WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Premium Registration Service / Mooney James
Case No. D2013-1771
1. The Parties
The Complainant is Pfizer Inc. of New York, United States of America, represented by Kaye Scholer LLP, United States of America (the “United States” or “U.S.”).
The Respondent is Premium Registration Service of Singapore / Mooney James of Ravensdale, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <viagra-pfizer-france.com> (the “Domain Name”) is registered with IP Mirror Pte Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 8, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 11, 2013.
The Center verified that the Complaint together with the amended 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 amended Complaint, and the proceedings commenced on November 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2013.
The Center appointed Daniel Kraus as the sole panelist in this matter on December 12, 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.
Due to the holiday season, the deadline for the decision was extended to January 8, 2014 as per paragraph 10(c) of the Rules.
4. Factual Background
The Complainant is among the largest pharmaceutical companies in the world with global operations in more than 150 countries. The Complainant discovers, develops, manufactures and markets leading prescription medicines for humans and animals and also consumer products. The Complainant is well known for the Viagra brand sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction.
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 Reg. No. 2,162,548, issued June 2, 1998, for the trademark VIAGRA.
The Complainant and its affiliates also own trademark registrations for the VIAGRA mark in more than 150 jurisdictions around the world, including in France (registration No. 95601843) and the European Community (registration No. CTM00233890).
The Complainant has been known by and has used the PFIZER mark since 1849 and has owned a United States trademark registration for the mark PFIZER since August 24, 1948. The Complainant has registered PFIZER as a trademark in the United States and throughout the world. For example, the Complainant owns U.S. trademark registration No. 626,088, issued May 1, 1956 for PFIZER and design, U.S. trademark registration No. 2,951,026, issued May 17, 2005 for PFIZER, U.S. trademark registration No. 3,125,531, issued August 8, 2006 for PFIZER, and U.S. trademark registration No. 3,932,037, issued March 15, 2011 for PFIZER and design. The Complainant and its affiliates also own trademark registrations for the PFIZER mark and the PFIZER and design mark in more than 150 jurisdictions around the world, including in France (registration No. 99827244) and the European Community (registration Nos. CTM00374611, CTM00378489 and CTM008614877).
The Complainant also owns, among others, the domain names <pfizer.com> and <viagra.com>, which it uses to host websites to communicate with the public about the Complainant and its products.
The Domain Name was created on June 5, 2012.
5. Parties’ Contentions
The Complainant asserts that it is among the major pharmaceutical enterprises in the world, having global operations in more than 150 countries, having at present at least 10 medicines that are leaders in their therapeutic categories worldwide.
The Complainant also asserts that it has been known by and has used the PFIZER mark since 1849, being the first U.S. trademark registration for the word mark PFIZER, dated August 24, 1948. The PFIZER mark is also registered in numerous jurisdictions worldwide, either at national or regional levels.
The Complainant concludes that by virtue of the highly extensive sales and advertising throughout the world under the PFIZER mark, said PFIZER mark has become and is extremely well-known and famous worldwide.
The Complainant argues that the Respondent, on registering the Domain Name <viagra-pfizer-france.com> was seeking to capitalize on the fame of the Complainant’s PFIZER and VIAGRA trademarks.
The Complainant states that it is not related and/or affiliated in any way to the Respondent and has never authorized the Respondent to register or use the Domain Name or the mark PFIZER or the mark VIAGRA.
The Complainant states that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant’s adoption and registration of the mark PFIZER and of the mark VIAGRA in the United States and in any other jurisdiction elsewhere precedes the Respondent’s registration of the Domain Name.
The Complainant refers to the lack of evidence that the Respondent is using the Domain Name for a bona fide offering of goods and/or services, and to the fact that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name without intention for commercial gain.
The Complainant states that upon information and belief, Respondent has no rights in the PFIZER and/or VIAGRA marks.
Finally, the Complainant argues the Respondent’s bad faith on registering and using the Domain Name.
The Complainant seeks transfer of the Domain Name <viagra-pfizer-france.com> to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Remarks
The Panel is satisfied that the Center has taken all the possible and reasonable steps to bring the Complaint to the Respondent’s knowledge and attention.
There being no response, paragraph 5(e) and 14(a) of the Rules, and in the presumption of the absence of exceptional circumstances, under paragraph 15(a) of the Rules, the Panel shall decide the present Complaint on the basis of the statements and of the documents submitted, bearing in mind the Policy, the Rules and principles of law deemed applicable.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel considered each of the above elements and concludes as follows as regards its applicability to the present case.
B. Identical or Confusingly Similar
The Complainant is the registered owner - and has proved its ownership - of the trademark registration PFIZER (word mark) and of the trademark registration VIAGRA (word mark). These two trademarks are both registered in the United States as well as in many other jurisdictions worldwide.
