WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / EVA WISE / Sergey Nikishin
Case No. D2014-1854
1. The Parties
Complainant is Pfizer Inc. of New York, New York, United States of America ("US"), represented by Kaye Scholer, LLP, US.
Respondents are WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / EVA WISE of Riviera, Texas, US / Sergey Nikishin of Ufa, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <viagra.ninja> ("the Domain Name") is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 4, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 6, 2014.
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 Respondents of the Complaint, and the proceedings commenced on November 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2014. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on December 1, 2014.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 4, 2014. 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
Complainant Pfizer Inc. ("Pfizer") is one of the world's largest pharmaceutical manufacturers and sellers and maintains operations in more than 150 countries. Complainant owns the registered trademark VIAGRA, U.S. Trademark Registration No. 2,162,548 ("the Mark" or "the VIAGRA Mark"), which was issued June 2, 1998. Complainant and its affiliates also own numerous registrations for the VIAGRA Mark throughout the world which they use in connection with the worldwide sale of the VIAGRA medication for erectile dysfunction.
Respondents registered the Domain Name on or about September 8, 2014. The Domain Name resolved (this is no longer the case) to a website that advertised and linked to websites which sold products not made or authorized by Complainant, including so-called "Generic Viagra", "Viagra Oral Jelly", "Viagra Professional", "Viagra Soft Tabs", and "Viagra Super Active."
5. Parties' Contentions
The US Food and Drug Administration ("FDA") approved the VIAGRA (sildenafil citrate) medication on March 27, 1998. The Mark has been used on or in connection with that product in the US since April 6, 1998. Sildenafil citrate is lawfully marketed in the US and in numerous other countries exclusively under the Mark, which is known worldwide. Even before FDA approval, the sildenafil citrate medication received 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 throughout the world. By virtue of this extensive publicity, and Complainant's own post-approval advertising and promotion, the Mark has become famous throughout the world as designating Complainant's brand of oral therapy for erectile dysfunction.
The VIAGRA Mark is a coined and fanciful term having no denotative meaning. It is universally recognized and relied upon as identifying Pfizer as the sole source of the drug, and as distinguishing Pfizer's product from the goods and services of others. As a result, the VIAGRA Mark has acquired substantial goodwill and is an extremely valuable commercial asset. Numerous UDRP decisions have recognized Complainant's well-established rights in the VIAGRA Mark.
The Domain Name (1) incorporates wholesale the VIAGRA Mark, (2) merely appends a Top-Level Domain name to the VIAGRA Mark (3) is confusingly similar to Complainant's own domain name <viagra.com>, at which Complainant operates a website, and (4) is so clearly similar to Complainant's VIAGRA Mark that it is likely to cause confusion among Complainant's customers and the consuming public. Thus, the Domain Name is identical and confusingly similar to Complainant's VIAGRA mark.
Complainant is not affiliated in any way with Respondents and has never authorized them to register or use the Domain Name or the Mark. Respondents have no rights or legitimates interest in the Mark (or any variant spelling) or in the Domain Name. Upon information and belief, Respondents are not commonly known by the name "viagra", "viagra.ninja" or any variation thereof. Accordingly, Respondents have no trademark rights in the Mark. Complainant's adoption and registration of the Mark in the US and throughout the world precedes Respondents' registration of the Domain Name in 2014. Respondents intentionally registered the Domain Name for the purpose of making illegitimate or unfair use of the Mark by using the Domain Name with a for-profit website offering VIAGRA-branded tablets not made or authorized by Pfizer as well as other products that compete with Pfizer's products. That website offers products branded as "Viagra Oral Jelly", "Viagra Professional", "Viagra Soft Tabs", "Viagra Super Active", which are in product formats in which authentic VIAGRA brand products are not sold and which are not genuine VIAGRA brand products. The use of the Domain Name to offer for sale counterfeit imitations of Complainant's branded products is not a legitimate use of it. Moreover, even apart from offering counterfeits, many UDRP panels have concluded that it is not a legitimate use of the trademark to use it in a domain name to attract customers and re-direct them to competing products.
