WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Pretzel Publishing
Case No. D2005-1329
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 Pretzel Publishing, of San Francisco, California, United States of America, represented by John Berryhill, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <viagrastories.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2005. On December 23, 2005, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the Domain Name at issue. On December 27, 2005, Go Daddy Software transmitted by email to the Center its verification response stating that the current registrant of the Domain Name is Pretzel Publishing, San Francisco, California, the United States of America and providing the contact details for the administrative, billing, and technical contact. In response to a notification on January 6, 2006, by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 6, 2006 amending the registrant of the Domain Name to Pretzel Publishing. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced January 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2006. The Response was filed with the Center on January 30, 2006.
On February 21, 2006, WIPO received the Request of Complainant Pfizer Inc. for Leave to Submit Reply in Further Support of Complaint, with attached Reply and exhibit thereto. On February 23, 2006, the Center acknowledged receipt of Complainant’s supplemental filing and forwarded a copy of same to Respondent’s attorney and to the Panel. On March 1, 2006, the Center received Respondent’s Reply to Complainant’s supplemental filing. On March 1, 2006, the Center acknowledged receipt of Respondent’s Reply to Complainant’s supplemental filing and forwarded a copy of same to the Panel.
In view of the delay inherent in the Parties’ supplemental filings, the Panel extended the due date of the Decision to March 12, 2006.
The Center appointed Lawrence K. Nodine, Richard W. Page and Frederick M. Abbott as panelists in this matter on February 21, 2006. The Panel finds that it was properly constituted. Each member of 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.
Exercising its discretion under Rule 12, the Panel has considered and admits the supplemental filings of both parties.
4. Factual Background
Complainant is one of the world’s largest pharmaceutical manufacturers and sellers with global operations in more than 150 countries.
Complainant owns the registered trademark VIAGRA, U.S. Trademark Registration No. 2,162,548, issued June 2, 1998, with an alleged date of first use in United States commerce of April 6, 1998.
Complainant also alleges that it owns numerous registrations for the VIAGRA mark throughout the world.
The VIAGRA mark is used as the name of, and in connection with the worldwide sale of Complainant’s medication for erectile dysfunction.
Respondent registered the domain name <viagrastories.com> on or about May 4, 2002.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy Complainant contends that:
The Domain Name <viagrastories.com> incorporates wholesale the VIAGRA mark.
The Domain Name merely appends to the VIAGRA mark the generic or descriptive term “stories.”
The Domain Name is confusingly similar to Complainant’s own domain name <viagra.com>, at which Complainant operates a web site.
The Domain Name is so similar to Complainant’s VIAGRA mark that it is likely to cause confusion among Complainant’s customers and the consuming public.
With respect to paragraph 4(a)(ii) of the Policy Complainant contends that:
Complainant is not affiliated in any way with Respondent and has never authorized Respondent to register or use the Domain Name at issue.
Respondent has no rights or legitimate interests in the VIAGRA mark (or any variant spelling) or in the subject Domain Name.
Upon information and belief, Respondent is not commonly known by the name “VIAGRA,” “VIAGRASTORIES,” or any variation thereof.
Respondent had knowledge of Complainant’s VIAGRA mark prior to the registration of the disputed Domain Name.
Respondent is not making a legitimate non-commercial or fair use of the disputed Domain Name without intent for commercial gain. Respondent has intentionally registered <viagrastories.com> explicitly for the purpose of making illegitimate or unfair use of Complainant’s mark by using the Domain Name to advertise and sell products that are not made or authorized by Complainant and that compete with Complainant’s VIAGRA product. The Domain Name at issue is a for-profit web site linking to various online pharmacies that sell products that compete directly with Complainant’s products. It is irrelevant that some of the online pharmacies linked to Respondent’s web site also sell Complainant’s products.
Any “informational” legitimate, non-commercial fair use, purposes served by Respondent’s web site do not avoid the violation of the Policy, because the web site is not exclusively used to host consumer commentary, but is also used for commercial purposes, such as advertising and linking to on-line pharmacies that sell products in competition with Complainant’s Viagra product.
