WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. wwwviagra.com
Case No. D2001-1455
1. The Parties
The Complainant in this administrative proceeding is Pfizer Inc., a Delaware corporation with its principal place of business in New York, NY, USA.
The Respondent is wwwviagra.com, also known as Mike Anders, of Adelaide, South Australia, Australia.
2. The Domain Name and Registrar
This dispute concerns the domain name identified below:
<wwwviagra.com> (the "Domain Name")
The registrar with whom the domain name is registered is CORE Internet Council of Registrars, located in Geneva, Switzerland.
The Domain Name was initially registered on March 21, 2000.
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on December 14, 2001, and in hardcopy on December 18, 2001. Payment in the required amount to the Center has been made by the Complainant.
On December 20, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that they had received a copy of the Complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
Registrar verifications were received on December 24, 2001.
On January 10, 2002, the Administrative Proceeding began.
On January 30, 2002, a response was received from the Respondent. An amended response was received on February 8, 2002.
On February 20, 2002, Notification of Appointment of an Administrative Panelist and Projected Decision Date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainantís request, the appointment notification informed the parties that the Administrative Panel would comprise of one Panelist, Clive Elliott and advised that the decision should be forwarded to WIPO by March 6, 2002.
On March 6, 2002, a decision was submitted to the Center.
4. Factual Background
The Complainant, Pfizer Inc. is a pharmaceutical enterprise with global operations in more than 150 countries. The Complainant discovers, develops, manufactures and markets leading prescription medicines for humans and animals, as well as many of the worldís best-known consumer products.
The Complainant's VIAGRA (sildenafil citrate) medication for erectile dysfunction 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.
The Complainant is the owner of United States Trademark Registration No. 2,162,548 for the trademark VIAGRA. The VIAGRA trademark registration was issued on June 2, 1998 on the Principal Register maintained by the United States Patent and Trademark Office. The Complainant also owns trademark registrations for the VIAGRA mark around the world. Sildenafil citrate is marketed in the United States and elsewhere exclusively under the Complainants registered trademark VIAGRA, and is available in the United States solely and exclusively from the Complainant.
The Respondent uses <wwwviagra.com> to promote the sale of VIAGRA.
5. Partiesí Contentions
The Complainant says the VIAGRA brand sildenafil citrate has 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. Since then, VIAGRA brand sildenafil citrate has been the subject of intense media attention, public scrutiny and commentary. By virtue of this extensive publicity, it is asserted the Complainant owns post-approval advertising and promotion,
The Complainant claims that the VIAGRA trademark has become famous throughout the world generally and especially in the United States as designating the Complainant's brand of oral therapy for erectile dysfunction.
The Complainant claims that it has spent millions of dollars and extensive resources on research, development and marketing of the VIAGRA brand sildenafil citrate, the first approved oral medication for erectile dysfunction. Erectile dysfunction, sometimes referred to as male impotence, is a serious medical condition estimated to affect more than 20 million men in the United States and over 100 million men around the world.
The Complainant alleges that VIAGRA trademark is a coined and fanciful term having no denotative meaning and that the VIAGRA trademark is universally recognized and relied upon as identifying the Complainant as the sole source of the drug, and as distinguishing the Complainant's product from the goods and services of others. The Complainant also claims that as a result, the VIAGRA trademark has acquired substantial goodwill and is an extremely valuable commercial asset.
The Complainant alleges that the Respondent is seeking to capitalize on the notoriety of the Complainant's trademark and trade name, and recognizing the importance of the Internet as a means of communication.
The Complainant also claims that the Domain Name is identical to the VIAGRA trademark, the only difference being that "www" has been inserted in front of the VIAGRA mark <wwwviagra.com>, and that the site offers very limited content other than providing a single CNN article regarding impotence and related therapies, including Viagra®, its sole purpose is to provide a link to the on-line pharmacy <drugs-express.com> which purports to sell VIAGRA as well as various drugs, such as PROPECIA, XENICAL and CELEBREX, manufactured by competing pharmaceutical companies.
Additionally, the Complainant says that the Respondent has used the VIAGRA mark to confuse customers as to the Complainant's sponsorship of both the <wwwviagra.com> and <drugs-express.com> web sites when consumers, believing to be at the Complainant-sponsored web site, are funneled to a web site where not only the Complainants products, but those of various competitors are marketed. It is said that such use of the VIAGRA mark to enable the purported resale of the Complainantís products on a site linked to the disputed Domain Name, which also sells and markets products of competitors, does not constitute a legitimate use of the domain name.