Respondents' lack of rights or legitimate interests renders the issue of bad faith registration unnecessary to even be considered. Moreover, Respondents' bad faith use of the Domain Name is determined, not by whether Respondent is making a positive action in bad faith, but instead whether all of the other circumstances of the case indicate bad faith by Respondents. Respondents are well aware of the goodwill and reputation represented and symbolized by the VIAGRA Mark. As used by Pfizer, the Mark is recognized and relied upon by medical professionals and the public worldwide as the sole means to identify and distinguish Pfizer and its erectile dysfunction medication from the goods and services of others. Pfizer also currently has registered and utilizes the domain name <viagra.com> for a website. Respondents, recognized the renown of the VIAGRA Mark, and the value of the Internet to Pfizer in enhancing its ability to communicate with its target audience, registered and used the Domain Name, which wholly incorporates the Mark to attract and mislead web users who are searching for information about Pfizer and its VIAGRA product. Given the lack of a legitimate basis for using the Mark as a domain name, the only reasonable inference is that Respondents acted with a bad faith intent to profit from the Mark's reputation. Respondents' bad faith registration and use is exemplified by the following: the Mark is an invented and coined mark that has a strong worldwide reputation, of which Respondents were undoubtedly aware at the time the Domain Name was registered. Respondents' repeated references to the purported VIAGRA brand product, and products that compete with the VIAGRA medication, confirms Respondents' awareness of the Mark. Moreover, Respondents had constructive knowledge of Pfizer's rights in the Mark by virtue of Pfizer's worldwide trademark registrations for the VIAGRA Mark.
Respondents registered and used the Domain Name intentionally to misdirect and divert customers looking for information about Pfizer and its VIAGRA product to a for-profit website that offers counterfeits of Pfizer's product as well as other non-Pfizer products that compete with the genuine VIAGRA product. This creates a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of the website to which the Domain Name resolves, the online retailers to which that website links, and the non-Pfizer products sold on those websites. Moreover, UDRP panels routinely hold that it is bad faith to use a domain name to sell counterfeits, as Respondents are doing here. UDRP panels also routinely hold that use of a mark in a domain name to promote the sale of products in competition with the mark owner's products, as Respondents here are doing, constitutes bad faith.
Further, efforts to hide the identity of the real party in interest through the use of "privacy" services, including the WhoisGuard service, are frequently viewed by UDRP panels as evidence of bad faith registration. Here, the real party in interest has registered the Domain Name using the WhoisGuard service in order to hide its identity. As a direct consequence of Respondents' conduct, the public will be misled as to the source, sponsorship or origin of the information and products offered on the website associated with the Domain Name. Respondents' purposefully deceptive Domain Name anticipates, relies upon on and profits from this consumer confusion or mistake and constitutes bad faith use of the Domain Name.
Respondents did not reply to Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have 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.
A. Identical or Confusingly Similar
The Panel is satisfied that Complainant has rights in the VIAGRA Mark through its long-standing and worldwide use of the VIAGRA Mark and Complainant's many trademark registrations including U.S. Trademark Registration No. 2,162,548.
Furthermore, the Panel finds that the Domain Name is confusingly similar to the VIAGRA Mark because it uses the entire well-known Mark and merely adds the common word "ninja." The addition of a common word does not lessen the extent to which the Domain Name is confusingly similar to Complainant's Mark. Adobe Systems Incorporated v. Jeff Bluff, Online RX Sales LLC, WIPO Case No. D2006-1475 (finding ,new-adobe.net> confusingly similar to complainant's ADOBE mark); see also LEGO Juris A/S v. Ranan Lachman, WIPO Case No. D2013-0915 (finding <ninjagolego.biz> confusingly similar to complainant's LEGO mark).
