WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Papol Suger
Case No. D2002-0187
1. The Parties
The Complainant in this administrative proceeding is Pfizer Inc., a corporation organized and existing under the laws of the State of Delaware, U.S.A., with its principal place of business located in New York, New York. The Respondent in this administrative proceeding is Papol Suger ("Respondent"), an individual or company located at P.O. Box 148, London, NA LO55LO, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name is <viagrabomb.com>. The Registrar of the domain name is Register.com, Inc. of New York, New York, USA.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules"), and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
By registering the subject domain name with the Registrars, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on February 25, 2002, by email and on February 28, 2002, by hardcopy. On March 7, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On April 5, 2002, the Center issued a Notification of Respondent Default.
The Administrative Panel consisting of one member was appointed on April 16, 2002, by WIPO.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
4. Factual Background
The following information is derived from the Complainantís material.
The Complainant is a global, research-based company that discovers, develops, manufactures and markets leading prescription medicines for humans and animals and many of the worldís best-known consumer products. It has expended millions of dollars and extensive resources on the research, development and marketing of VIAGRA® brand sildenafil citrate, the first approved oral medication for the treatment of 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 availability of Pfizerís VIAGRA® (sildenafil citrate) represents a major medical breakthrough.
The Complainant's VIAGRA® (sildenafil citrate) 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. This United States federal registration is valid, unrevoked and uncancelled.
The Complainant, or a wholly owned subsidiary, also owns trademark registrations for the VIAGRA mark around the world.
Sildenafil citrate is marketed in the United States and around the world exclusively under the Complainantís registered trademark VIAGRA.
Even prior to FDA approval, the Complainantís 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. Since then, VIAGRA® brand sildenafil citrate has been the subject of intense media attention, public scrutiny and commentary. By virtue of this extensive publicity, and the Complainantís own post-approval advertising and promotion, the VIAGRA trademark has become famous throughout the world generally, and especially in the United States, as designating the Complainantís brand of oral medication for erectile dysfunction.
The VIAGRA trademark is a coined term having no denotative meaning. It is recognized universally and relied upon in identifying the Complainant as the sole source of the drug and in distinguishing the Complainantís product from the goods and services of others. As a result, the VIAGRA trademark has acquired substantial goodwill and is an extremely valuable commercial asset.
The Respondent is not and never has been affiliated with, approved by, or sponsored by the Complainant. The Respondent is not licensed to use the VIAGRA mark.
At the time the Complainant became aware of the website to which the subject domain name resolves it was a pornography site, offering various XXX live video cams and XXX chat rooms for a fee. The Respondent also had linked to its website other pornographic websites that contain explicit images of people engaged in a variety of sexual acts.
On December 18, 2001, the Complainant sent to the Respondent a letter demanding that the Respondent cease and desist use of the Complainantís VIAGRA mark. There was no response to the letter. The Complainant checked the Respondentís address with the United Kingdom postal service and was told that no such address exists and that the format of the address is incorrect.
The Respondent filed no material in this proceeding.
5. Partiesí Contentions
The Complainant relies on its use and registration of the word "viagra" and says that the subject domain name is confusingly similar. In particular, the Complainant asserts that: "It is well-established that a common term following a trademark does not create a new or different mark in which Respondent has rights. The addition of a common word such as Ďbombí, which immediately follows [the Complainantís] famous and distinctive VIAGRA mark, is therefore not sufficient to avoid confusion".
The Complainant contends that the Respondent does not have a legitimate interest in the subject domain name because it must have known about the Complainantís rights when it registered the subject domain name in November 2001. After the Complainant sent its cease and desist letter, the website to which the subject domain name resolves became dormant. In addition, the Complainant says that the use of the subject domain name to obtain customers for the Respondentís pornographic site is not legitimate. In summary, the Complainant states that: "Öthere is no evidence that Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain by misleading and diverting [the Complainantís] customers to its pornographic-oriented website thereby creating an impression that its pornographic services are associated with or sponsored by Complainant".
Bad faith is said to be evidenced by the fact that the Respondent must have known about the Complainantís rights when the subject domain name was registered and the fact that the word "viagra" is "an invented and coined mark" coupled with the use to which the Respondent put the subject domain name. In addition, the Respondentís provision of a false address with the registrar is contrary to its registration obligations.
The Respondent made no submission in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site 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 the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant refers to a number of previous domain name dispute decisions. While these are neither controlling nor binding on this Administrative Panel, often reference to them is of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the word "viagra". The subject domain name incorporates fully the word "viagra" and differs from the Complainantís mark only by the addition of the word "bomb". That word does not connote a distinction from the Complainantís mark. The subject domain name is confusingly similar.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents Legitimate Interest
Using a domain name to resolve to a pornographic sites does not in and of itself lead to a conclusion that a Respondent does not have a right or legitimate interest in the domain name, but it is a relevant fact to be considered in the context of the information as a whole.
In this case, the subject domain name was registered approximately three and one-half years after the Complainantís adoption and use of its mark. The product associated with the mark is related to sexual activity. It is a fair inference that the Respondent chose to capitalize on that relationship in linking the subject domain name to pornographic sites.
There is nothing in the material to suggest that the Respondent normally carries on business using the word "viagra" or has been associated in any way with it.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The conclusion that a Respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of a Complainant, does not establish bad faith, but the facts that support the conclusion may lead to that result.
In this case, the information suggests that the Respondent must have known about the Complainantís mark when it registered the subject domain name. The link between the Complainantís product and sexual matters is apparent. By its incorporation of the Complainantís mark into the subject domain name, the Respondent profited, or certainly attempted to do so.
The information overall leads to a clear inference of bad faith and the Respondent has done nothing to rebut the natural conclusion that follows.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information presented to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its Complaint.
The Complainant seeks an order transferring the subject domain name to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: April 24, 2002