With respect to paragraph 4(a)(iii) of the Policy Complainant contends that:
Bad Faith Registration
Complainant’s VIAGRA mark is an invented and coined mark that has a strong worldwide reputation. Due to the issuance of Respondent’s United States trademark registration for the mark VIAGRA, Respondent had constructive knowledge of Complainant’s rights in the mark at the time the Domain Name was registered.
Respondent knowingly registered the Domain Name that is intended to be and is substantially confusingly similar to Complainant’s mark.
The Domain Name includes the registered mark VIAGRA in its entirety.
Respondent is not a representative of Complainant nor is Respondent licensed to use the VIAGRA mark.
Respondent has registered <viagrastories.com> through a proxy service to conceal its true identity which is further evidence of its bad faith registration of the Domain Name.
Bad Faith Use
VIAGRA is a world famous mark.
Respondent is using the Domain Name at issue to host Respondent’s for-profit web site that collects click-through fees or other revenue for linking to online pharmacies that sell Complainant’s and its competitors’ products. Use of a mark in a domain name to promote the sale of products in competition with the mark owner’s products constitutes bad faith.
As a result of the Respondent’s conduct, the public will be misled as to the source, sponsorship or origin of the information and products offered on the links connected to Respondent’s website.
Complainant’s Supplemental Response
Contentions in General:
Respondent’s reliance on the Lanham Act’s nominative fair use defense is misleading, and unavailing. This defense, which applies to federal Lanham Act claims, is inapplicable to UDRP claims.
Respondent argues that its homepage “clearly notes that the site is dedicated to collecting and linking to stories about Viagra,” whereas Respondent’s homepage prominently invites users to click on sponsored commercial links.
Respondent misleadingly argues that it has no control over the products sold on the sites to which its web site links. However, not only has Respondent affirmatively chosen to place the “Levitra – Levitra FAQ” link to competing products on its “viagrastories.com” web site, but newly discovered evidence shows that Respondent owns and operates that “www.levitrafaq.com” site to which that link connects, as indicated in the recent Whois record attached as Exhibit 7.
Respondent argues that its use of VIAGRA is a “fair use” for a commentary site, but ignores the UDRP decisions, including many cited by Pfizer, that hold that a purported “commentary” web site that includes commercial links constitutes a bad faith use in violation of the Policy.
Even if the federal law’s nominative fair use analysis did apply to this proceeding under the Policy, Respondent has failed to establish such a defense for at least two reasons. Respondent is using its web site to purport to sell the VIAGRA product and competing products, as well as paid advertising. Just as such a commercial use negates a fair use defense under the Policy, the commercial use of a domain name that incorporates another’s trademark similarly negates any fair use defense under the federal AntiCybersquatting Consumer Protection Act. Under the nominative fair use defense, a defendant may use no more of the mark than is necessary to describe what it is selling, and, in the words of the Volkswagenwerk decision cited by Respondent, “must not do so in a manner which is likely to suggest” any affiliation with the trademark owner.
Respondent has no legitimate rights in the domain name, which clearly has been registered and used in bad faith to trade on and profit from the goodwill and reputation of the famous VIAGRA mark.
With respect to paragraph 4(a)(i) of the Policy, Respondent contends that:
The Domain Name <viagrastories.com> is intended to convey “Viagra stories.” The question is whether or not something entitled “Viagra stories” is confusingly understood to originate solely with the Complaint.
In the context of a nominative referent use of a trademark, a reference to a mark does not necessarily equate to confusion with the mark as an indicator of origin.
The Complainant has shown no evidence that any Internet user has ever been subject to initial interest confusion, nor has the Complainant shown any evidence of a likelihood that an Internet user would assume that the Domain Name at issue originates with the Complainant.
