WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Afif Kurniawan, Lubismart

Case No. D2014-2205

1. The Parties

The Complainant is Pfizer Inc. of New York, New York, United States of America, represented by Kaye Scholer, LLP, United States of America.

The Respondent is Afif Kurniawan of Lubismart of Sumatera Utara, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <viagraalamiindonesia.com> (the “Disputed 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 December 17, 2014. On December 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 19, 2014, 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 December 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2015.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on February 3, 2015. 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.

The single panelist finds that the Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English in accordance with Paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is a renowned corporation in the world for a highly diversified pharmaceutical product mix ranging from prescriptions medicines for humans to consumer healthcare products. The Complainant has its global operation in more than 150 countries. The Complainant also enjoys high fame in all over the world, especially in Asia, including Indonesia, where the Respondent is located.

The Complainant has been investing extensive resources on research, development and marketing of VIAGRA brand sildenafil citrate, an oral medication for the treatment of erectile dysfunction for years. The Complainant’s VIAGRA (sildenafil citrate) medication was approved by the United States Food and Drug Administration (the “FDA”) on March 27, 1998.

The Complainant and its affiliate are the owners of the trademark VIAGRA in numerous countries, including in United States of America and Indonesia. In United States of America, the Complainant owns numerous trademark registrations including but not limited to Trademark Registration No. 2,162,548 issued June 2, 1998 for VIAGRA for goods/services in classes 6, 18, 44, 46, 51 and 52. In Indonesia, where the Respondent is located, the Complainant owns prior trademark registration No. 400731 dated 15 November 1996 for VIAGRA for goods in class 5.

The Disputed Domain Name was registered with the Registrar on September 22, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that it is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. The Complainant discovers, develops, manufactures and markets leading prescription medicines, as well as consumer healthcare products. In particular, the Complainant has expended millions of dollars and extensive resources on research, development and marketing of VIAGRA brand sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction.

The Complainant asserts that it owns numerous VIAGRA trademark registrations around the world and that its VIAGRA trademarks enjoy a worldwide reputation through marketing, advertising, and promotion for years. In particular, the Complainant is the owner of numerous trademark registrations for the VIAGRA in more than 150 countries , including U.S Trademark Registration No. 2,162,548 issued June 2, 1998 for VIAGRA for goods/services in classes 6, 18, 44, 46, 51 and 52; and Indonesia Trademark Registration No. 400731 for VIAGRA for goods in Class 5.

The Complainant contends that the Respondent seeks to capitalize on the fame of the Complainant’s VIAGRA trademark by registering the Disputed Domain Name, which resolves to a website that advertises, and links to websites selling products not made or authorized by the Complainant.

The Complainant also argues that the Disputed Domain Name reproduces the Complainant’s trademark VIAGRA in its entirety and that the addition of the geographic indication “Indonesia”, name of a country, and the descriptive term “alami”, meaning “natural” in Indonesian, to its trademark VIAGRA, which previous UDRP panels have considered to be “well-known” or “famous” and in many WIPO UDRP decisions, cause the likelihood of confusion among Complainant’s customer and the public as to the Disputed Domain Name and the Complainant’s own trademark VIAGRA and/or domain name <viagra.com>.

Finally, the Complainant contends that in numerous UDRP decisions, a domain name is considered confusingly similar to a mark where it merely adds a country name after a well-known mark.

Therefore, the Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant’s VIAGRA mark.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant argues that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to register or use its VIAGRA trademark, including seeking registration of any domain name incorporating this mark. The Complainant also alleges that the Respondent is not commonly known by either the “viagra”, “viagraalami”, “viagraalamiindonesia.com” mark/name or by any similar name.

Furthermore, the registration of the VIAGRA trademarks in the United States and other countries throughout the world precedes the registration of the Disputed Domain Name for years. Additionally, the Complainant argues that the Respondent’s registration and use of the Complainant’s VIAGRA famous trademark in the Disputed Domain Name and advertisement of other erectile dysfunction treatments on its website, the Respondent cannot reasonably pretend it was not aware of the Complainant’s mark VIAGRA prior to the registration of the Disputed Domain Name nor can Respondent demonstrate any rights and legitimate interest through the Disputed Domain Name.

The Complainant also argues that the Respondent has intentionally registered the Disputed Domain Name explicitly for the purpose of making illegitimate or unfair use of the Complainant’s marks by using the Disputed Domain Name to promote products that compete with the Complainant’s VIAGRA tablets.

Finally, the Complainant also contends that in many UDRP decisions, 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. In particular, many UDRP panels have held that a registrant has no legitimate interest in Complainant’s VIAGRA trademark where, as here, the registrant was using its domain to direct Internet user to websites that offered for sale, inter alia, products that competed with the Complainant’s VIAGRA products.

