows (D2000-0003).
Accordingly, the Panel finds that the Respondent has registered and used the domain name in bad faith.
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 <lipidor.com> be transferred to the Complainant.
Date: 8 April 8, 2003