With respect to paragraph 4(a)(ii) of the Policy Respondent contends that:
Under the Policy, such rights and interests are not limited to trade or service mark rights, but include equitable rights and interests such as demonstrable preparations to use, or actual use of the domain name in connection with a bona fide offering of goods and services.
The primary question is whether it is legitimate to utilize a trademark in a nominative sense in connection with a commercial forum for the discussion of the trademarked product.
Decisions under the Policy have recognized legitimate publishing of information relating to trademarked goods and services using the trademark within a domain name to identify the subject matter of the commercial activity.
There is no such thing as a licensed pharmacy which only sells VIAGRA. All of the Complainant’s customers go to pharmacies that also sell LEVITRA and CIALIS.
The Complainant at “www.viagra.com,” provides pharmacy information and directory links which hyperlink to Walgreen’s, and other online pharmacies which also sell LEVITRA and CIALIS.
Respondent links to a pharmacy which only sells authentic VIAGRA.
Respondent is truthfully doing precisely what the Domain Name states, namely, publishing “Viagra Stories.”
Respondent has been recognized as a bona-fide publisher of such stories.
With respect to paragraph 4(a)(iii) of the Policy, Respondent contends that:
Respondent deliberately chose to select a domain name that truthfully represents the subject matter of the corresponding website.
There is no deceit or intent to deceive apparent in the selection of the Domain Name at issue.
Respondent has been specifically identified as a publisher of Viagra stories by a reputable news organization.
The Domain Name was not registered with a bad faith intent, and does not constitute an abusive registration
Respondent’s Supplemental Response
Contentions in General:
It is indisputable that decisions under the Policy in the area of nominative use have been informed by, and have cited, relevant decisional law under the Lanham Act. Both parties to this proceeding are located in the United States, and hence their relative legal rights are in fact determined by the prevailing U.S. law.
Complainant cites paragraph 4(c) of the Policy as permitting nominative use only in noncommercial circumstances.
“Viagra Stories” identifies the content of Respondent’s website, and does not deceive consumers as to the source or origin of the product under discussion, which is expressly identified at the Respondent’s web site.
The law of the United States permits non-deceptive nominative use of a trademark in a commercial context.
The law of the United States is relevant to the determination of this proceeding, and that Policy decisions are not made in a legal vacuum as an independent body of jurisprudence.
Complainant argues that the mention of other products in the marketplace on the Respondent’s website renders the use of the Domain Name in connection with the web site relevant to this Proceeding to be illegitimate. There is nothing illegitimate in identifying other products in the same marketplace as the one primarily under discussion at an informational web site. Indeed, the Federal Trademark Dilution Act expressly exempts “[f]air use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.”
The Complainant cites Respondent’s mention of Levitra, and a link to an external website comprising a “Frequently Asked Questions” resource about that product. That link, and that website are not relevant to the Respondent’s intention and legitimate interest in the Domain Name under discussion here.
At issue in this proceeding is Complainant’s assertion that the Domain Name, which has been used in connection with a substantial website available in multiple languages over the course of years, was registered for misleading purposes in bad faith and that the Respondent has no legitimate interests in use of the Domain Name whatsoever.
Complainant raises issues not fit for resolution under the transfer/no-transfer option, which is the sole, crude tool available to the Panel. Respondent is perfectly willing to address Complainant’s concerns about content in good faith.
Assertions of an “unauthorized” pharmacy is an objection without substance, as Complainant provides no indication of how an “authorized” pharmacy differs from any other duly licensed pharmacy.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Policy, paragraph 4(a).
Identical or Confusingly Similar
The domain name <viagrastories.com> is likely to be confused with Complainant’s well-known trademark VIAGRA. Pfizer is the owner of United States Trademark Registration No. 2,162,548 (issued 1998) for the trademark VIAGRA, as well as numerous registrations around the world. Pfizer’s VIAGRA trademark is a coined and fanciful term having no denotative meaning.