Therefore, the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith

The Complainant asserts that the Respondent was well aware and had constructive knowledge of the Complainant’s ownership and exclusive rights over the trademark VIAGRA, which is an invented and coined mark, and its domain name <viagra.com> at the time the Dispute Domain Name was registered. Additionally, the Respondent registered and uses the Disputed Domain Name incorporating the Complainant’s trademark VIAGRA in its entirety, for the purpose of misleading web users who are searching for information about the Complainant’s VIAGRA mark. Therefore, the Complainant contends that the Respondent has acted with bad faith intent to profit from the Complainant’s fame and reputation.

Finally, the Complainant argues the fact that the Respondent has registered and is using the Disputed Domain Name intentionally to misdirect and divert customers looking for information about the Complainant and its VIAGRA product to a for-profit website that offers third party trademarks products that compete with genuine VIAGRA product, creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the site to which the Dispute Domain Name resolves, the online retailers to which that site links, and the third party trademark holders products sold on those sites. Numerous UDRP panels held that use of a mark in a domain name to promote the sale of products in competition with the mark owner’s products constituted bad faith.

Therefore, the Complainant contends that Respondent’s actions are intentional, wilful and in bad faith, and were committed with full knowledge of the ownership by the Complainant of the VIAGRA trademark and the Complainant’s exclusive rights to user and license such trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case.

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First, the Panel finds that the Complainant has clearly evidenced that it has trademark rights in VIAGRA, which was registered well before the Disputed Domain Name was registered. Also, it is evidenced that the Complainant has a lengthy use of its trademark VIAGRA for its commercial activities, and in particular to offer pharmaceutical products for the treatment of erectile dysfunction worldwide.

Second, the Panel finds that the Disputed Domain Name comprises the Complainant’s distinctive and well-known VIAGRA trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the term “alami”, which is an Indonesian word that means "natural" in English; hence, Indonesia Internet users are likely to perceive it as “natural”. Thus, this element should be considered as a descriptive term. The word “Indonesia” is the common name of Republic of Indonesia; it is undisputedly a geographical term.

The Panel also finds that VIAGRA remains the dominant element in the Disputed Domain Name. Thus, in the Panel’s view, the addition of the descriptive term and geographical term “alami and “indonesia” does nothing to distinguish the Disputed Domain Name from the VIAGRA trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (See, e.g., Playboy Enterprises International Inc. v. Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours, WIPO Case No. D2004-0388).

Thirdly, the Panel finds, similar to other UDRP panels, that the addition of the generic Top-Level-Domain (gTLD) ”.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's VIAGRA trademark, and the first element under paragraph 4(a)(i) of the Policy is established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 non-commercial 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 Panel finds that the Complainant has made sufficient evidence that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademark VIAGRA.

The Panel finds that before the date of notice to the Respondent of the dispute, the Disputed Domain Name resolved to a website offering medication and health care products under various brands. In this regard, the Panel finds accordingly with the test in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (Oki Data) as follows:

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the Oki Data decision:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller (see, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524). However, in this particular case, the Panel finds that the use of the Disputed Domain Name does not fulfil the Oki Data criteria.

Indeed, the Respondent appeared to sell medication and health care products under various brands, which may compete directly against the Complainant and VIAGRA. Besides, the Panel finds that there was no evidence on the Respondent’s disclosure of its relationship with the Complainant on the website. For these reasons, the Panel finds that the Respondent’s use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services under the Oki Data criteria.

Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.

The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the Trademark and had an intention to gain profit by riding on the good reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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”.

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

Registration in bad faith

The Panel further finds that the Complainant’s trademark VIAGRA has been registered on worldwide basis, and enjoyed significant reputation for medication for treatment of erectile dysfunction. The Complainant’s VIAGRA trademark has been in use in, among others, United States of America and Indonesia, where the Respondent resides.

Besides, the Complainant also owns and operates the website under the domain name <viagra.com>, to which the Disputed Domain Name is identical, except the addition of the descriptive term “alami”, which is an Indonesian word meaning “natural”, and the geographical iterm “IIndonesia”. Both the Complainant’s trademark VIAGRA, which was first registered in 1998, and domain name <viagra.com>, which was registered in 1997 according to a WhoIs search by the Panel, well predate the Disputed Domain Name.

In addition, VIAGRA, which is an invented and coined word, without any dictionary meaning, is neither descriptive nor generic in respect of any products or services.

These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and the Complainant’s trademark VIAGRA and domain name <viagra.com> before his registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

Use in bad faith

Further, as discussed earlier, the Respondent is using the Complainant’s well-known trademark VIAGRA in its entirety as the uniquely distinctive element in the Disputed Domain Name. The Disputed Domain Name resolves to a commercial website that promotes and/or offers third party trademark holders products that compete with the Complainant’s VIAGRA products. 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. The Panel finds that, similar to numerous previous UDRP decisions, the 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).

In addition, 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).

Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv), and the third element under paragraph 4(a)(iii) of the Policy is established.

7. Decision

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 <viagraalamiindonesia.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: February 13, 2015