WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. NA
Case No. D2005-0072
1. The Parties
The Complainant is Pfizer Inc., of New York, New York, United States of America, represented by Kaye Scholer, LLP, United States of America.
The Respondent is NA, of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pfizerviagra.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2005. On January 24, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 25, 2005, eNom transmitted by email to the Center its verification response.
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 January 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2005.
The Center appointed Seth M. Reiss as the Sole Panelist in this matter on March 30, 2005. 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 Panel is required to forward its decision to the Center, in accordance with paragraph 15 of the Rules, by April 13, 2005.
The Panel has examined the communications of the Center and the Complainant, and the Complaint. The Panel confirms that each complies with the formal requirements of the Policy, the Rules and the Center’s Supplemental Rules, and specifically, that the Center complied with paragraph 2(a) of the Rules in communicating the Complaint and applicable response deadline to the Respondent, and with paragraph 2(b) of the Rules in notifying the Respondent of its default and appointment of the panel. The Panel further confirms that the Administrative Panel was properly constituted.
The language of the proceeding is English.
4. Factual Background
Complainant Pfizer Inc. is a large and well known pharmaceutical company with operations is more than 150 countries. Complainant discovers, develops, manufactures and markets leading prescription medication for human and animals. Complainant invests more than US $5 billion, annually, in pharmaceuticals research and development, and claims more than 10 medicines currently global market leaders in their therapeutic categories. In 2003, Complainant reported revenues in the amount of US $45.2 billion.
Complainant has been publicly known by the PFIZER name since 1849, and has held federal trademark registrations for the PFIZER mark since August 24, 1948. Complainant also holds trademark registrations for the PFIZER mark in numerous countries throughout the world.
One of Complainant’s best known and commercially successful products is sildenafil citrate, the first approved oral medication for the treatment of male erectile dysfunction. Complainant markets this medication using the brand name VIAGRA. Complainant has held a USPTO registration for the mark VIAGRA since June 2, 1998, just months following the drug’s regulatory approval. Complainant also holds trademark registrations for the VIAGRA mark in virtually every country in the world, most having been issued between 1995 and 1999.
Inasmuch as sildenafil citrate was the first of its kind to address a medical condition of significant interest to many, the drug, and brand name VIAGRA, received wide media attention. FDA approval of the drug was covered by numerous publications having extensive readerships. This, together with heavy post-approval advertising and promotion by the Complainant, has caused the VIAGRA mark to become very well known and famous throughout the world.
The eNom Whois database shows the domain name <pfizerviagra.com> (disputed domain name or just “Domain Name”) to be registered to a “NA” having a New York City physical address. The registrant’s phone and email addresses are, likewise, listed as “NA”. An individual with a physical address identical to that of the registrant is listed as the administrative and technical contact. Unlike the registrant, this individual is listed as having an actual phone number and email address.1 The eNom Whois record for <pfizerviagra.com> shows it as having been created on December 8, 2002, which is presumably when the Respondent first registered the disputed domain name.
The Domain Name <pfizerviagra.com> resolves into a website comprising a for-profit search portal containing pre-set links to numerous other commercial websites, including online pharmacies. Some of these linked-to sites purport to sell genuine VIAGRA, and some purport to sell LEVITRA and CIALIS, pharmaceuticals that directly compete with Pfizer’s VIAGRA. Directing a web browser to “www.pfizerviagra.com” also activates revenue generating pop-up advertising together an invitation to download a serene picturesque screensaver.
5. Parties’ Contentions
Complainant contends that it holds rights in the PFIZER and VIAGRA marks by virtue of Complainant’s long-standing and widespread use of these marks and the multiple trademark registrations Complainant holds for these marks in the United States and other countries.
Complainant maintains that its PFIZER mark has become extremely well-known and famous throughout the world by virtue of Complainant’s extensive worldwide sales and marketing. Complainant further maintains that VIAGRA, a coined and fanciful term, is universally recognized and relied upon as identifying Pfizer as the sole source of sildenafil citrate and distinguishing Pfizer’s products from those of other pharmaceutical manufacturers. According to the Complainant, these marks have acquired substantial goodwill and comprise extremely valuable assets of the Complainant.
Complainant next contends that the disputed domain name <pfizerviagra.com> is identical or confusingly similar to Complainant’s PFIZER and VIAGRA marks as the Domain Name incorporates the two marks in their entireties and without alternation.
Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name considering that Respondent is not affiliated with Complainant, has no authority and has never been given permission to use the PFIZER or VIAGRA mark, and is not commonly known by the names Pfizer or Viagra or any combination thereof. Complainant points out that Complainant’s rights in the marks PFIZER and VIAGRA arose well before Respondent registered the <pfizerviagra.com> domain name, and that it is indisputable that Respondent knew of these marks, and Complainant’s ownership thereof, at the time the Domain Name was registered.