The Domain Name <viagra-pfizer-france.com> is confusingly similar to the Complainant’s marks PFIZER and VIAGRA. The fact that the Domain Name contains a hyphen between the two combined Complainant’s marks and the addition of a geographical indication (“France”), as well as the “.com” suffix is irrelevant to such a finding. A domain name is confusingly similar to a mark where it merely adds a country name after a well-known mark. See, e.g., Pfizer Inc. v. Bharat Gohil, WIPO Case No. D2005-1290; Pfizer Inc. v. Carlos Rosario, WIPO Case No. D2005-0067; Pfizer Inc. v. Tahar Aoudia, WIPO Case No. D2004-0958; Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine, WIPO Case No. D2002-0419; Panavision Inc And Panavision International, L P v. Gala Trade Inc, WIPO Case No. D2000-1533.
The Panel thus concludes that the Domain Name is identical or confusingly similar to the Complainant’s trademarks.
C. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights of legitimate interests in respect of the Domain Name.
In this case, the Complainant claims its ownership of the registered trademarks PFIZER and VIAGRA and that those two marks are well-known in the United States and throughout the world.
The Complainant also states that it is not related and/or affiliated in any way with the Respondent and that the Respondent is not at present, nor has it ever been, a representative of the Complainant or licensed to use the PFIZER or VIAGRA marks.
Considering the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this element. The burden of production then shifts to the Respondent to rebut, if possible, that prima facie case.
In this case, the Respondent failed to respond and rebut the Complainant’s supported contentions.
Therefore, the Panel considers and concludes that the Respondent has no rights or legitimate interests in the Domain Name <viagra-pfizer-france.com>.
D. Registered and Used in Bad Faith
The Complainant’s PFIZER trademark was registered in the United States in 1948, and is, as is commonly accepted, one of the most well-known trademarks in the pharmaceutical industry, on a worldwide basis.
The Complainant’s VIAGRA trademark was registered in the United Sates in 1998, and is also, as is commonly accepted, one of the most well-known trademarks worldwide to identify a pharmaceutical product for the treatment of erectile dysfunction.
The VIAGRA mark became a “success story” not only in the United States but, also, around the world.
Therefore, the Respondent, when registering the Domain Name <viagra-pfizer-france.com> in 2012, had to have been, without any reasonable doubt, perfectly aware of the Complainant’s trademarks.
The Respondent likely knew of the existence of the Complainant’s registrations for the famous marks PFIZER and VIAGRA, prior to its registration of the Domain Name. Thus, in the Panel’s view, the Respondent was perfectly aware, just as the general public is well aware, of the vast and valuable goodwill and reputation represented and symbolized by the PFIZER and VIAGRA marks. This Panel finds therefore that the Respondent registered the Domain Name in bad faith.
The fourth of the identified “bad faith” factors enumerated in the UDRP paragraph 4(a)(iii) applies in particular here. It states that it shall be evidence of the registration and use of a domain name in bad faith to intentionally attract Internet users to web sites for commercial gain “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s sites or of a product or service on the Respondent’s sites.
In the present case, the Respondent has registered and is using the Domain Name intentionally to misdirect and divert customers looking for information about the Complainant and its VIAGRA product to a commercial website that profits from an online pharmacy that offers third-party products, including products that compete with genuine VIAGRA product. This creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the site to which the Domain Name resolves, the online retailers to which that site links, and the non-Complainant products sold on those sites. Use of a complainant’s mark to generate visitors to such a for-profit site constitutes bad faith (See e.g. Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285; Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600; Pfizer Inc. v. Generic Viagra Pills, WIPO Case No. D2004-0592; Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256; Pfizer Inc. v. NA, WIPO Case No. D2005-0072; Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299; Pfizer Inc. v. Peter Carrington a/k/a Party Night Inc., WIPO Case No. D2003-0622).
Besides, use of a mark in a domain name to promote the sale of products in competition with the Complainant’s mark products, as the Respondent is doing in the present case, is also constitutive of bad faith (see, e.g., Pfizer Inc. v. Medlink Telecom GmbH, WIPO Case No. D2002-0547; Pfizer Inc. v. Lorna Kang, WIPO Case No. D2002-0480; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791).
As a direct consequence of the Respondent’s conduct, the public will be misled as to the source, sponsorship or origin of the information and products offered on the links connected to the website at the Domain Name. The purposefully deceptive Domain Name anticipates, relies upon on and benefits from this consumer confusion or mistake and constitutes bad faith use of the Domain Name.
Considering of all the above, the Panel concludes that the Domain Name <viagra-pfizer-france.com> was registered and is being used in bad faith.
The Panel concludes that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy. The Domain Name is confusingly similar to the trademarks of the Complainant; the Respondent has no rights or legitimate interests in respect of the Domain Name; and the Domain Name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <viagra-pfizer-france.com> be transferred to the Complainant.
Date: January 9, 2014