WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc v. INDIVIDUAL
Case No. D2003-0419
1. The Parties
The Complainant is Pfizer Inc. ("Pfizer"), of New York, New York, United States of America.
The Respondent is INDIVIDUAL, C/O John Callum, of Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <vyagra.com> (the "Domain Name").
The registrar is Tucows, Inc. (the "Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Pfizerís Complaint by e-mail on May 31, 2003 and in hard copy on June 4, 2003. On June 2, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 2, 2003, Tucows transmitted by two emails to the Center containing its verification response confirming that (1) a copy of the Complaint was sent to it by Complainant as required by the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rule") paragraph 4(b); (2) the Domain Name was registered through it; (3) the Respondent is the current registrant of the Domain Name; (4) and the contact details for the administrative, billing, and technical contact for the Domain Name; (5) the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Name; and (6) the Domain Name is active. The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and 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 June 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 8, 2003.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 22, 2003. 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.
4. Factual Background
Pfizerís Complaint alleges that its VIAGRA mark is a distinctive, federally registered, and world famous trademark. Pfizer has invested substantial resources in promoting its mark worldwide. Pfizer has registered its VIAGRA mark and variations thereof in numerous countries throughout the world, as shown in Annex 4 to the Complaint. Pfizerís federal registration in the United States for its VIAGRA trademark predates the registration of the domain names at issue here.
Additionally, Pfizer conducts business on the Internet at "www.viagra.com".
The Respondent contacted Pfizer in an attempt to sell the Domain Name. Pfizer replied to the Respondent and offered to purchase the Domain Name for US $150, what Pfizer described as the "administrative costs" of the transfer. The Respondent countered with an offer to sell the Domain Name to Pfizer for US $2,500.
5. Partiesí Contentions
Pfizer asserts as follows:
ē The registered VIAGRA mark has worldwide recognition.
ē The disputed Domain Name is nearly identical to the trademark VIAGRA
and confusingly similar to Pfizerís website <"www.viagra.com".
ē The Complainant has made substantial commercial use of the VIAGRA mark prior to the Respondentís registration of the Domain Name.
ē The Respondent is not a licensee and therefore has no legitimate interest in the Domain Name or in the VIAGRA mark.
ē The Respondent registered the Domain Name in bad faith.
ē The Respondent is "using the domain name to extort a sum of money from Pfizer."
ē The Respondent has registered the Domain Name in an attempt to divert consumer traffic.
ē The Domain Name at one time resolved to an on-line pharmacy that purported to sell Pfizerís VIAGRA product, and that this use of the Domain Name was for unauthorized commercial gain.
ē The Domain Name website and certain subpages displayed pornographic images in a non-legitimate use of the Domain Name.
The Respondent did not formally answer the Complainantís contentions and was in default as of July 6, 2003. However, on July 9, 2003, the Center received an email from the Respondent, which disputed that the Respondent had conducted any actions in bad faith and contended that the use of the Domain Name, selling VIAGRA products on commission, was a legitimate use. Despite this correspondence, the Respondent is in default and the Panel may infer that the Complainantís allegations are true where appropriate to do so. Talk City Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Nonetheless, the Complainant retains the burden of proving the three requisite elements of Paragraph 4(a).
C. Jurisdictional Basis
As stated, the Registrar verified that the Policy applies to the Domain Name. In accordance with the Policy, the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide this dispute.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the Domain Name, each of the following:
(i) The Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) 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.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondentís rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).
A. Effect of the Default
Although the Respondent did not formally answer the Complaint, the Panel has considered the statements of the Respondent contained in the email of July 9, 2003. However, no statements in that email rebut the relevant factual assertions made and supported by evidence submitted by the Complainant.
By failing to present any additional or responsive evidence that counters the evidence submitted in the Complaint, the Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interest in the Domain Name, such as use or preparation to use the Domain Name prior to notice of the mark, being commonly known by the Domain Name or making legitimate noncommercial or fair use of the Domain Name.
