WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Sangwoo Cha

Case No. D2003-0256

 

1. The Parties

Complainant is Pfizer Inc., of New York, United States of America, represented by Hale and Dorr, LLP of United States of America.

Respondent is Sangwoo Cha, of Taegu, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <viagra.net> is registered with Address Creation, United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2003. On April 4, 2003, the Center transmitted by email to Address Creation a request for Registrar Verification in connection with the domain name at issue. On the same date Address Creation transmitted by e-mail to the Center its Verification Response confirming that Respondent is listed as the Registrant and that the Administrative, Billing, and Technical contacts for the domain name at issue is Respondent, under the address indicated above. The Registrar furthermore confirmed that the Policy (see below) applies to the domain name, that the domain name will remain locked during the administrative proceeding, that the Registration Agreement is in English and that the Registrant has agreed to the Registration Agreement according to which the applicable jurisdiction is the one at the location of the principal office of the Registrar.

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 "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 April 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondentís Default on May 7, 2003.

The Center appointed Mr. Henry Olsson as Sole Panelist in this matter on June 17, 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. The Projected Decision Date was July 1, 2003.

 

4. Factual Background

The Complainant is one of the largest pharmaceutical companies in the world, having global operations in more than 150 countries. Complainant develops, manufactures and markets a number of leading prescription medicines for both humans and animals and also well-known consumer products. In particular, Pfizer is known for the "VIAGRA" brand of sidenafil citrate, which is the first approved oral medicine for the treatment of male impotence (erectile dysfunction) which is said to affect more than 20 million men in the United States and over 100 million men around the world.

The "VIAGRA" medication was approved by the United States Food and Drug Administration on March 27, 1998, and has been used in that country since April 6, 1998.

Complainant is the owner of a US Trademark Registration for "VIAGRA" issued on June 2, 1998, which registration is still valid. Complainant, or a wholly owned subsidiary, is, furthermore, the owner of trademark registrations for the same mark around the world, including the Republic of Korea. Complainant has submitted a copy of a certificate relating to the United States registration as well as a list of the worldwide registrations for the same trademark.

In accordance with Rule 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain at issue, to the jurisdiction of the courts at the location of the principal office of the concerned Registrar.

5. Partiesí Contentions

A. Complainant

General

In addition to its statements relating to the trademark registrations of the trademark "VIAGRA" Complainant alleges that the medication at issue had attracted enormous media attraction including both a cover story in the Newsweek magazine and discussions in popular TV programs. Also the approval of "VIAGRA" was highly publicized and has also after that been the subject of intense media attention, public scrutiny and commentary.

Complainant submits that by virtue of this extensive publicity and the post-approval advertising and promotion of Complainant, the "VIAGRA" trademark has become famous throughout the world as designating Complainantís brand of oral therapy for male impotence.

In addition, Complainant alleges that the "VIAGRA" trademark is coined and fanciful term which has no denotative meaning, and the mark is, according to Complainant, universally recognized and relied upon as the sole source of the drug and as distinguishing the product of Pfizer from the goods and services of others. As a result the "VIAGRA" trademark has acquired substantial goodwill and is to be considered as an extremely valuable commercial asset.

As regards the actions by Respondent, Complainant alleges that it became aware of the registration of the domain name at issue on or about August 28, 2002, which, at that time, according to Complainantís contacts in the Republic of Korea, was used to display pornography in that country. To support this contention Complainant has submitted a screen shot and print-outs of the webpages under the domain name at issue as accessed from a Korean computer on October 30, 2002. According to a copy of a Whois printout of August 28, 2002, submitted by Complainant, the domain name at issue was at that point in time registered by Hanjin Ko, Republic of Korea.

On November 20, 2002, Complainant sent a letter to Hanhin Ko demanding a transfer of the registration to Complainant but received no response. On the following day, Complainant became aware that the registration of the domain name at issue was now owned by Respondent. To support this, Complainant has submitted a printout of the Whois database conducted on November 21, 2002, which shows Respondentís ownership of the domain name and also that the record was last updated the day before.

Through its foreign contacts, Complainant sent a letter Ė copy of which has been submitted Ė to Respondent via e-mail on December 24, 2002, and via certified mail on December 26, 2002. The letter was returned with an indication that the address was unknown, but the e-mail went through. No response has, however, been received from Respondent.

