WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc v. Ian Patrick
Case No. D2005-0155
1. The Parties
The Complainant is Pfizer Inc, New York, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is Ian Patrick, Northwich, Cheshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <viagra-price-guide.org> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2005. On February 11, 2005, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On March 1, 2005, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the Domain Name;
(b) the Respondent is listed as the current registrant of the Domain Name;
(c) the contact details for the Respondent and its administrative and technical contacts are as set out in the Complaint; and
(d) the language of the registration agreement is English.
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 March 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2005.
The Center appointed Warwick, A. Rothnie as the sole panelist in this matter on April 4, 2005. 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
The Complaint asserts the following facts which have not been disputed. Accordingly, consistent with the Panels obligation under the Rules (see paragraph 15(a)), the Panel treats these facts as sufficiently proved for the purposes of this Complaint.
The Complainant, Pfizer Inc., is one of the largest pharmaceutical enterprises in the world, operating in more than 150 countries. It claims to have spent millions of dollars on research, development and marketing of “VIAGRA” brand sildenafil citrate which was the first oral medication approved for the treatment of erectile dysfunction, a condition that is claimed to afflict 20 million men in the USA and 100 million men around the world.
The Complainant obtained marketing approval for its VIAGRA medication in the USA from the FDA on March 27, 1998, and it went on sale there on April 6, 1998.
“VIAGRA” has been registered as a trademark in the USA, No. 2,162,548, since June 2, 1998, in respect of a compound for treating erectile dysfunction. Annex 4 to the Complaint lists more than 6 pages of trademark registrations for VIAGRA in other countries including significantly in the present context as a Community Trademark, No. CTM233890, from April 19, 1996, and 2 registrations in the United Kingdom, with the earliest, No 2048286 dating from December 11, 1995.
The disputed Domain Name was registered on November 19, 2003.
Annex 6 to the Complaint is a print-out of the website to which the disputed Domain Name resolves made by the Complainant’s lawyers on February 2, 2005; i.e., just before the Complaint was filed.
In the top left hand corner, the “home page” declares:
“Generic cialis & generic viagra buying guide.”
Beneath it appears a picture of a person in a white coat holding what appears to be a clipboard and the statement “We have found the very cheapest places online for viagra, generic viagra, cialis and generic cialis.” (original emphasis)
To the right are four “buttons”: labeled, respectively, “best buy Generic Cialis”, “best buy Cialis”, “best buy Generic Viagra” and “best buy Viagra”. Immediately beneath these is a picture of a capsule and the words “Sildenafil citrate/Generic Viagra 100mg”.
To the left of these and underneath the picture of the white-coated clipboard holder already referred to are four buttons arranged vertically and labeled (in descending order) “Sildenafil citrate/Generic Viagra”, “Viagra 100mg”, “Cialis 20mg” and “Tadafil/Generic Cialis 20 mg”.
There are also 3 tables indicating pricing for various quantities of “sildenafil Citrate – generic viagra” available from various online vendors including “Allpills”, “RX-MEX”, “Budgetmed” and “Omnigen”. “Allpills” is highlighted and listed first or top in the first table “Standard orders sildenafil citrate – generic viagra”; RX-MEX is highlighted and listed first in the other two tables.
Annexes 7 – 10 of the Complaint are print outs of the websites relating to “Allpills”, “Omnigen” and “RX_MED”. The Allpills site appears to offer for sale only (so far as relevant) “Generic Viagra ®” and “Gen Softabs Viagra ®”, where other material indicates that “Gen” stands for “generic”. The print-out of the “Omnigen” site offers for sale only “Generic Viagra®” and also states “VIAGRA for WOMEN? Click here to learn more”. The print out of the RX-MEX website suggests that it may sell both generic sildenafil citrate and “brand” sildenafil citrate. The “brand” products being listed only after the six generic products offered and being considerably more expensive.
Clicking on the “best buy Viagra” button on the Respondent’s website takes one to a website at “www.half-price-pharmacy.com” which offers for sale both “Brand Viagra ® by Pfizer” and “Generic Viagra (save up to 80%)”.
5. Discussion and Findings
As the Center has communicated the Complaint to the contact details which the Registrar for the Domain Name has confirmed are the current contact details for the Respondent, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention.
There being no Response, paragraph 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel considers each of these in turn below.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights.
The Complainant has demonstrated ownership of the registered trademarks referred to in section 4 above. These include registered trademarks covering the United Kingdom, where the Respondent has given its address, and the USA, whose currency is used in all the advertising on the website to which the disputed Domain Name resolves.
The question of resemblance for the purposes of the Policy requires a comparison of the Domain Name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c).
