WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Evgen Shirko
Case No. D2013-0056
1. The Parties
The Complainant is Pfizer Inc. of New York, New York, United States of America (“US”), represented by Kaye Scholer, LLP, US.
The Respondent is Evgen Shirko of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <overthecounterviagra.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2013. On January 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2013, the Registrar 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 January 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2013.
The Center appointed Jane Lambert as the sole panelist in this matter on February 14, 2013. 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
The Complainant is one of the world’s largest pharmaceutical manufacturers and distributors and carries on business in more than 150 countries. It is the proprietor of the word mark VIAGRA which was registered as a trademark for “compound for treating erectile dysfunction” in class 5 with the US Patent and Trademark Office under Registration No. 2,162,548 on June 2, 1998. The Complainant and its subsidiary and associate companies own corresponding registrations around the world including for Ukraine. The Complainant uses the mark to market sildenafil citrate, a treatment for erectile dysfunction or impotence which the Complainant has developed at considerable expense. According to the Complainant, erectile dysfunction is a condition that afflicts some 20 million males in the US and 100 million around the world. The development of a treatment for that condition attracted considerable interest when the product was launched in 1998 which has continued ever since.
Very little is known of the Respondent other than his address. He has no obvious connection with the Complainant.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name on the grounds that:
(1) The disputed domain name is confusingly similar to the Complainant’s registered trademark;
(2) The Respondent has no rights or legitimate interests in the Complainant’s in the disputed domain name; and
(3) The Respondent has registered and is using the disputed domain name in bad faith.
In support of the first ground, the Complainant submits that the disputed domain name incorporates its trademark and prefixes the generic term “overthecounter.” Referring to Adobe Systems Incorporated v. Jeff Bluff, Online RX Sales LLC, WIPO Case No. D2006-1475, it contends that “It is an established principle that ‘a domain name is ‘identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.”
As to the second ground the Complainant makes clear that it is not affiliated to the Respondent and has never authorized it to register or use the disputed domain name or the VIAGRA trademark. It concludes that “the Respondent has no right or legitimate interest in the VIAGRA mark (or any variant spelling) or in the subject domain name.” To the best of the Complainant’s knowledge and belief the Respondent is not commonly known by the name “viagra,” “overthecounterviagra.com” or any variation thereof.
Although this contention appears in its submissions on the second ground, the Complainant points out that the “Respondent has intentionally registered the subject domain name explicitly for the purpose of making illegitimate or unfair use of Pfizer’s mark by using the domain name to attract visitors who will then generate pay-per-click fees when they click through the links that populate as search results on Respondent’s website and visit the sites advertised there -- including sites that offer products that compete with Pfizer’s products, such as the CIALIS drug for erectile dysfunction.” It argues that paragraph 4(b)(iii) of the Policy “applies with particular force here.” The Respondent has “registered and is using the subject domain name intentionally to misdirect and divert customers looking for information about Pfizer and its VIAGRA product to a for-profit web site that collects pay-per-click revenue from sites that offer third-party products, including products that compete with genuine VIAGRA product. This creates a likelihood of confusion with Pfizer’s marks as to the source, sponsorship, affiliation, or endorsement of the site to which the domain name resolves, the on-line retailers to which that site links, and the non-Pfizer products sold on those sites.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4 (a) of the Policy requires the Complainant to prove that each of the following elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The disputed domain name incorporates the mark VIAGRA and is preceded by the words “over the counter”. Patients seeking VIAGRA are likely to assume that the disputed domain name is used for a website to advertise pharmacies where VIAGRA is available “over the counter”, that is to say without a doctor’s prescription or even for a website that sells VIAGRA online.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists a number of circumstances by which a respondent can demonstrate that he or she has rights or legitimate interests in a disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Complainant has alleged that none of those circumstances applies and there is, of course, no evidence from the Respondent. There is no other evidence that would allow this Panel to find that the Respondent may have rights or legitimate interests in the disputed domain name.
Accordingly, the Panel is satisfied that the second element is present.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel agrees with the Complainant that the fourth of those circumstances applies to this case. The Panel has already found that patients seeking VIAGRA are likely to assume that the disputed domain name is used for a website to advertise pharmacies where VIAGRA is available “over the counter”, that is to say without a doctor’s prescription or even for a website that sells the VIAGRA online. That constitutes a likelihood of confusion with the Complainant’s mark as to the source of a product on the Respondent’s website. The Respondent will derive “commercial gain” every time one of the sponsored links is clicked.
As there is evidence of the registration and use of the disputed domain name in bad faith, the Panel is satisfied that the third element is present.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <overthecounterviagra.com> be transferred to the Complainant.
Date: March 4, 2013