The Complainant is Pfizer Inc., New York, United States of America, represented by Kaye Scholer, LLP, United States.
The Respondent is Worldwide Opportunities, TurnkeyWorld.com of Anguilla, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).
The disputed domain name <viagra.biz> is registered with UdomainName.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2009. On April 3, 2009, the Center transmitted by email to UdomainName.com LLC a request for registrar verification in connection with the disputed domain name. On April 3, 2009, UdomainName.com LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on April 8, 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 April 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on April 30, 2009.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on May 5, 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.
Pfizer Inc is among the largest pharmaceutical companies in the world with global operations in more than 150 countries. Pfizer discovers, develops, manufactures and markets leading prescription medicines for human and animals. In particular, Pfizer has expended millions of dollars and extensive resources on research, development and marketing of VIAGRA brand sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction.
Pfizer's VIAGRA brand sildenafil citrate product was approved by the United States Food and Drug Administration (the “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. Even prior to FDA approval, Pfizer's VIAGRA brand sildenafil citrate received enormous media attention, including a cover story in Newsweek Magazine and discussions on such popular television programs as “20/20” and “Today”. The approval in 1998 was highly publicized, including front page coverage in the New York Times the following day, and feature articles in other major publications such as USA Today.
The United States trademark VIAGRA, (registration No. 2,162, 548 was issued on June 2, 1998). The mark is owned by the Complainant or by its wholly owned subsidiaries. Pfizer and its affiliates also own trademark registrations for the VIAGRA mark in approximately 140 countries around the world.
In June 1997, the Complainant registered the domain name <viagra.com> and maintains an active web site at the URL “www.viagra.com”.
The domain name <viagra.biz> was created on March 12, 2009. It directs to a parking web site that offers on its first page headings about themes concerning directly the VIAGRA product's characteristics.
The Complainant alleges that the medication at issue was highly publicized and has also been the subject of intense media attention, public scrutiny and commentary throughout the world.
Numerous UDRP decisions have recognized Complainant's well-established rights in its famous VIAGRA mark. See, e.g., Pfizer Inc. v. Jeff Ferris, WIPO Case No. D2006-1242 (November 21, 2006) (VIAGRA “is both a strong and famous mark”); Pfizer Inc. v. Pretzel Publishing, WIPO Case No. D2005-1329 (March 3, 2006); Pfizer Inc. v. CheapViagraStore, WIPO Case No. D2005-0159 (March 30, 2005); Pfizer Inc. v. Carlos Rosario, WIPO Case No. D2005-0067 (Mar. 28, 2005); Pfizer Inc v. Phillip Pizzurro, WIPO Case No. D2004-0600 (October 2, 2004); Pfizer Inc v. Generic Viagra Pills, WIPO Case No. D2004-0592 (October 2, 2004); Pfizer Inc v. Kent Gormat aka kgormat, WIPO Case No. D2004-0591 (October 2, 2004); Pfizer Inc v. RegisterFly.com, WIPO Case No. D2004-0586 (October 2, 2004); Pfizer Inc. v. Order Viagra Online, WIPO Case No. D2002-0366) (July 11, 2002); Pfizer Inc. v. Martin Marketing, WIPO Case No. D2002-0793 (November 15, 2002); Pfizer Inc. v. Myviagra/Wilbert Smith, WIPO Case No. D2002-0463 (July 25, 2002). Accord, Pfizer, Inc. v. Y2K Shipping & Trading, Inc., 2004 U.S. Dist. LEXIS 10426, *31 (S.D.N.Y. March 30, 2004) (finding that defendant's competing erectile dysfunction product diluted Pfizer's “famous VIAGRA mark”).
A. Identity or confusing similarity
The Complainant explains that the Respondent, 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 <viagra.biz>, on or about March 12, 2009.
The domain name redirects visitors to a web site at “http://searchportal.information.com”, with the title “Erectiledysfunction.biz”, that contains pay-per-click links to numerous web sites that advertise and sell products not made or authorized by Pfizer, including the LEVITRA product that competes with Pfizer's VIAGRA product as well as various products purportedly offered for the treatment of erectile dysfunction.
The Complainant contends that the domain name <viagra.biz> is identical or confusingly similar to the mark VIAGRA, in which Pfizer has rights, because the disputed domain name wholly incorporates Pfizer's registered VIAGRA mark. Furthermore, it considers that the domain name is so clearly similar to its domain name <viagra.com> and to its trademark VIAGRA, that it is likely to cause confusion among the Complainant's customers and the consuming public.