Identity or confusing similarity

In this respect, Complainant alleges that Respondent is seeking to capitalize on the notoriety of the trademark of Complainant and has acquired, without authorization, the domain name at issue which wholly incorporates Complainantís well-known registered "VIAGRA" trademark and is confusingly similar to the use of the trademark by Complainant to identify Complainant as the sole source of the medication provided under that trademark.

Complainant adds that Respondent has no legitimate justification for having acquired the trademark owned by Complainant as used in a domain name and has no apparent use for the domain name other than to profit from the goodwill and fame of the trademark.

Rights or legitimate interests in the domain name

Complainant first submits that the adoption, use and registration of the "VIAGRA" trademark and the registration of the domain name <viagra.com> both precede the acquisition by Respondent of the domain name at issue on November 20, 2002. Complainant alleges that it is inconceivable that Respondent did not know of the trademark "VIAGRA" prior to the acquisition of the disputed domain name.

According to Complainant, Respondent is not, and has never been, a representative of Complainant or licensed to use the "VIAGRA" and, upon information and belief, Respondent is not commonly known by the name "viagra" nor does it offer goods or services under the "viagra" name. Accordingly, Complainant submits, Respondent has no legitimate justification for having registered the trademark of Complainant as a domain name and has no apparent use of the domain name at issue other than to interfere with Complainantís use of its "VIAGRA" trademark.

Complainant submits that Respondent offers neither goods nor services under the domain name at issue which does not resolve to a website or other on-line presence. Such passive holding does not constitute a legitimate fair use of the domain name, as has been found in a number decisions of earlier WIPO Panels, to which Complainant makes reference,

Furthermore, according to Complainant, there is no evidence that Respondent is making a legitimate non-commercial use of the disputed domain name, without intent for commercial gain. While Respondent is not currently operating a website at the <viagra.net> domain, it is highly probable that once Respondent does, consumers will associate the website with Complainant. Complainant refers in this context to an earlier WIPO Case No. D2000-1409 (Sony Kabushiki Kaisha v. Inja, Kil,) to support its allegation that the Panel in this case may infer that Respondent acted in bad faith without a legitimate use.

In addition, Complainant submits that, upon information and belief, Respondent acquired the domain name at issue for the purpose of making illegitimate or unfair use of the "VIAGRA" trademark and with the intent to divert Pfizer consumers in bad faith and for commercial gain. If Respondent does not create a website at the domain name at issue, once consumers realize that <viagra.net> does not resolve to an actual website, they may assume that Pfizer does not maintain an official "VIAGRA" website; they will become confused and frustrated and will be hindered or prevented from accessing important health information from Pfizerís own website and may even stop searching for that website at all.

Complainant also alleges that if Respondent launches a website at <viagra.net> consumers will encounter <viagra.net> when using a search engine for search for "VIAGRA" products. Customers will recognize the VIAGRA mark and are likely to believe that the website of Respondent is affiliated with or sponsored by Pfizer. The purposefully deceptive domain name anticipates, relies on and profits from this consumer confusion or mistake, something that is even more likely to happen in the case of the "VIAGRA" mark which is a coined and fanciful term. To support this, Complainant refers to some earlier decisions by WIPO Panels.

According to Complainant, Respondent has, upon information and belief, acquired the domain name at issue explicitly for the purpose of soliciting a sale far in excess of the out-of-pocket costs, or making illegitimate or unfair use of the "VIAGRA" mark owned by Complainant. The tactic of Respondent which take advantage of mistakes consumers may make when attempting to locate official Pfizer-sponsored "VIAGRA" websites do not constitute a legitimate use of the disputed domain name. Based on this it is, according to Complainant, clear that Respondent has no rights or legitimate interests in the domain name at issue.

Registration and use in bad faith

As regards first registration in bad faith, Complainant refers to Paragraph 4.b of the Policy where circumstances are mentioned that are evidence of registration and use of a domain name in bad faith, specifically including circumstances that indicate that Respondent registered or acquired a domain name for the purpose of transferring the domain name to the owner of a trademark. Complainant submits that, under the Policy, acquiring a domain name in bad faith is treated in the same way as registering such a name in bad faith. To support this, Complainant makes reference to some earlier WIPO Panel decisions.