The Domain Name incorporates the whole of the Complainant’s registered trademark “VIAGRA”. It differs only in the addition of the descriptive terms “price” and “guide” plus the addition of the gTLD, .com. Panels have consistently held that the addition of purely descriptive terms to a trademark does not deprive a domain name of confusing similarity: see e.g. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case D2000-1409 (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from overall impression of the dominant part of the name, the famous mark); America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 and Lilly ICOLS LLC v. Emilia Garcia WIPO Case No. D2005-0031 (<generic-cialis-online.com>). Ultimately, however, this is a matter of impression.
In this case, the differences are insufficient to prevent the disputed Domain Name from being confusingly similar to the Complainant’s trademark rights. The impression conveyed by the Domain Name as a whole is such that consumers are likely to consider it associated with the trademark “VIAGRA”. The distinctive component of the Domain Name is the Complainant’s registered trademark, “VIAGRA”, the other elements of the disputed Domain Name do not add anything distinctive to that; rather they indicate a website or service offering prices for Viagra-brand products. The essential component, the memorable part, is the term “VIAGRA”, a coined or invented term.
Accordingly, the Panel finds that the disputed Domain Name is confusingly similar to the Complainant’s registered trademark rights.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
(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.
The instances are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
Here, the Complainant claims that “VIAGRA” is an invented or fancy word. It is very well-known throughout the world. It is registered for the very goods that the Respondent is offering for sale from, or via, its website. The Complainant also denies that it has ever authorised the Respondent to use the trademark, “VIAGRA”.
There is no obvious connection between the Respondent’s name, Ian Patrick, and the term VIAGRA.
From Annex 6 and the details recounted above in Section 4, it appears that the Respondent offers for sale (or provides advertisements to websites offering for sale) genuine Viagra-brand sildenafil citrate and generic products referred to as “Generic Viagra” and often referred to as “Generic Viagra®”. The Complaint does not address this aspect of the website, so it is not clear whether or not the Complainant disputes the genuineness of these products.
In this case, however, the fact that the Respondent is using its website to offer for sale Viagra-brand sildenafil citrate tablets originating from the Complaint is not enough to give rise to a right or legitimate interest within the meaning of the Policy as the Respondent is also offering for sale at the same website directly competing products, at very much cheaper prices, under the description “Generic Viagra”.
As the Complainant contends, there is no such thing as “generic” Viagra: “VIAGRA” is a brand name, it is (as already recounted) a registered trademark in many parts of the world including both the United Kingdom and the USA. If there is something that is generic, it is sildenafil citrate. Many panels have concluded that it is not a legitimate use of the trademark to use it in a domain name to attract customers and re-direct them to competing products. See e.g. Ansell Healthcare Products Inc. v. Australian Therapeutic Supplies Pty Ltd., WIPO Case No. D2001-0110 and Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400.
The principle espoused in those decisions has been applied in cases like the present where the respondent is offering for sale both genuine and competitive products: see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870. While that decision is not binding on this Panel, there is obviously much desirability in Panels treating similar fact situations similarly, all the more so where the same trademark rights are in issue. Moreover, this Panel finds that the prominent offering for sale of so-called generics at a website using a competitor’s trademark as the distinctive component of the domain name falls outside what the Policy contemplated by rights or legitimate interests for the purposes of paragraph 4(b). See also Oki Data Americas Inc v ASD, Inc. WIPO Case No. D2001-0903 and Lilly ICOS LLC v. The Counsel Group LLC., WIPO Case No. D2005-0042.
In light of these considerations, therefore, the Panel concludes that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed Domain Name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed Domain Name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
These are examples of “bad faith” only and not an exhaustive listing as they are listed “without limitation”.
As already discussed, the Respondent uses the Domain Name to attract customers for sildenafil citrate to the Respondent’s website where both (apparently) Viagra-brand sildenafil citrate and competing “Generic Viagra” or “Generic Viagra ®” are offered for sale.
As discussed in Section 4 above, all the products are offered for sale by means of links to online vendors rather than being sold or offered for sale by the Respondent personally. The Complainant has drawn attention to the point that each of the online vendors specifically identified on the Respondent’s website operates an “affiliate” program by which referring websites receive commission payments of at least 20% of sales value made through the referral. The inference being that the Respondent’s website participates in these affiliate programs. That inference is not rebutted by the Respondent who, as previously noted, has not filed a response. Thus the Panel is entitled to conclude that the Respondent could not provide any information that would have supported rebuttal of the inference the Complainant invites the Panel to draw.
The Respondent uses the disputed Domain Name for his own commercial gain. He registered the Domain Name well after the Complainant acquired its rights and with knowledge of the Complainant’s well-known “VIAGRA” trademark. The competing product (or products) are offered for sale quite prominently. Accordingly, in line with the decisions already referred to - Ansell Healthcare Products Inc. v. Australian Therapeutic Supplies Pty Ltd, Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim and Pfizer Inc v. The Magic Islands – the Panel finds that the Domain Name has been registered and used 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 disputed Domain Name, <viagra-price-guide.org>, be transferred to the Complainant.
Warwick, A. Rothnie
Dated: April 18, 2005