B. Rights or legitimate interests in the domain names
The Complainant is not affiliated in any way with Respondent and has never authorized Respondent to register or use the domain name at issue or the VIAGRA mark. The Respondent registered the domain name knowing of the Complainant's mark and without authorization or license from the Complainant. Therefore, the Respondent has no right or legitimate interest in the VIAGRA mark (or any variant spelling) or in the disputed domain name.
The Complainant's adoption and registration of the mark VIAGRA in the United States and throughout the world precedes Respondent's registration in March, 2009 of the disputed domain name.
The Complainant considers that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Rather, it is apparent that Respondent has intentionally registered <viagra.biz> explicitly for the purpose of making illegitimate or unfair use of Pfizer's marks by using the domain name to collect revenue promoting web sites that advertise and sell products that are not made or authorized by Pfizer and that are offered for the same uses as Pfizer's VIAGRA product.
The Respondent's lack of rights or legitimate interests is confirmed by the Respondent's use of the disputed domain name for a for-profit web site promoting products that compete directly with Pfizer's products. Such a use is not in connection with the bona fide offering of goods and services.
C. Registration and use in bad faith
The Respondent is well aware of the vast and valuable goodwill and reputation represented and symbolised by the VIAGRA trademark. According to the Complainant, given the lack of a legitimate basis for such use of Pfizer' VIAGRA mark as a domain name, the only reasonable inference is that the Respondent has acted with a bad faith intent to profit from Pfizer's name and reputation.
C.1 Registration in bad faith
The Respondent's bad faith registration is exemplified by the following:
a. Pfizer'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 name was registered. The Respondent's repeated references to erectile dysfunction and products that compete with VIAGRA confirm Respondent's awareness of Pfizer's VIAGRA mark. Moreover, by virtue of Pfizer's registration of the VIAGRA mark in the United States and other jurisdictions, the Respondent had constructive knowledge of Pfizer's rights in the mark at the time the domains were registered.
b. The Respondent, aware of the fame and goodwill associated with the VIAGRA mark worldwide, registered a domain name that is intended to be and is identical or confusingly similar to Pfizer's 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 Pfizer's VIAGRA mark.
c. The domain <viagra.biz> deliberately and misleadingly includes wholesale Pfizer's registered mark VIAGRA, which is used to identify Pfizer as the sole source of the drug and distinguish Pfizer's product from the goods and services of others.
d. the Respondent is not, nor ever has been, a representative of Pfizer or licensed to use the VIAGRA mark.
C.2 Use in bad faith
VIAGRA is a world famous mark that is recognized worldwide by consumers and professionals.
The Respondent, with knowledge of Pfizer's rights in the VIAGRA mark, is using the <viagra.biz> domain name to redirect visitors to a for-profit web site that generates revenue by promoting web sites selling Pfizer's competitors' products. Numerous UDRP decisions hold that use of a complainant's mark (including the VIAGRA mark at issue here) to generate visitors to such a for-profit site constitutes bad faith. See Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285 (May 11, 2005) (respondent's receipt of click through fees from links on its web site is “clear evidence of bad faith”); Pfizer Inc. v. Alex Schreiner/ Schreiner & Co., WIPO Case No. D2004-0731 (October 24, 2004) (misdirecting browsers of BLU-VIAGRA.COM to online pharmacy purportedly selling “genuine Viagra from Pfizer” deemed “bad faith”); Pfizer Inc. v. Phillip Pizzurro, supra, (finding bad faith where domain VIAGRA-GENERIC.COM was “used in connection with the promotion and sale of competing products”); Pfizer Inc. v. Generic Viagra Pills, WIPO Case No. D2004-0592, supra, (same for GENERICVIAGRA.INFO). See also Yahoo! Inc. v. Carrington, NAF Case No. 184899 (October 20, 2003) (redirecting users to competing web sites of Complainant's while earning profits in the form of referral found to be bad faith use); Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128 (January 27, 2003) (bad faith use to redirect users likely seeking complainant's web sites to unaffiliated sites where respondent receives payment from the operators of those sites); Williams-Sonoma, Inc. v. Zuccarini d/b/a Country Wali, WIPO Case No. D2002-0582 (August 9, 2002) (bad faith use where respondent profited by redirecting users to other commercial web sites for commercial gain).