Complainant asserts that Respondent’s use of the Domain Name to direct Internet users to online pharmacies is not a bona fide use within the meaning of the Policy. Complainant supports this assertion with citations to UDRP decisions, including decisions involving the third party registration and use of the PFIZER mark. See, e.g., Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199. Complainant also cites to UDRP decisions holding that the use of a domain name that incorporates a product brand name to point to a website that markets pharmaceuticals, some of which are genuine branded product, also does not establish a bone fide use of the brand name, e.g., Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784, and nor does the use of a domain name to point to a website that markets only the genuine branded product, e.g., Pfizer Inc. v. Alex Schreiner/Schreiner & Co., WIPO No. D2004-0731. Complainant further maintains that Respondent’s use of the <pfizerviagra.com> domain name to attract Internet traffic for the click-through and popup advertising revenues also does not constitute a bona fide offering of goods or services under the Policy.
Finally, Complainant submits that the Respondent registered and is using the disputed Domain Name in bad faith because Respondent was undoubtedly aware of the world famous renown of the PFIZER and VIAGRA marks at the time Respondent registered the disputed domain name and therefore could not have registered <pfizerviagra.com> domain name for any reason other than in order to profit from the mark’s fame and reputation. Complainant cites several UDRP panels finding that the mere incorporation of the words PFIZER and VIAGRA into domain names constitute bad faith registration and use. Complainant contends that Respondent’s failure to provide true and complete name and contact information when registering the Domain Name is further evidence of bad faith registration and use as is Respondent’s use of the disputed Domain Name to point to a website featuring revenue-generating popup advertisements and pay-per-click links. An additional indicia of bad faith registration and use, according to Complainant, is Respondent’s use of <pfizerviagra.com> to point to online pharmacies that advertise products that compete with Complainant’s VIAGRA branded medicine.
In conclusion, Complainant requests, pursuant to paragraph 4(i) of the Policy, that the domain name <pfizerviagra.com> be transferred to Complainant Pfizer.
As noted above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use[,] Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774, and the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names[,] Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187”. Pfizer Inc. v. Alex Schreiner/Schreiner & Co., WIPO Case No. D2004-0731, citing the Report of the WIPO Internet Domain Name Process, at pp. 169 & 170. This case falls clearly within such limited jurisdiction.
Pursuant to paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar: Policy 4(a)(i)
It is beyond doubt that Complainant holds rights in the PFIZER and VIAGRA trademarks. Complainant holds rights in these marks by virtue of Complainant’s multiple U.S. and foreign trademark registrations, Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503, as well as by virtue of Complainant’s adoption, exclusive and continuous use of the marks. Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133.
Complainant has offered substantial evidence demonstrating the fame and renown of both marks. See, e.g., Pfizer Inc. v. Alex Schreiner/Schreiner & Co., supra (finding the mark VIAGRA has a strong reputation and is widely known as a result of its substantial use in the United States and in other countries). Well-known and famous marks are typically deserving of strong protection. See, e,g., 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:78 (4th ed 2005).
Both marks are also arbitrary and fanciful, in other words, each has no meaning apart from its branding function. Arbitrary and fanciful marks are among the strongest varieties of marks and, consequently, are generally accorded strong protection against infringement. See generally, 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, supra chapter 11. A corollary is that domain names incorporating such marks, when the mark belongs to another, suggests a deliberate attempt to misappropriate the mark and accompanying goodwill. Empresa Brasileira de Telecomunicações S.A. – Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164; Panavision Int’l, L.P. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996).
The disputed domain name <pfizerviagra.com> incorporates each of Complainant’s famous marks, PFIZER and VIAGRA, in their entirety. Incorporation of a trademark in its entirety is often sufficient to establish that a domain name is identical or confusingly similar to a complainant’s mark. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.
Combining two distinct marks in their entirety could, if the combination were anomalous, give rise to a nonsensical designation that bore little relationship to the marks incorporated therein, diminishing the likelihood that the designation would be confused with either mark or its respective owner. Here the combination is not anomalous. The marks PFIZER and VIAGRA bear the relationship of manufacturer brand and product brand. The two are seen together on product packaging and product advertising. Combining the two into a domain name merely serves to enhance the possibility that the public will be confused as to source, sponsorship and affiliation. Compare Sonera Ojy and Telia AB (Publ.) v. Daungsoo Ghim, WIPO Case No. D2002-0403 (finding that complainant, a merged company, held rights in a mark that comprised each of the merged company’s individual mark).
The Panel therefore finds that the domain name <pfizerviagra.com > is confusingly similar to the PFIZER and VIAGRA trademarks in which the Complainant hold rights and that Complainant has established element (i) of the Policy’s paragraph 4(a).
B. Rights or Legitimate Interests: Policy 4(a)(ii)
Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that complainant has not authorized respondent to use the mark, the burden shifts to respondent to establish some right or legitimate interest in respect of the domain name. Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074. By not submitting a response, Respondent has failed to invoke some circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some right or legitimate interest in the disputed domain name. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323.
Respondent could not have not known of the rights held by Complainant in the PFIZER and VIAGRA marks at the time Respondent registered the disputed Domain Name.
