WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Noblemay, George May
Case No. D2007-1025
1. The Parties
The Complainant is Pfizer Inc., New York, New York, United States of America, represented by Kaye Scholer, LLP, United States of America.
The Respondent is Noblemay, George May, New South Wales, Umina, Australia.
2. The Domain Name and Registrar
The disputed domain name <viagraoysters.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2007. On July 17, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name in issue. On July 18, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the identity of the registrant was Domains by Proxy Inc. and providing the contact details. On July 31, 2007, the WhoIs information with respect to the domain name in issue changed to indicate that the Respondent was in fact the registrant. In response to this, the Complainant filed an amendment to the Complaint on August 1, 2007, changing the name of the Respondent. 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 the Respondent of the Complaint, and the proceedings commenced on August 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2007.
The Center appointed Adam Samuel as the sole panelist in this matter on October 12, 2007. 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 Complainant is one of the world’s largest pharmaceutical manufacturers and sellers and maintains operations in more than 150 countries. The Complainant owns the registered trademark VIAGRA, U.S. Trademark Registration No. 2,162,548, which was issued June 2, 1998. Pfizer also owns numerous registrations for the VIAGRA mark throughout the world. Pfizer uses the well-known VIAGRA mark as the name of, and in connection with the worldwide sale of, its medication for erectile dysfunction.
5. Parties’ Contentions
What follows in this section are the Complainant’s submissions. To avoid repetition, the Panel has not begun each new point with a statement that “the Complainant submits”. It does not follow from this that the Panel necessarily accepts each and every point or considers it necessary to express an opinion on any particular argument.
The Complainant is the owner of United States Trademark Registration No. 2,162,548 for the trademark VIAGRA, issued on June 2, 1998 on the Principal Register maintained by the United States Patent and Trademark Office. The Complainant and its affiliates also own trademark registrations for the VIAGRA mark in approximately 140 countries around the world. The Complainant’s VIAGRA trademark has become famous throughout the world as designating the Complainant’s brand of oral therapy for erectile dysfunction.
The Complainant’s VIAGRA trademark is a coined and fanciful term having no denotative meaning. The VIAGRA trademark is universally recognized and relied upon as identifying the Complainant as the sole source of the drug, as well as distinguishing the Complainant’s product from the goods and services of others. As a result, the VIAGRA trademark has acquired substantial goodwill and is an extremely valuable commercial asset.
The Respondent registered without authorization the <viagraoysters.com> domain name, on or about March 15, 2007. The domain name misuses and infringes the Complainant’s VIAGRA trademark by linking to a website promoting a business that purportedly intends to sell “Viagra Oysters,” solicits investors and distributors for that business, and contains for-profit links to other commercial goods and services.
The disputed domain name (1) incorporates wholesale the famous and well-known VIAGRA mark, (2) merely appends to the VIAGRA mark the generic term “oysters” (3) is confusingly similar to Complainant’s own domain name <viagra.com>, at which Complainant operates a website, and (4) is so clearly similar to Complainant’s VIAGRA mark that it is likely to cause confusion among Complainant’s customers and the consuming public.
The mere addition of a generic or descriptive term to the VIAGRA mark at issue here results in a domain name that is confusingly similar to the Complainant’s VIAGRA mark. Because the subject domain name wholly replicates that mark, with only the addition of the generic term “oysters”, the domain name is identical and confusingly similar to Complainant’s mark.
The Complainant is not affiliated in any way with the Respondent and has never authorized the Respondent to register or use the domain names at issue or the VIAGRA mark. The Respondent has no right or legitimate interest in the mark VIAGRA or in the subject domain name. The Respondent is not commonly known by the name “viagra”, “viagraoysters” or any variation thereof. The Complainant’s adoption and registration of the marks VIAGRA in the United States and elsewhere precedes the Respondent’s registration of the domain name in issue on March 15, 2007. Moreover, given the widespread publicity and fame of the VIAGRA mark and the Respondent’s incorporation of Complainant’s VIAGRA mark in the Respondent’s domain names and repeated references to the VIAGRA mark and product in the Respondent’s websites, it is indisputable that the Respondent had knowledge of the Complainant’s famous VIAGRA mark prior to the registration of the disputed domain names.