UDRP panels also routinely hold that use of a mark in a domain name to promote the sale of products in competition with the mark owner's products, as the Respondent here is doing, constitutes bad faith. 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 (Casio Computer Co., Ltd.) v. Jongchan Kim, 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 and Jimmy Siavesh Behain, WIPO Case No. D2000-1240 (November 14, 2000).
Numerous UDRP decisions also hold that it is bad faith to use a complainant's mark to generate visitors to a for-profit site such as a purported search engine or portal site like the one at issue here. See Pfizer Inc. v. Fizer Inc., supra, (May 11, 2005); Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256 (May 6, 2005); Pfizer Inc. v. NA, WIPO Case No. D2005-0072 (April 12, 2005); Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299 (April 28, 2005).
As a direct consequence 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 the subject web site. The Respondent's purposefully deceptive domain name anticipates, relies upon on and profits from this consumer confusion or mistake and constitutes bad faith use of the domain name. See Policy paragraph 4 (b)(iv).
The fourth of the identified “bad faith” factors enumerated in UDRP Rule 4(b)(iv) 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 web 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 sites or “of a product or service” on Respondent's sites. Here, as set forth above, the Respondent has registered and is using the subject domain name intentionally to misdirect and divert customers looking for information about Pfizer and its VIAGRA product to a for-profit web site that promotes web sites selling non-Pfizer products that are in competition with Pfizer's product. This creates a likelihood of confusion with Pfizer's marks as to the source, sponsorship, affiliation, or endorsement of the site to which the domain name resolves, the online retailers to which that site links, and the non-Pfizer products sold on those sites.
The Respondent's actions are intentional, wilful and in bad faith, and were committed with full knowledge of the ownership by the Complainant of the VIAGRA trademark and the Complainant's exclusive rights to use and license such mark.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Sole Panelist to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the complainant's trademark or service mark; 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 Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has established rights in the VIAGRA mark through its registration and use in the United States and elsewhere.
The disputed domain name in this case is <viagra.biz>.
The Panel concludes that the Respondent's domain name is identical to the Complainant's VIAGRA mark for purposes of paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy provides that:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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 non-commercial 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 Respondent did not answer the Complaint in order to contest the Complainant's position.
The Respondent is not affiliated with the Complainant and the Complainant has not authorized the Respondent to use the Complainant's trademark VIAGRA; also the Complainant has not granted any license or otherwise permitted to the Respondent to use its trademark.
Furthermore, the Respondent is not known under the name VIAGRA or any similar name.
The Complainant has provided evidence of its rights in the VIAGRA trademark and that the disputed domain name was registered by the Respondent on or about March 12, 2009. At the time of the registration, the Complainant had acquired a considerable reputation in the VIAGRA trademark in respect of a drug addressing erectile dysfunction throughout the world.
The fact that the disputed domain name gives access to parking website implies that the Respondent is getting profits. As alleged by the Complainant, this website provides links to various online pharmacies that sell products directly competing with Pfizer's VIAGRA product as well as various products purportedly offered for the treatment of erectile dysfunction.
The Respondent must be aware of the VIAGRA trademark and is trying to take advantage of its reputation. This kind of use does not constitute a “legitimate non-commercial or fair use of the domain name”.
Therefore, the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant.
Paragraph 4(b) of the UDRP Policy sets out examples of circumstances that will be considered by a panel to be evidence of the bad faith registration and use of a domain name. It provides that:
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 web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The fame of the Complainant's mark has to be taken into consideration in the appreciation of the Respondent's bad faith (See, for example: AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088, “Bad faith can be presumed based on the fame of Complainant's marks, such that the Respondent was aware or should have been aware of Complainant's well-known marks and claims of rights thereto”).
The VIAGRA trademark is worldwide known and has to be protected against cybersquatting.
The Complainant uses the VIAGRA trademark in order to be identified as the sole source of the medication provided under that trademark. Therefore, the public, when visiting the web site at the domain name <viagra.biz> may be mistaken as to the source of information and origin of the products advertised on the web site.
The Respondent would seem to profit from pay-per-click revenue generated by the web site available from the disputed domain name, which constitutes commercial gain. This is further evidence of the Respondent's bad faith use pursuant to Policy paragraph 4(b)(iv). See Asian World of Martial Arts Inc v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Respondent is seeking to capitalize on the notoriety of the VIAGRA trademark.
The Respondent's use of <viagra.biz> is in violation of paragraph 4(b))(iv) of the Policy as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site.
The Panel's opinion is that there is obvious evidence that the Respondent registered and used the disputed domain name 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, <viagra.biz> be transferred to the Complainant.
Dated: May 20, 2009