Complainant also alleges that the transfer of the domain name at issue on the same day as the receipt of the demand letter from Complainant should allow the negative inference that Respondent acted in bad faith at the time it acquired the domain name from the predecessor in title. In common with the public, Respondent must be well aware of the vast and valuable goodwill and reputation represented and symbolized by the "VIAGRA" trademark. It is therefore, according to Complainant, inconceivable that Respondent was not aware that "VIAGRA" mark 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 the products of Complainant from those of others.

Complainant submits, as examples of the bad faith of Respondent the following circumstances: The trademark of Complainant is a coined and invented mark that is famous throughout the world; Respondent acquired the domain name incorporating the "VIAGRA" mark although it was aware of the mark; the domain name at issue deliberately and misleadingly includes the registered "VIAGRA" mark which is legitimately used to identify Pfizer as the sole source of the product, is identical to the mark and confusingly similar the Complainantís own domain name <viagra.com>; Respondent has no rights or legitimate interests in the domain name at issue and can thus be concluded that the domain name was acquired to facilitate cybersquatting or infringement of the trademark of Pfizer throughout the world. Complainant submits that the actions are intentional, willful and in bad faith and were committed with the full knowledge of the ownership of Complainant of the "VIAGRA" mark and the exclusive rights of Complainant to use and license such mark.

As regards then use in bad faith, Complainant first alleges that the bad faith by a Respondent is to be determined not by whether Respondent is making a positive action in bad faith but, instead, of whether all of the other circumstances in the case indicate bad faith by Respondent; use after acquiring a domain name, as opposed to registering a domain name, is in bad faith where the trademark of a Complainant is extensively used and known in the territory where Respondent is located.

In this case and with reference to a number of earlier WIPO Panel decisions, Complainant submits that the use in bad faith in this case is exemplified by a number of circumstances, in particular the following: "VIAGRA" is a famous trademark attracting worldwide recognition and attention by consumers and professionals alike; upon information and belief Respondent intentionally acquired the domain name at issue incorporating the "VIAGRA" trademark in order to confuse and divert the consumers from legitimate Pfizer websites; upon information and belief, Respondent seeks to profit from this illegitimate use; by passively maintaining the domain name at issue Respondent has acted, and continues to act, intentionally, willfully and in bad faith with the intent to capitalize upon the property rights and diminish the value of the trademark and the goodwill of Complainant; because Respondent has no rights or legitimate interests in the use of the domain name at issue and no product by that name is actually sold on a website affiliated to the domain name at issue, it only follows that the domain name was acquired for the illegitimate purpose of selling, renting, or otherwise transferring the domain name registration to Pfizer, or to a competitor of Pfizer, for valuable consideration in excess of the out-of-pocket costs of the Registrant directly related to the domain name; because Respondent has no rights or legitimate interests in the use of the domain name at issue, it can be concluded that the domain name was acquired to facilitate dilution, cybersquatting or infringement of the "VIAGRA" trademark of Complainant; upon information and belief, by acquiring the domain name at issue, Respondent intends to attract for financial gain Internet users to a website by creating a likelihood of confusion.

Complainant concludes that the actions by Respondent are intentional, willful and in bad faith, and were committed with full knowledge of the ownership by Complainant of the "VIAGRA" trademark and its exclusive rights to use and license that mark. In maintaining the domain name <viagra.net> Respondent has acted and continues to act intentionally, willfully and in bad faith with the intent to capitalize upon the property rights of Complainant and to diminish the value of the trademark and the goodwill of Complainant.

Complainant submits that the activities of Respondent have caused, and will continue to cause, Complainant significant harm. Unless the domain name at issue is permanently transferred to Complainant, Respondent will, according to Complainant, persist in its unlawful activities, thereby causing further harm and damage both to Complainant and to the public interest.

Remedies requested

In accordance with Paragraph 4.i. of the Policy, for the reasons described, Complainant requests the Administrative Panel to issue a decision that the domain name <viagra.net> be transferred to Complainant.

B. Respondent

The Respondent did not reply to the Complainantís contentions and is consequently in default.