Respondent concedes Complainant’s trademark rights but denies any likelihood of confusion, arguing that the addition of the word “stories” would avoid confusion because internet users would perceive the phrase “Viagra stories” as a “nominative referent” use of a trademark to indicate a place where one can post or read stories about the Viagra product.
The addition of the word “stories” does not eliminate the confusion. The mere addition of a generic or descriptive term is not sufficient to avoid confusion. See, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin WIPO Case No. D2003-0888. (The fact that the word “autoparts” is added to complainant’s trademark does not eliminate the identity, or at least the similarity, between complainant’s trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name.); Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256 (May 6, 2005) (addition of generic word ‘inc’ did not alter confusing similarity of domain name <pfizerinc.com> to complainant’s PFIZER mark); Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115 (February 3, 2003) (addition of generic words “healthcare” to form <bayerhealthcare.com> domain name deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (March 9, 2005) (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain <buylantus.com> “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the complainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (October 28, 2003) (finding domains such as <pepsibasketball.com>, <pepsigames.com>, <pepsihockey.com>, and <pepsisoccer.com> confusingly similar to plaintiff’s PEPSI mark; stating that “[t]hat the mere addition of common terms such as ‘sports,’ ‘basketball’ or ‘soccer’ to the PEPSI mark is of no import”); Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219 (January 10, 2001) (addition of generic term “-games” to mark POKEMAN in domain <www.pokemon-games.com> “does nothing to reduce its confusing similarity with Nintendo’s POKEMON® marks”); Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 (July 25, 2000) (“The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights.”). In particular, numerous panels have specifically held that the mere addition of a generic or descriptive term to the VIAGRA mark results in a domain name that is confusingly similar to Pfizer’s VIAGRA mark. See, e.g., Pfizer Inc. v. Schreiner & Co., WIPO Case No. D2004-0731 (October 24, 2004) (addition of generic words “blu” to form <blu-viagra.com> domain name deemed “confusingly similar to the Complainant’s VIAGRA mark”); Pfizer Inc v. Phillip Pizzurro, WIPO Case No. D2004-0600 (October 2, 2004) (addition of descriptive term “generic” to Pfizer’s VIAGRA mark in domain <viagra-generic.org> found confusingly similar to Pfizer’s VIAGRA trademark); Pfizer Inc v. Generic Viagra Pills, WIPO Case No. D2004-0592 (October 2, 2004) (same for domain <genericviagra.info>); Pfizer Inc v. Kent Gormat aka kgormat, WIPO Case No. D2004-0591 (Oct. 2, 2004) (same for domain <genericviagra.com>); Pfizer Inc v. RegisterFly.com, WIPO Case No. D2004-0586 (October 2, 2004) (same for domain <egenericviagra.com>).
B. Rights or Legitimate Interests.
Complainant must prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Policy 4(a)(ii). Respondent argues that it provides a place where ordinary people can post “commentary” about Complainant’s VIAGRA product. Respondent says this is legitimate nominative fair use. Respondent points to cases recognizing the right of an unauthorized reseller to use the complainant’s mark under principles of nominative fair use.
Complainant says that cases recognizing a right to comment are inapplicable because Respondent is also engaged in commercial activity, including links that lead to sites that sell not only authentic Viagra products but also products of Complainant’s competitors.1 Respondent responds that all on-line pharmacies sell multiple products and, therefore, that it is unreasonable to require that it link only a site where only Viagra product is sold.
The Panel rejects Respondent’s contention. Respondent does much more that merely link to a multi-product site; Respondent itself actively promotes Complainant’s competitors. The main page of the accused site offers a link labeled “Levitra – Levitra FAQ,” which links to a web site at the domain name <levitrafaq.com> that invites users to purchase LEVITRA, a direct competitor of Pfizer’s VIAGRA products. The “www.levitrafaq.com” page offers a purportedly objective comparison of the two products under the heading: “Overall, which is better, Levitra or Viagra?” Respondent does not deny the evidence Complainant offers in its Reply that Respondent owns and operates the “wwwlevitrafaq.com” site. This is important because this evidence undermines Respondent’s contention that all online pharmacies offer multiple brands of drugs and that no online pharmacy offers only Viagra. Given Respondent’s control of the linked pages that promote Complainant’s competitor as an equally satisfactory option, it is disingenuous for Respondent to argue that it could not have linked to a single drug online pharmacy. Whatever the factual truth of that assertion, Respondent controls its own promotional activity.