The Respondent has intentionally registered the domain name in issue for the purpose of making illegitimate or unfair use of the Complainant’s marks by misleading and diverting Internet users who are seeking information about the Complainant and its products to the Respondent’s for-profit website, and by otherwise attracting visitors and business by use of the VIAGRA mark so as to sell unauthorized infringing merchandise bearing the VIAGRA mark.
The Respondent is not using the subject domain name in connection with a bona fide offering of goods or services. The unauthorized use of a trademark in a domain name, in order to generate Internet traffic for the for-profit sale of merchandise or services, is not a bona fide offering of goods or services within the meaning of the UDRP. Thus, Respondent’s unauthorized use of the VIAGRA trademark in disputed domain name to generate traffic to its commercial site promoting a business bearing the VIAGRA trademark cannot constitute a bona fide offering of goods or services. Not only does the domain name itself infringe the Complainant’s rights in its VIAGRA trademark, but the goods available for sale on Respondent’s site bear the VIAGRA trademark in violation of the Complainant’s well established trademark rights in the VIAGRA mark.
The Respondent also cannot argue that he is entitled to use the domain name by virtue of his proposed sale of oysters that purportedly have been fed Viagra medicine. The Respondent has no right to use the VIAGRA mark for a website that is used to sell products unauthorized by the Complainant, even if they have purportedly been fed VIAGRA.
Indeed, even if the Respondent’s websites exclusively sold genuine Viagra medicine, the Respondent’s use of its domain name would violate the UDRP. Although other decisions hold that a reseller of genuine product can use a manufacturer’s mark under certain narrow circumstances, even those decisions require that (1) the site actually offer the goods or services at issue, (2) the site be used to sell only the trademarked goods and not the goods of competitors, (3) the site accurately disclose the registrant’s relationship with the trademark owner, and (4) that the respondent is not trying to corner the market in domain names that reflect the trademark Here, the Respondent fails at least the first three of these elements: (1) the site does not offer Viagra medicine, but oysters and business investments not authorized or sponsored by the Complainant; (2) the site is being used to advertise goods and services other than Viagra medicine; and (3) the site does not in any way disclaim an affiliation with the Complainant or the Viagra product.
Nor is the Respondent making any legitimate non-commercial use. The Respondent uses and has used the challenged domain name for a for-profit website that infringes and trades on the VIAGRA trademark and generates revenue for the Respondent and his associates. The Respondent’s prior “viagraoysters.com” website plainly is commercial in nature, offering merchandise and seeking investors for-profit. The Respondent has no rights to use the VIAGRA mark for a domain name that is used for a for-profit enterprise. Moreover, the absence of any disclaimer on the “viagraoysters.com” site further confirms that the Respondent’s use of the disputed domain name was not legitimate.
The Respondent cannot show that its registration and use of the disputed domain name constitutes legitimate use within the meaning of the Policy. The Respondent has no right or legitimate interest in the domain name in issue.
The Respondent, recognizing the world famous renown of the VIAGRA mark, and the value of the Internet to the Complainant in enhancing its ability to communicate with its target audience, registered and uses the domain name disputed domain name, which wholly incorporates the Complainant’s VIAGRA mark and merely adds the generic term “oysters” so as to attract and mislead web users who are searching for information about the Complainant and its Viagra product, and to trade on the reputation of the VIAGRA mark and product to attract potential customers and investors. Given the lack of a legitimate basis for such use of the Complainant’s VIAGRA mark as a domain name, the only reasonable inference is that Respondent has acted with a bad faith intent to profit from the Complainant’s name and reputation.
As an initial matter, the Respondent’s lack of rights or legitimate interest in the use of the domain name renders the issue of bad faith registration unnecessary to even be considered. Moreover, Respondent’s bad faith use of a 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. The Respondent’s bad faith registration and use is exemplified by the following.
The Complainant’s VIAGRA mark is an invented and coined mark that has a strong worldwide reputation, of which the Respondent was undoubtedly aware at the time the subject domain names were registered. The Respondent’s repeated references to the Viagra product on its websites confirm the Respondent’s awareness of the Complainant’s VIAGRA mark. Moreover, by virtue of the Complainant’s registration of the VIAGRA mark in the United States and other jurisdictions, the Respondent had constructive knowledge of the Complainant’s rights in the mark at the time the domain was registered.