Lastly, it is well settled that the use of the generic Top-Level Domain ("gTLD") ".com" is not significant in determining whether a domain name is identical or confusingly similar to a trademark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts that Respondents do not have any rights or legitimate interests in the Domain Name because: (1) there is no affiliation between Pfizer and Respondents, nor has Pfizer authorized Respondents to register or use the Domain Name or the VIAGRA Mark for any purpose; (2) Respondents are not commonly known by the name "viagra" or "viagra.ninja" or any variations; and (3) Respondents are not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. They are using the Domain Name on a for-profit website to sell VIAGRA-branded tablets not made or authorized by Pfizer, as well as other products that compete with Pfizer's products. Respondents' website offers products branded as "Viagra Oral Jelly," "Viagra Professional," "Viagra Soft Tabs," "Viagra Super Active," which are in product formats in which authentic VIAGRA brand products are not sold and which are not genuine VIAGRA brand products.
Complainant's assertions and evidence establish a prima facie case, and without contrary evidence from Respondents to rebut such a prima facie case, they are sufficient to permit a finding in Complainant's favor on this issue. Pfizer Inc. v. Alex Schreiner / Schreiner & Co., WIPO Case No. D2004-0731; Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007. Furthermore, as is the case here, using the Domain Name to sell counterfeit imitations of Complainant's branded products (see, e.g., Cartier International, N.V. , Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758), or to redirect customers to competing products (Pfizer Inc. v. CheapViagraStore, WIPO Case No. D2005-0159; Pfizer Inc. v. Shawn Vink, WIPO Case No. D2011-0635), is not a legitimate use of the Domain Name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as 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 website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product."
These criteria are not exclusive and the Panel may conclude that Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the Domain Name.
The Domain Name was registered on or about September 8, 2014, many years after Complainant began using the VIAGRA Mark in April 1998 in connection with its VIAGRA product in the United States. Given Complainant's long-time use of the Mark, the distinctiveness and renown of the Mark, the significant media attention that the VIAGRA product has received, the fact that Respondents refer to Complainant's medication by name – VIAGRA – on their website and claim that the site offers "the quickest and easiest way to find the lowest prices at which to buy Viagra online", and the fact that Respondents incorporated the entirety of the Mark in the Domain Name (merely adding the gTLD ".ninja"), the Panel finds Respondents were aware of Complainant and its rights in the VIAGRA Mark when they registered the Domain Name. Thus, Respondents registered the Domain Name in bad faith.
With regard to bad faith use, Respondents have been using a domain name that is confusingly similar to Complainant's Mark to misdirect and divert customers looking for information about Complainant and its VIAGRA product to a for-profit website that offers for sale counterfeits of the product as well as other non-Pfizer products that compete with the genuine VIAGRA product. See, e.g., Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600 (finding bad faith where domain name <viagra-generic.com> was "used in connection with the promotion and sale of competing products"); Cartier International, N.V. , Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758 (finding bad faith use where the domain name was used to sell counterfeit goods). The Panel concludes that by using the Domain Name in this manner, Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with Complainant's VIAGRA Mark as to the source, sponsorship, affiliation or endorsement of such website or the products or services advertised on such website, within the meaning of paragraph 4(b)(iv) of the Policy.
Furthermore, the real parties in interest here have registered the Domain Name using the WhoisGuard service in order to hide their identity. Such efforts have been deemed evidence of bad faith. Microgaming Software Systems Limited. v. WhoisGuard, WIPO Case No. D2008-0613; ("[T]he use of the Whoisguard service has often been a factor in finding bad-faith use of a domain name."); TREDNET, Direct Distribution International Ltd. ("DDI") v. WhoisGuard Namecheap, BODYPOWER, WIPO Case No. D2012-2001 ("While the use of a privacy shield cannot be considered in itself as use in bad faith, once connected with additional elements, it clearly points towards a registration and use in bad faith").
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <viagra.ninja> be transferred to Complainant.
Harrie R. Samaras
Date: December 10, 2014