Respondent’s reliance on Pfizer v. Van Robichaux, WIPO Case No. D2003-0399, is misplaced. In that case, the proposed use by the respondent of the domain name <lipitorinfo.com> did not involve selling the trademarked product, but instead involved representing clients who might sue the trademark holder for injuries caused by the product. To be analogous to the instant facts, the respondent at “www.lipitoinfo.com”would have also offered a link to another page (also owned by respondent) where a competitor of Lipitor could be ordered.
The bona fide offering and fair use provisions of Policy 4(c) are both unavailable because Respondent has linked to domain names that it controls where it describes competitive products as the equal of Complainant’s products. Respondent may have the right to do so under a neutral domain name, but not under a domain name that is confusingly similar to Complainant’s trademark.
C. Registered and Used in Bad Faith
Complainant must prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that Complainant has proved that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the accused site by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the accused site or of products offered on the site. Policy 4(b)(iv). This finding supports our holding of both bad-faith use and registration. Policy 4(b)(preamble).
Respondent argues that:
“The only product advertised for sale on Respondent’s home page is Viagra, the site is directed toward the subject of Viagra, and the mere mention of other products or external links to information about erectile dysfunction in general, does not divert attention from the central focus of the Respondent’s site, which is Viagra and stories about it. Hence, Complainant’s argument that the Respondent demonstrates an intent to divert consumers from buying Viagra does not correspond to what can reasonably be determined by inspection of the Respondent’s website.” Respondent Response p.11.
The Panel rejects Respondent’s argument at page 11 of the Response. It is difficult to look at his home page without getting the impression that he is principally offering Viagra for sale, with the “stories” being ancillary to the business. The home page is headed with an advertisement for nonprescription sales, and the pharmacy link is highlighted in red.
Furthermore, Respondent is wrong to limit our analysis to Respondent’s home page, especially where, as here, Respondent links to other pages that it owns and controls where competitive products are offered. The Panel finds that Respondent has used Complainant’s mark in the accused domain name to promote the sale of competitive products. This is evidence of bad faith registration and use. See, e.g., Pfizer Inc. v. Medlink Telecom GmbH, WIPO Case No. D2002-0547 (August 19, 2002); Pfizer Inc. v. Lorna Kang, WIPO Case No. D2002-0480 (July 3, 2002); Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 (December 10, 2001); Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791. See also, e.g., Casio Keisanki Kabushiki Kaisha v. Kin, WIPO Case No. D2003-0400 (July 15, 2003); Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088 (April 14, 2003); Google, Inc v. wwwgoogle.com, WIPO Case No. D2000-1240 (November 14, 2000).
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 <viagrastories.com> be transferred to the Complainant.
Lawrence K. Nodine
Richard W. Page
Frederick M. Abbott
Dated: March 3, 2006.
1 Complainant relies on, for example, Allstate Ins., WIPO Case No. D2001-1346 (March 14, 2002)( a domain name used to host a website offering not only opinions and commentary on Complainant’s business, but also “offering links to other commercial services” is not a legitimate fair use because Paragraph 4(c)(iii) of the Policy requires such use to be both “noncommercial” and “without intent for commercial gain to misleadingly divert consumers.”) and Lilly ICOS LLC v. Redzone, WIPO Case No. D2005-0534 (July 4, 2005)( use of the domain name cialisprescrips.com>to sell not only the CIALIS product but also goods competing with CIALIS (including Pfizer’s directly competing VIAGRA medicine) “not a ‘bona fide offering of goods’ or a ‘fair use of the domain name’ and is more akin to ‘bait and switch.’”).