B. Complainantís Proof
1. Identical and Confusingly Similar to Trademark
The Domain Name <vyagra.com> is alleged to be confusingly similar to the registered trademark VIAGRA of the Complainant, Pfizer. Misspellings or typographical errors are not sufficient to distinguish a challenged domain name from an establish mark. See Google Inc., v. Namerental.com, WIPO Case No. D2001-0060 (February 27, 2001).
Here, the Domain Name is identical to the registered trademark save for a "y" being used instead of an "i" resulting in "vyagra" instead of "viagra."
It is common for individuals to misspell words by accidentally using one vowel for another, either for lack of familiarity with the correct spelling (particularly with a fanciful mark) or simply by making a typographical error. It is well established that registrations that attempt to capitalize on such misspellings (sometimes referred to as "typosquatting") are actionable under the Policy. See, e.g. Encyclopedia Britannica, Inc. v. John Zuccarini, WIPO Case No. D2000-0330 (June 7, 2000), ß 3 (closely misspelled domain name satisfies "confusingly similar" factor); Hewlett-Packard Co. v. Cupcake City, File No. FA000200093562 (NAF March 31, 2000) (finding a "phonetically identical" but differently spelled mark to meet the Policy requirement).
Because the Domain Name <vyagra.com> is identical to the Complainantís Mark VIAGRA but for this misspelling, the Panel concludes that the Domain Name is identical or confusingly similar to Pfizerís trademark. See e.g. Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (September 25, 2000) (<estelauder.com> confusingly similar to mark ESTEE LAUDER); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001) (<nicholekidman.com> confusingly similar to mark NICOLE KIDMAN).
The Complainant has met the requirement of Paragraph 4(a)(i) of the Policy.
2. Rights or Legitimate Interests
There is no evidence in the record that the Respondent has any legitimate interest in the Domain Name. Although the Domain Name no longer resolves to an active website, the Complainant alleges that the Domain Name at one time directed traffic to "www.erotixmall.com" where users were presented with, among other things, links to sites where the user could purchase the VIAGRA product, and links to pornographic websites. This kind of use does not constitute a legitimate offering of services. See EZ Pittsburgh, Inc. v. Van Johns, WIPO Case No. D2001-0612 (July 27, 2001) (resolution to a website offering multiple advertising/promotional banners and click-through banner advertisements is not a legitimate noncommercial or fair use of the domain name but rather suggests use of the domain name in issue for some type of commercial gain).
Furthermore, the fame, distinctiveness, strength, and priority of use of the Complainantís mark, coupled with the Domain Name being identical or confusingly similar to the Complainantís mark and the Respondentís failure to advance any of the defenses provided in Paragraph 4(c) of the Policy, lead this Panel to conclude that the Respondent has no rights or legitimate interest in the Domain Name.
3. Registered and Used in Bad Faith
Marks that have a "high degree of inherent or acquired distinctiveness" are entitled to a greater scope of protection than others. See Digital City Inc. v. Smalldomain, WIPO Case No. D2000-1283 (November 6, 2000). This Panel finds that the Complainant has demonstrated that its longstanding use of the VIAGRA mark, its high volume of business transacted under or in connection with the mark, as well as the worldwide use, registration, and recognition of the mark, places the mark in the category of trademarks with a "high degree of Ö acquired distinctiveness" and that the mark, as a result of its fame, enjoys a wide scope of protection. This fame makes it likely that the Registrant was aware of the existence of the Complainant and of its trademark rights as of the time the Domain Name was initially registered.
The federal registration of the Marks prior to registration of the Domain Name provides further support for this conclusion. Under Section 22 of the United States Trademark Act, "[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrantís claim of ownership thereof." As a matter of United States trademark law, therefore, it may be presumed that the Registrant of the Domain Name was on notice of the Complainantís rights in the VIAGRA mark prior to registering the Domain Name. See, e.g., Barneyís Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 (April 2, 2000).
Although there is evidence that the Respondent had actual notice of the mark prior to the commencement of these proceedings (see Annex 7-10 of the Complaint) and knew of the nature of the VIAGRA product while operating the website at the Domain Name (see Annex 11 of the Complaint) there is no evidence that the Respondent had actual notice of the mark prior to the registration of the Domain Name (in April 1999), nor is there evidence that the Respondent was the entity which initially registered the Domain Name. Indeed, the Respondent contends that he purchased the Domain Name in or about August 2002.
