The Complainant is Pfizer Inc. of New York, United States of America, represented by Kaye Scholer, LLP, United States of America.
The Respondent is PrivacyProtect.org/ViagraySalud.com, De Candido Adrian Gustavo of Moergestel, Netherlands, and of Mendoza, Argentina respectively.
The disputed domain name <viagrachile.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2008. On December 23, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name.
On December 26, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
The Complainant filed an amendment to the Complaint on January 7, 2009. 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” or “UDRP”), 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 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 30, 2009.
The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on February 9, 2009. 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 following information is summarized from the Complaint:
- The Complainant is one of the world's largest pharmaceutical companies in the world and maintains operations in more than 150 countries.
- Pfizer Inc. owns the registered trademark VIAGRA, United States Trademark Registration No. 2,162,548, which was issued June 2, 1998.
- Pfizer's wholly owned subsidiary Pfizer Products Inc. owns the registered trademark VIAGRA in Chile, Registration No. 781,291, which was issued on November 12, 1996.
- Pfizer uses the well-known VIAGRA mark as the name of, and in connection with the worldwide sale of, its medication for erectile dysfunction (sildenafil citrate).
- Pfizer and its affiliates own the trademark registrations for the brand VIAGRA in more than 140 countries.
- Sildenafil citrate is lawfully marketed in the United States and in numerous other countries exclusively under Pfizer's registered trademark VIAGRA, which is a well-known and famous trademark throughout the world.
No response was filed by the Respondent within the time specified in the Notification of Complaint and Commencement of Administrative Proceedings. As of the date of this decision, no response has been filed by the Respondent. Consequently, this Panel will issue its resolution based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any response from Respondent (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004).
The disputed domain name, <viagrachile.com> (the “Domain Name”), was registered on October 26, 2007, and at the time this resolution was rendered same directed to the website “www.farma-total.cl” in which the product Sildenafil Citrate and other similar ones were offered.
Complainant contends that its VIAGRA medication was approved by the United States Food and Drug Administration (“FDA”) on March 27, 1998, and the mark has been used on or in connection with the Sildenafil Citrate product in the United States since April 6, 1998.
Complainant contends that same and its affiliates own trademark registrations for the VIAGRA mark around the world, and Complainant provided a seven-page list of trademark registrations for VIAGRA that it states are “valid, unrevoked and uncancelled”.
Complainant contends that the FDA's approval of the VIAGRA medication in 1998, was highly publicized, including a front-page article in The New York Times the following day.
Complainant contends that numerous UDRP decisions have recognized its trademark rights in VIAGRA, citing, among others, Pfizer Inc v. CheapViagraStore, WIPO Case No. D2005-0159; Pfizer Inc. v. Carlos Rosario, WIPO Case No. D2005-0067; Pfizer Inc v. Phillip Pizzurro, WIPO Case No. D2004-0600; Pfizer Inc v. Generic Viagra Pills, WIPO Case No. D2004-0592; Pfizer Inc v. Kent Gormat aka kgormat, WIPO Case No. D2004-0591; Pfizer Inc v. RegisterFly.com, WIPO Case No. D2004-0586; Pfizer Inc. v. Order Viagra Online, WIPO Case No. D2002-0366; Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793; Pfizer Inc. v. Myviagra /Wilbert Smith, WIPO Case No. D2002-0463.
Complainant contends that Respondent registered the Domain Name “seeking to capitalize on the fame of the Complainant's VIAGRA trademark, and recognizing the importance of the Internet as a means of communication between the Complainant and the public, registered without authorization the domain name <viagrachile.com>, on or about October 26, 2007”. And it also contends that “the domain name resolves to a web site that misuses and infringes Pfizer's valuable and famous VIAGRA trademark by advertising the sale of, in addition to purportedly-genuine VIAGRA tablets, products not made or authorized by Pfizer, including the CIALIS and LEVITRA products that compete with Pfizer's VIAGRA product”.
