WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Ivan Glukhov (Glucotrol Administrator WWW Server)
Case No. D2001-1465
1. The Parties
The Complainant is Pfizer Inc., a Delaware corporation with its principal place of business at New York, NY, U.S.A. The Complainant is represented by Hale and Dorr LLP, Attorneys of New York, NY, U.S.A.
The Respondent claims to be Mr. Ivan Glukhov of WWW Server, St. Petersburg, the Russian Federation. The Respondent is represented by Bocar Ltd. Law Firm of St. Petersburg, the Russian Federation. The registrant of the disputed domain name in the records of the Registrar is "Glucotrol Administrator WWW Server". No explanation is offered by the Respondent as to why Mr. Glukhov is not there shown as the registrant.
2. The Domain Name and Registrar
The domain name at issue is <glucotrol.com>. The domain name is registered with Melbourne IT Ltd. of Emeryville, CA, U.S.A. ("the Registrar").
3. Procedural History
The Complaint submitted by the above Complainant was received on December 19, 2001, (electronic version) and December 27, 2001, (hard copy) by the World Intellectual Property Organization and Arbitration and Mediation Center ("WIPO Center").
On December 21, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with it.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
- Indicate the current status of the domain name.
By email dated January 1, 2002, the Registrar advised WIPO Center as follows:
- It is the Registrar of the domain name in question.
- "Glucotrol Administrator www server" is shown as the current registrant of the domain name.
- The UDRP Policy is in effect.
- The domain name registration is currently "active".
- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from the Registrar that the domain name in question is "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on January 4, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
- The Complainant elected to have its Complaint resolved by a sole Panelist; it has duly paid the amount required of it to the WIPO Center.
- The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on January 24, 2002, in electronic form and by fax.
- WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as Panelist in the case.
- The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
- On February 11, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by February 25, 2002.
- On February 13, 2002, Complainant sought leave from the Panel to file a Reply. The Panel granted this request and allowed the Respondent until 4:00pm (Geneva time) on February 18, 2002, to file with the WIPO Center a supplemental response covering solely matters raised in the Reply. A supplemental response was not received by the Panel. In view of the decision reached by the Panel denying the Complaint no injustice is caused to the Respondent. The Panel has considered the Complainantís Reply.
4. Factual Background
Complainant is a global pharmaceutical company which discovers, develops and markets prescription medicines for humans and animals. It has spent millions of dollars on the research, development and marketing of products for the treatment of diabetes, including Glucotrol since 1978 and Glucotrol XL since 1993.
Complainant owns valid and subsisting U.S. trademarks for both Glucotrol and Glucotrol XL. These marks are registered in numerous countries, but not Russia. The Glucotrol products are marketed in the United States and elsewhere and are well-known as distinguishing Complainantís products from those of others.
5. Partiesí Contentions
The disputed domain name is identical to the Complainantís mark "Glucotrol".
Respondent has no legitimate use for a website using the disputed domain name and is not known by that name.
The Respondent, "in common with the public" is well aware of the goodwill and reputation of the marks. Glucotrol is relied upon by medical professionals throughout the United States "and in many countries". Respondent registered the name in bad faith to profit from this registration. Respondent should have known of the marks. (See America Online Inc. v Anson Cham, WIPO Case No. D2001-0004)
Respondentís actions in registering and using the disputed domain name are willful and in bad faith. This can be inferred because, following registration, Respondent indicated the site was "for sale" or sought "a business partner / investor wishing to take part in the development of <glucotrol.com> domain name and website."
Complainant has no trademark registration in Russia. The disputed domain name is intended to link internet users to Respondentís personal site. He is a computer programmer and internet developer known amongst his peers as "glucotrol", a name he uses to sign personal correspondence. The expression comes from Russian slang for "glitch" Ė the Russian word "gluc". Because in his early days he made many "glucs", this nickname "glucotrol" stuck to him. "trol" is a common Russian word [no translation of "trol" was submitted, nor was any extract from any Russian/English dictionary exhibited].