Regardless of whether the Respondent was the original registrant, for the above reasons regarding the fame of the mark and the close proximity of the Domain Name to the mark, the Panel finds that the Respondent had at least constructive notice of the marks prior to registration of the Domain Name and prior to the Respondentís stated date of acquisition of the Domain Name.
b. Evidence of Bad Faith
The Complainant alleges that the Respondent registered the Domain Name with the "bad faith intent to profit from such registration." Intending to profit from a registration does not, by itself, constitute bad faith. There must be some ill intent on the part of the Respondent which pushes his or her conduct into the realm of "bad faith."
Policy paragraph 4(b) sets forth four nonexclusive illustrations of situations that may be deemed to reflect "bad faith" registration and use of a domain name. Two of these illustrations are discussed below. The Panel finds that at least one of these types of bad faith has been established, i.e. attempting to attract, for commercial gain, Internet users to the Respondentís website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship or affiliation of the website.
i. Acquisition Primarily for the Purpose of Selling
The first example of bad faith conduct as outlined in Policy paragraph 4(b) is acquisition of the Domain Name "primarily for the purpose of selling . . . the domain name registration to the complainant who is the owner of the trademark." Although the Complaint does not specifically allege violation of this portion of paragraph 4(b), it does allege that the Respondent offered to sell the Domain Name to the Complainant for US $2,500, which would be in violation of paragraph 4(b)(i) as the sale value would be "in excess of . . . documented out-of-pocket costs."
In his correspondence to both the Complainant and the Center, the Respondent states that the Domain Name was purchased "in the middle of a group of 50." There is no evidence presented in the Complaint to contradict this statement. Although the Domain Name was originally registered in April 1999, the record indicates that the Respondent did not acquire the Domain Name until approximately August 2002. See Annex 7 to the Complaint. In the Respondentís July 9, 2003 email to the Center he indicates that in approximately February 2003, he was approached by a third party to purchase the Domain Name, and it was only after this occurred that he approached Pfizer and offered to sell Pfizer the Domain Name.
It is unclear from the record what the exact sequence of events was that led up to the Respondentís acquisition of the Domain Name and its eventual offer to sell it to Pfizer. Certainly, the fact that such a similar domain name was offered to the owner of a famous trademark may suggest an intent to acquire the name for purposes of selling it to the trademark owner. On the other hand, the Respondent also attempted to conduct business under the domain name (a separate violation discussed below), thereby possibly undermining the theory that the domain name was acquired "primarily" to sell it to the Complainant.
ii. Improper Commercial Gain Through Likelihood of Confusion
The Domain Name, although now inactive, at one time resolved to an active website which contained links offering the Viagra product for sale, as well as links to an advice page on sexual dysfunction, "herbal remedys" [sic], and "mature pages" which contained pornographic images and links to other such "adult oriented" sites.
It is clear that during the active use of the Domain Name, the Respondent knew of Pfizerís VIAGRA mark, as the Domain Name offered the Viagra product for sale and offered links to pages on the medical condition targeted by that product. In addition, it contained pornographic links, an unfortunate staple of many domain name disputes, which frequently have been a basis for a finding of bad faith use.
Because of the above-described uses, the Panel finds that the Respondent attempted to attract users to its website by improperly associating itself with the Complainantís marks or misleadingly suggesting an affiliation with, or sponsorship by, Complainant. The Respondent has thereby violated Paragraph 4(b)(iv) of the Policy.
In light of the above findings and analysis, the Panel decides that the Complainant Pfizer has met its burden of proving that: (1) the Domain Name is identical or confusingly similar to marks belonging to the Complainant; (2) The Respondent has no rights or legitimate interest in the Domain Name; and (3) the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that registration of the <vyagra.com> Domain Name be transferred to Pfizer.
Michael A. Albert
Dated: August 5, 2003