WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Private Registration, WhoisGuardService.com
Case No. D2015-1471
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 Private Registration, WhoisGuardService.com of Nanjing, Jiangsu, China.
2. The Domain Names and Registrar
The disputed domain names <vgrmalaysia.com>, <vgrsingapore.com> and <viagrastock.net> are registered with Nanjing Imperiosus Technology Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2015. On August 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 19, 2015, 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.
On August 24, 2015, the Center transmitted an email in English and Chinese to both parties regarding the language of proceeding. On August 25, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on September 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 29, 2015.
The Center appointed Douglas Clark as the sole panelist in this matter on October 7, 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.
4. Factual Background
The Complainant is an American pharmaceutical company. The Complainant is the registered proprietor of the trademark VIAGRA in numerous countries as well as the trademark VGR. The trademark VGR is registered in 6 countries including the US and China. Viagra is a well-known drug produced by the Complainant that is used to treat erectile dysfunction.
The disputed domain names <vgrmalaysia.com>, <vgrsingapore.com> and <viagrastock.net> were registered on July 1, 2014, October 3, 2014 and September 11, 2013 respectively.
5. Parties' Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <viagrastock.net> is made entirely up of the registered trademark VIAGRA and the generic description "stock" to which the generic Top-Level Domain ("gTLD") ".net" has been added. It is therefore confusingly similar to the Complainant's registered trademark VIAGRA.
The Complainant argues that the disputed domain names <vgrmalaysia.com> and <vgrsingapore.com> are made entirely up of the registered trademark VGR and the geographic terms "Singapore" and "Malaysia" to which the gTLD ".com" has been added. They are therefore confusingly similar to the Complainant's registered trademark VGR.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for VIAGRA or VGR.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain names the Respondent knew of the Complainant's rights in the VIAGRA and VGR trademarks and registered the disputed domain names to attract business to its websites which are being used to promote and sell erectile dysfunction products.
The Respondent did not respond to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complainant requested the language of the proceeding to be English on grounds that included that the websites under the disputed domain names were all written in English.
The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel, which is familiar with both English and Chinese.
The Respondent did not respond to the Center's preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint".
The fact that the websites under the disputed domain names are written solely in English establishes that the Respondent does business in English and should have a good understanding of English. Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense.
These factors lead the Panel to determine to follow the Center's preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name <viagrastock.net> is made up of the registered trademark VIAGRA, the generic term "stock" and the gTLD ".net". The disputed domain name is confusingly similar to the registered trademark VIAGRA.
The disputed domain names <vgrmalaysia.com> and <vgrsingapore.com> are made up of the registered trademark VGR; the geographic designations "Malaysia" and "Singapore"; and, the gTLD ".com". The disputed domain names are confusingly similar to the registered trademark VGR.
The Panel notes that the Complainant does not have a registered trademark for VGR in Malaysia or Singapore. However, the ownership of a trademark is generally considered to be a threshold standing issue. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). In any event, in this case, the Complainant does have a registration for VGR in China where the Registrar of the disputed domain names is located.
The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Based on the evidence, the Panel has no hesitation in finding that the disputed domain names <vgrmalaysia.com>, <vgrsingapore.com> and <viagrastock.net> were registered in bad faith and are being used in bad faith.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"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 websites under the disputed domain names are clearly being used to advertise and promote erectile dysfunction products not manufactured by the Complainant under the name VIAGRA or VGR trademarks and are in competition with the Complainant.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 names <vgrmalaysia.com>, <vgrsingapore.com> and <viagrastock.net> be transferred to the Complainant.
Date: October 25, 2015