The very content of Respondent’s website evidences such knowledge. Such awareness on the part of a respondent is inconsistent with the possibility of some right or legitimate interest in the respondent in respect of the domain name. Pfizer Inc. v. Websites, WIPO Case No. D2004-0730.
Paragraph 4(c) sets forth three non-exclusive circumstances any one of which, if present, is sufficient to demonstrate in a respondent some right or legitimate interest in respect of a disputed domain name. One such circumstance is that “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”. Policy, paragraph 4(c)(i).
Whereas it remains unproven whether the medications being offered through Respondent’s web portal include genuine VIAGRA brand sildenafil citrate, it is established that the sites linked through Respondent’s web portal purport to sell pharmaceuticals that are competitive with Complainant’s, together with a great many other products and services that bear no relationship with Complainant or its products. Resellers that offer products competitive with the trademark owner’s products are not engaged in the bona fide offering of goods for purposes of paragraph 4(c)(i) of the Policy. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946. Nor are domain name holders that utilize the domain names to sell an extensive array of products and services that bear no relationship to the product whose mark is appropriated in the domain name. And though probably obvious from the content of Respondent’s web portal, Respondent makes no effort to disclose that Respondent lacks any relationship with Complainant. Oki data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Respondent’s apparent use the <pfizerviagra.com> domain name to funnel web traffic in exchange for click-through and pop-up advertising revenues is also inconsistent with the concept of a bona fide offering of goods. The Paragon Gifts, Inc. v. Govs, WIPO Case No. D2003-0892 (the registration of a confusingly similar domain name to redirect traffic to the respondent’s website in order to receive a commission under complainant’s affiliate program is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Several UDRP panels have concluded that where the use of a disputed domain name in connection with an offering of goods or services would constitute bad faith under paragraph 4(a)(iii) of the policy, then the offering cannot also qualify as a bona fide offering within the meaning of paragraph 4(c)(i) of the Policy. Pfizer Inc. v. Websites, WIPO Case No. D2004-0730 (concluding that the mark VIAGRA was so obviously connected with the complainant and its products, that its use by respondent to market the generic equivalent constituted “opportunistic bad faith”), citing First American Funds, Inc. v. UltSearch, Inc., WIPO Case No. D2000-1840. Such reasoning would appear applicable here as well.
As the record fails to establish a right or legitimate interest of the Respondent in respect of the Domain Name, the Panel finds that element (ii) of the Policy’s paragraph 4(a) has also been established.
C. Registered and Used in Bad Faith: Policy 4(a)(iii)
Paragraph 4(a)(iii) of the Policy requires that the Complainants demonstrate that Respondent both registered and is using the disputed domain name in bad faith. Paragraph 4(b) of the Policy iterates four non-exclusive circumstances giving rise to an evidentiary presumption of bad faith registration and use on the part of a respondent. A complainant need only demonstrate the existence of one of these circumstances in order to meet its burden under the third element of the Policy.
Complainant here claims to have demonstrated the following paragraph 4(b) circumstance, to wit, that “by using the disputed domain name, Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website”.
This Panel agrees that Respondent’s motivation in registering the <pfizerviagra.com> domain name and using the Domain Name to point to Respondent’s “www.pfizerviagra.com” website could have been for no other reason than to “attract, for commercial gain, Internet users . . . by creating a likelihood of confusion with Complainant’s mark[s] as to source, sponsorship, affiliation, or endorsement . . . ”.
When a domain name incorporates a famous mark comprised of a coined or fanciful term, “it would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights”. Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Simply registering famous marks as domain names may, by itself in the appropriate circumstance, support a conclusion of bad faith registration and use. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (that Sony was a fanciful mark and perhaps the third most recognized brand in the Western world constituted strong indicia that respondent had registered and was using domain names incorporating the Sony mark in bad faith). When the domain name incorporating the famous mark is used to attract Internet traffic to fuel click-through and popup advertisement revenues, a conclusion of bad faith registration and use under paragraph 4(a)(iii) of the Policy is unavoidable. The Sportsman’s Guide, Inc. v. Asia Ventures, Inc, WIPO Case No. D2002-1116 (use of domain name to attract traffic for commission based search engine); Yahoo! Inc. v. Web Master a/k/a MedGo, NAF Case No. 127717 (use of domain name to attract traffic for pay-per-click search engine). The same conclusion is reached when a domain name incorporating a famous mark is used to sell competitive product. Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Merrell Pharmaceuticals Inc. and Aventis Pharma SA. v. Lana Carter, WIPO Case No. D2004-1041.
This Panel is therefore persuaded, based upon the record in this case, that Respondent both registered and is using the disputed domain name in bad faith and that element (iii) of the Policy’s paragraph 4(a) has also been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that the relief requested in the Complaint should be granted and orders that the domain name <pfizerviagra.com> be transferred to Complainant Pfizer Inc.
Seth M. Reiss
Dated: April 12, 2005