The Respondent did not reply to the Complainant's contentions.
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 Complainant has rights;
(ii) 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).
Based upon the registrations cited by Complainant (and the certificate for United States trademark Reg. No. 2,162,548 and the trademark certificate for Chile Reg. 781,291 provided as an exhibit), the Panel is convinced that Complainant has rights in the mark VIAGRA.
The disputed domain name is <viagrachile.com>. It is well established that the gTLD suffix “.com” or similar, being an integral and necessary part of a domain name, may be disregarded in the determination of confusing similarity.
What remains, “viagrachile”, comprises two parts: “viagra”, and “chile”. The key component is the word “viagra”, which clearly is identical to the Complainant's trademark. The word “chile” designates the country located in South America. Many panels have held that the addition of a geographical description after a trademark is insufficient to avoid confusing similarity.
In this case, the term “Viagra” remains the dominant, distinctive component of the domain name (Pfizer, Inc. v. Carlos Rosario WIPO Case No. D2005-0067). Therefore, the combined expression, “viagrachile”, in the given circumstances will almost certainly be taken as suggesting a website or other URL whice is a Chilean source for Viagra. A similar conclusion was reached in Piaggio & C. SpA v. Philip K. Water J.,. WIPO Case No. D2004-0959.
In view of the foregoing, the addition to the geographic description “chile” after the term “viagra” and the appending of the suffix “.com” do nothing to dispel the significance of the term “viagra” as the distinctive component of the domain name.
Consequently, the Panel finds confusing similarity between the disputed domain name and the Complainant's trademark in the terms of paragraph 4(a)(i) of the Policy.
In accordance with prior decisions under the Policy, “a complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, “http://www.wipo.int/amc/en/domains/search/overview/index.html” (visited February 22, 2008). See case Croatia Airlines d.d. v. Modern Empire Internet Lt. WIPO Case No. D2003-0455.
Accordingly, as a result of Complainant's supported allegations which have established its prima facie case and without any evidence of Respondent's rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, 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.”
The Panel agrees with a prior decision under the Policy finding bad faith and also involving the VIAGRA trademark that “[i]t is absolutely inconceivable to this Panel that, when the Respondent chose and registered the contested domain name… it had not been fully aware of the Complainant's mark ‘VIAGRA' and particularly the widespread reputation which that mark had attained as a result of the Complainant's widespread marketing efforts for its sildenafil citrate product and the extensive resulting publicity.” Pfizer Inc. v. Order Viagra Online, supra.
As mentioned above, the Respondent's website leads to several VIAGRA products and other competitors' products that are offered for sale. Taking together this evidence and the apparently unique and creative nature of the trademarked name VIAGRA, it is not possible to escape the conclusion that the Respondent has knowingly appropriated the Complainant's trademark without authorization.
The overall intended function of the Respondent's website is clearly to cause Internet users to be redirected to the websites of sellers of Viagra, or of generic versions containing similar ingredients to Viagra, or products offered as alternatives to Viagra and it may reasonably be concluded that the Respondent has set up this redirection system with the expectation of some financial return.
Consequently, it may reasonably be concluded that the disputed domain name contains the word “viagra” in order to attract Internet users searching for that term via search engines, including users who expect to be taken to the Complainant's authentic website or to sites endorsed by the Complainant. Thus, the Respondent is trading illegitimately on the Complainant's trademark in order to attract visitors by initial interest confusion as to the affiliation or endorsement of the website. This is, the Respondent is taking advantage of the Viagra products for commercial gain. Guardant, Inc. v. youngcho kim, WIPO Case No. D2001-0043 and Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600.
Therefore, the Panel is convinced of the existence of bad faith registration and use, and Complainant has proven the third of the three elements required by the Policy.
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, <viagrachile.com> be transferred to Complainant.
Enrique Ochoa de González Argüelles
Dated: February 22, 2009