The Complainants are Pfizer Inc. and Pfizer Ireland Pharmaceuticals of New York, New York, United States of America, represented by Moses & Singer LLP, United States of America.
The Respondent is E-Promote, San Francisco, California, United States of America.
The disputed domain name <lipitor.org> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2009. On April 23, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 23, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 May 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 29, 2009.
The Center appointed Paul E. Mason as the sole panelist in this matter on June 8, 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.
LIPITOR is the well-known name of a cholesterol reducing drug developed by the Complainant. The Complainant has used the LIPITOR trademark in commerce since 1997 and has owned the United States trademark registration for LIPITOR since June 24, 1997, as well as numerous registrations for this mark around the world as shown in Exhibit 3 of the Complaint.
According to Paragraph 3 of the Complaint, “Pfizer is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. Pfizer discovers, develops, manufactures and markets leading prescription medicines for humans and animals. Pfizer has expended substantial sums and extensive resources on the research, development and marketing of human pharmaceuticals and animal health products and maintains one of the world's largest privately funded biomedical research organizations. In 2008, Pfizer reported revenues of $48.3 billion. Today, Pfizer has more than 10 medicines that are leaders in their therapeutic categories, one of which is LIPITOR.”
Paragraph 4 of the Complaint asserts that Pfizer's worldwide sales under the LIPITOR mark were approximately US D12.9 billion in 2008, as illustrated by a company internal spreadsheets in its Exhibit 5.
According to Paragraph 18 of the Complaint, Pfizer owns the domain name <lipitor.com> and uses it to host a website providing public information about its Lipitor product (see Exhibit 6 of Complaint). The Panel was not informed as to when Pfizer acquired this particular domain name or when it set up its website.
As a result of these activities and investments by Pfizer, LIPITOR has become famous worldwide and enjoys “famous mark” status.
On March 13, 2009 the Respondent registered the domain name <lipitor.org>, without any authorization from the Complainant. The Complainant contends that the domain name is identical to Complainant's trademark. The Respondent had no authorization from Pfizer or legitimate interest to register this domain name. And the Respondent has registered and been using the domain name in bad faith.
Bad faith registration is shown by the fact that the domain name was registered well after the Complainant's famous mark, indicating an obvious desire by the Respondent to “piggyback” on the worldwide goodwill generated by that mark. Furthermore, there is a significant trail of UDRP cases with this particular Respondent which it has lost based on cybersquatting or similar grounds.
Bad faith use of the domain name is indicated here as the domain name resolves to a website which offers competing products to LIPITOR using an online pharmacy, for which Respondent receives click-through revenue.
The Respondent did not reply to the Complainant's contentions. Even though Respondent has “defaulted” in UDRP terminology, this does not mean it automatically loses. The Complainant must still prove all necessary elements of its case to the Panel.
There can be no question regarding this point. For the purposes of the Policy the domain name is identical to the Complainant's trademark LIPITOR.
There has been no indication whatsoever of any rights or legitimate interests of Respondent in the domain name. The prevailing view on this issue in UDRP cases is while the overall burden of proof rests with the Complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, (transfer ); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (transfer).
In the present case, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests which Respondent has not rebutted.
As noted in Section 5 above, bad faith registration is shown by the fact that the domain name was registered well after the Complainant's well-known mark, indicating in these circumstances a desire by Respondent to “piggyback” on the worldwide goodwill generated by that mark. Given the notoriety of the LIPITOR trademark, it is highly unlikely that the Respondent did not know of the Complainant's trademark and rights therein. Furthermore, there is a trail of UDRP cases with this particular Respondent which it has lost based on cybersquatting grounds, indicating a pattern of this kind of behavior.
A related question here is whether the mere use of a different top-level domain extension would alter the result. Numerous UDRP cases have held that it makes no difference in terms of establishing bad faith registration of a domain name whether a respondent varies the top-level extension from the “.com” already owned by a complainant to an “.org” or a “.net” extension.
As further noted in Section 5 above, bad faith use of the domain name is clearly indicated here as the domain name resolves to a website which offers competing products to LIPITOR using an online pharmacy. A visit by the Panel to “www.lipitor.org” on the date of this decision indicates the Respondent's online pharmacy system is still being used much in the way as it was depicted in Complainant's Exhibit 7 dated April 14, 2009.
Treading upon the goodwill built by another in order to confuse the public and sell competing products is the essence of bad faith registration and use under the UDRP.
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, <lipitor.org> be transferred to the Complainant.
Paul E. Mason
Dated: June 9, 2009