The Respondent registered a domain name that is intended to be and is confusingly similar to the Complainant’s VIAGRA mark, both visually and aurally. It is settled that the registration of a domain name incorporating a well-known, widely recognized mark is itself evidence of bad faith registration, and, on this basis, several panels have found bad faith registration of domain names incorporating the Complainant’s VIAGRA mark.
The disputed domain name deliberately and misleadingly includes wholesale the Complainant’s registered mark VIAGRA, which is used to identify the Complainant as the sole source of the drug and distinguish the Complainant’s product from the goods and services of others and adds a generic or descriptive word that by its laudatory nature only reinforces the impression that the domain name is sponsored by or affiliated with the Complainant.
The Respondent is not, and never has been, licensed to use the VIAGRA mark.
The fourth of the identified “bad faith” factors enumerated in UDRP Rule 4(b)(iii) applies with particular force here. The rule states that it is bad faith to register and use a domain name to intentionally attract Internet users to the Respondent’s sites for commercial gain “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s site or “of a product or service” on the Respondent’s site. The Respondent has registered and used the disputed domain name intentionally to misdirect and divert customers looking for information about the Complainant’s products to the Respondent’s for-profit which offers investment opportunities, advertises the Respondent’s oysters and also provides for-profit links to other goods and services. This creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the goods and services which the Respondent’s site offers, and trades on the good will and reputation of the Complainant’s famous VIAGRA mark.
Respondent has registered the disputed domain name through a proxy service to conceal his true identity, and his use of such incomplete and/or false registration information is further evidence of bad faith registration of the domain name. The Respondent’s actions are intentional, willful and in bad faith, and were committed with full knowledge of the ownership by the Complainant of the VIAGRA mark and the Complainant’s exclusive rights to use and license such mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it 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.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its registration with the United States Patent and Trademark Office of the trademark VIAGRA dating back to June 1998. A July 2007 search of that Office shows that the trademark registration still belongs to the Complainant.
In general, the addition of a generic word to a trademark, particularly one consisting of a word, such as Viagra, which has no independent meaning, does not remove the confusing similarity that would exist otherwise between the disputed domain name and the Complainant’s trademark. The word “Viagra” has no meaning away from the pharmaceutical field.
In general, the addition of generic word would tend to suggest that the trademark owner was continuing to exploit its mark by branching out into the generic activity or product concerned.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is no evidence that the Complainant has authorized the Respondent to use any of its trademarks. There is little or no evidence to suggest that the Respondent has ever asserted any rights or legitimate interests in the name “Viagra”. Again, the absence of any ordinary meaning for the word would suggest otherwise.
For these reasons, and in the absence of evidence to the contrary or any Response in this case, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name in issue.
C. Registered and Used in Bad Faith
The domain name was registered nine years after the Complainant’s trademark registration for VIAGRA. The Complainant’s mark under consideration here is so well-known that the Respondent must have been well aware that its domain name was using someone else’s trademark. Indeed, one mention of Viagra in the website text uses the indication that VIAGRA is a registered trademark.
Currently, the domain name resolves to a website that promotes the reselling of domain names. According to the Complainant’s uncontested evidence, it was used to invite customers to invest in an oyster growing venture and presumably registered for this purpose. The website also used to describe the development of oysters through the provision of Viagra. One key message appears to have been that the combination of Viagra and oysters could increase the likelihood of a more effective remedy for erectile dysfunction.
Under Paragraph 4(b) of the Policy, it is evidence of bad faith that “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.”
The Respondent appears to have used a well-known name which it knew was the subject of a registered a trademark to attract visitors to its site with a view to persuading them to invest in his business venture. This had nothing to do with the owners of the mark. However, in choosing that mark as the key part of the domain name, the Respondent sought to make people interested in the Complainant’s products look at the website to which the dispute domain name resolves. In the absence of any explanation from the Respondent, the Panel concludes that this constitutes both registration and use 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, <viagraoysters.com> be transferred to the Complainant.
Dated: October 26, 2007