The Respondent is an admitted user of the product VIAGRA and uses <wwwviagra.com> to promote the sale of VIAGRA. The Respondent has had since the inception of the site <wwwviagra.com> a public notice located on the web page. This disclaimer states that in order to avoid any confusion <wwwviagra.com> is not associated in any way with the domain name of <viagra.com>, which is owned by the Complainant. The Respondent claims that this notice demonstrates that <wwwviagra.com> was not registered by the Respondent with the purpose to disrupt the Complainant's business, nor is the Respondent attempting to divert consumers who wish to purchase VIAGRA or to tarnish the trademark name at issue in this dispute.
The Respondent claims that any person who types in VIAGRA as part of a URL address is interested in one of two things. That is either more information on the product VIAGRA or purchasing the product. The Respondent also claims that it provides both of these options by operating the site <wwwviagra.com>. People are able to purchase VIAGRA and learn more about the product as a result of the web site <wwwviagra.com>. This site is intended primarily for those persons interested in using the product VIAGRA, but who do not wish to make a doctors appointment, for one reason or another. For these people, <wwwviagra.com> provides a link to <drugs-express.com> where they can purchase VIAGRA from the privacy of their home. In turn, <drugs-express.com> is said to be a site where potential buyers can learn more about the product VIAGRA and make an informed decision.
The Respondent says it put up the site <wwwviagra.com> as a satisfied user of the product VIAGRA, and wishes to provide the ability for consumers who are interested in VIAGRA to purchase it online. The Respondent also says that while the Complainant alleges that the Domain Name is causing significant harm to the product VIAGRA, it has in fact helped promote VIAGRA and lead to the sale of the product at no charge to the Complainant. It is noted that, in fact, <wwwviagra.com> has been promoting VIAGRA for over two years, and no one from Pfizer has attempted to contact the Respondent about the Domain Name in question.
The Respondent states that it would like to continue to promote VIAGRA on <wwwviagra.com>. The Respondent states that if the Administrative Panel does find in favour of the Complainant that it asks to be reimbursed for costs incurred for registering and hosting of the domain. As previously stated, the Domain Name has been hosted for over two years with an initial set up fee of $100 and $25 per month thereafter. With direct hosting costs of $700 and registration costs totalling an additional $170. The Respondent asks to be remunerated for hosting and registration fees in the amount of $870.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- The Domain Name is identical or confusingly similar to the trademarks; and
- The Respondent has no right or legitimate interest in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Domain Name Identical to or Confusingly Similar
It is clear from the evidence that VIAGRA is a trademark in which the Complainant has rights, not just in the USA but in certain overseas areas. The Complainant has traded extensively throughout the world and has registered or applied for registration of the VIAGRA trademark in a number of countries. There is clear support for the assertion that VIAGRA has substantial recognition and reputation internationally.
The Domain Name is clearly a combination of a generic term "www" (identifying the World Wide Web) and the trademark and name VIAGRA. It is on its face confusingly similar to the trademark and name VIAGRA as used by the Complainant in the course of its business. On this basis it is found the trademark VIAGRA is a protectable trademark to which the Domain Name is identical and that this ground is made out.
No Right or Legitimate Interest
It is difficult to understand why the Respondent chose the Domain Name other than as a reference to VIAGRA. Nor can it be envisaged that VIAGRA has any meaning other than as an indication of origin of the Complainantís product.
As indicated above, the Respondent states that he put up the site <wwwviagra.com> as a satisfied user of the product VIAGRA, and wishes to provide the ability for consumers who are interested in VIAGRA to purchase it online. Satisfied customer or not this does not entitle the Respondent to use someone elseís property to achieve a particular purpose. The assertion that the Domain Name has a clear meaning connecting it to the Complainant and the disclaimer (which states that wwwviagra.com is not associated in any way with the domain name of viagra.com) will not in the Panelís view be enough to displace the first and overwhelming impression that the Complainant is some how associated with the Respondentís site or its offering of goods.
Given the substantial exposure, registration and use of the trademark and name VIAGRA the Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the Domain Name as it has not used or prepared to use the Domain Name in connection with any bona fide offering of goods or services as contemplated under Paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the Domain Name as contemplated under Paragraph 4(c)(ii) of the Policy; nor that the Respondent is making a legitimate noncommercial 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 as contemplated under Paragraph 4(c)(iii) of the Policy.
As such it is found that this ground is made out.
Domain Name Registered and Being Used in Bad Faith
Given the substantial reputation and the undoubted goodwill in the trademark and name VIAGRA and for the reasons given above it is difficult to see how the Respondent can claim to have registered and used the Domain Name in good faith. Accordingly, it is not necessary to repeat what has been said above.
It is thus found that this ground is made out.
Therefore, and in consideration to the Complaintís compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraph 15(a) of the Rules, it is found:
(1) that the Domain Name is confusingly similar to the Complainantís VIAGRA trademark and name.
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the Domain Name be transferred to the Complainant.
Clive L. Elliott
Dated: March 6, 2002