 

6. Discussion and Findings

Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

In the case of default by a Party, Rule 14 prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case, no Response has been submitted and none of the contentions by Complainant have been contested, despite the opportunity given to do so. The Panel will therefore have to operate on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.

In its Verification Response, the Registrar has confirmed that the Policy applies to the domain name registration. Respondent is consequently obliged to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain name.

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

- that the domain name registered by Respondent is identical with or confusingly similar to a trademark or a service mark in which Complainant has rights

- that Respondent has no rights or legitimate interests in the domain name, and

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

In the following parts of this decision, the Panel discusses each of those elements.

A. Identical or Confusingly Similar

In this respect, Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.

The domain name at issue in this case is <viagra.net>.

The documents submitted by Complainant indicate that Complainant has registered trademark rights in the mark "VIAGRA" both in the United States and in a considerable number of other countries, including the Republic of Korea.

The domain name at issue incorporates the trademark with the addition of ".net". In the view of the Panel this is an insignificant addition which does not remove the likelihood of confusion between the trademark and the domain name. The Panel therefore considers it to be established that there exists a confusing similarity between the trademark in which Complainant has rights and the domain name at issue.

B. Rights or Legitimate Interests

In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue.

The Panel notes in this context that Complainant has trademark rights in the mark "VIAGRA" also in the Republic of Korea and that, as Complainant has suggested, the adoption, use and registration both of the mark "VIAGRA" and of the domain name <viagra.com> both precede the acquisition of the disputed domain name by Respondent. The Panel also notes that "VIAGRA" is in fact a well known mark closely associated with Complainantís medication for male impotence. The Panel concurs with the allegation by Complainant that it is inconceivable that Respondent did not know of the trademark prior to the acquisition of the disputed domain name.

Complainant has quoted a number of circumstances and referred to certain earlier WIPO Panel decisions to prove that Respondent has no rights or legitimate interests in the disputed domain name. The Panel basically agrees with those allegations and can not find any legitimate justification for the registration of the domain name at issue and for the acquisition by Respondent of that domain name. On the basis of the allegations and the evidence submitted the Panel draws the conclusion that in fact Respondent has no rights or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

In this respect, Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name at issue has been registered and is being used in bad faith. Furthermore, Paragraph 4(b) of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence and use in bad faith.

Also in this respect, Complainant has made a number of allegations and referred to earlier WIPO Panel decisions to support those allegations. On the basis of its considerations concerning the allegations and the evidence presented, the Panel first concludes that it is inconceivable that the Registrant of the domain name was, at the time of the registration of the domain name, unaware of Complainantís trademark "VIAGRA" which is a particularly distinct, invented word without any specific meaning in the English language. The Panel therefore concludes that the registration was made in the full knowledge of the trademark and made possibly for the purpose of marketing pornographic material and/or to capitalize, for other purposes. on the reputation of the well-known VIAGRA mark. The Panel considers that the circumstances present in this case amount to registration in bad faith.

As regards then use in bad faith, the Panel agrees with Complainant to the effect that in principle the acquisition of a domain name in bad faith is to be treated in the same way as registration in bad faith. Also, the Panel considers that the question of bad faith has to be judged on the basis of all the circumstances present in the case. The Panel finds it to be inconceivable that also Respondent was unaware of Complainantís trademark "VIAGRA" at the time of the acquisition of the domain name registration at issue, for several reasons, such as the reputation of the mark and the fact that registered trademark rights in it existed also in the Republic of Korea. The Panel notes that Respondent acquired the registration of the domain name at issue the day after that when the previous owner received a demand letter from Complainant. In view of these and other circumstances present in the case the Panel draws the conclusion that Respondent acted in bad faith when acquiring the domain name at issue and that the further passive holding of that domain name in fact amounts to use in bad faith of that domain name.

In summary, the Panel finds it to be established that the domain name at issue was registered and is being used in bad faith.

D. Conclusions

On the basis of these considerations, the Panel considers it to be established that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. The request by Complainant for a transfer of the domain name shall consequently be approved.

 

7. Decision

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 <viagra.net> be transferred to Complainant.

 


 

Henry Olsson
Sole Panelist

Dated: June 19, 2003