Respondent registered the name in 1999 but was unable to create a concept and set up a site in a short period. The site is temporarily parked and the parking site provider was given the right to sell its programme products through the domain in return for its services. The parking site providerís banner is Russian for "internet resources collection module".
Respondentís site is not related to medicine. The Complainantís names for its products are not well-known in the Russian Federation. The Respondent, being a Russian resident, should not be supposed to know of them since he is neither a medical practitioner, a pharmacist nor a diabetic.
Respondentís research shows that the Glucotrol products belong to a class of pharmaceuticals with the same chemical agent and that physicians pay attention, not to the trade name, but to the chemical qualities of a drug.
Respondent did not know of the existence of the mark at the time of registration. The Complainant has not proved bad faith registration but is abusing the UDRP procedure as a means of acquiring the names.
An affidavit from an attorney for Complainant was annexed, which attested to discussions she had had with Respondent about purchasing the domain name. At no stage did she state the Complainant was using UDRP as a means of acquiring names. Respondentís offer to sell for $900 indicates bad faith.
The website advertisement speaks for itself about offering to sell. The words "for sale" and the invitation to investors clearly appear in English. Since the original Complaint and Response were filed, Respondent has added to the website in English the following text: "Please contact us only if you are interested in obtaining rights in your database driver website content generation technology which is being protected as a utility model. Please note that the domain name itself is not for sale".
It is unlikely that an outside investor would invest to develop a domain name consisting entirely of Respondentís nickname.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
The domain name <glucotrol.com> is obviously identical to the Complainantís marks "Glucotrol" and "Glucotrol XL". It does not matter, under this criterion, that the marks were not registered in Russia. Whilst the Panel is unimpressed with the Respondentís claim to legitimacy in that he alleges he is known by the nickname "glucotrol", the Complaint will have to fail because the Complainant has not proved bad faith at the time of registration.
WIPO jurisprudence over the last two years has yielded many cases where a domain name has been registered by a resident of Country A, which is identical to a trademark registered in Country B. The onus is on proving that a Respondent in Country A, nevertheless, ought to have known of the fame of the mark rests on the Complainant. Registration of the mark in Country B can assist a Panel in making a bad faith registration inference, as can evidence of Complainantís presence and marketing of its product in Country B. There are some marks which are so well-known worldwide (e.g. Coca-Cola, McDonaldís) that the inference can be drawn that the Respondent must have known of them.
Here Complainant (as it might well have been able to provide) offered no evidence of the exposure of Glucotrol on the Russian market. Whilst the trade names of some pharmaceuticals are well-known because of their universal use (e.g. Panadol), the general public cannot be expected to know the name of a medicine aimed at alleviating a specific medical condition, albeit a common one. Therefore, unless a Respondent were either a health professional or a sufferer from diabetes or a family member of such a person, he/she could not be expected to have heard of Glucotrol. The Respondent has not been proved to be in one of those classifications.
The case differs from WIPO Case No. D2001-0004 cited by the Complainant. There the Panelist found that Respondent must have known of the Complainantís mark before registration because his website addressed internet users on the assumption that they already knew of the mark and of the Complainantís services. Nothing like that has been proved in the present case.
Accordingly, the case is in the same category as, for example, VZVermögens Zentrum AG v Anything.com (WIPO Case No. D2000-0527) and KCTS Television Inc. v Get-on-the-Web Ltd. (WIPO Case No. D2001-0154) and the Complaint must be dismissed for lack of proof of bad faith registration.
In view of this Panelís determination as to registration in bad faith, it is not necessary to consider the remaining criteria, i.e. use of domain name in bad faith.
The Panel denies the Complaint and makes no order in respect of the domain name <glucotrol.com>.
Hon. Sir Ian Barker Q.C.
Dated: February 19, 2002