WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Upjohn US 1 LLC v. Indradev Pandey, Youhan Group

Case No. D2020-1401

1. The Parties

The Complainant is Upjohn US 1 LLC, United States of America (“United States” or “U.S.”), represented by Arnold & Porter Kaye Scholer LLP, United States.

The Respondent is Indradev Pandey, Youhan Group, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <viagramalaysia.com> is registered with Guangdong Nicenic Technology Co., Ltd. dba NiceNIC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2020.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 13, 2020. 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 a well-known manufacturer of pharmaceuticals. As a subsidiary of Pfizer Inc., the Complainant operates in more than 125 countries around the world. Over the years, Pfizer has spent millions of dollars and extensive resources on research, development and marketing of the VIAGRA brand of sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction.

VIAGRA-branded medication was approved by the United States Food and Drug Administration (“FDA”) on March 27, 1998, and the VIAGRA mark has been used on or in connection with the sildenafil citrate products in the U.S. since April 6, 1998.

According to the Complaint, the Complainant is a successor-in-interest to Pfizer’s rights in the VIAGRA trademark including U.S. Trademark Registration No. 2,162,548 registered on June 2, 1998. The Complainant, as a successor-in-interest to Pfizer’s rights in the VIAGRA trademark, also has rights in the trademark VIAGRA in more than 150 countries including rights in the Malaysian Trademark Registration No. 97007655 registered on June 11, 1997.

VIAGRA branded sildenafil citrate was well-known even prior to FDA approval. The medication received significant media attention, including a cover story in Newsweek Magazine and discussions on television programs such as “20/20” and “Today”. The approval by the FDA in 1998 was highly publicized, including front page coverage in the New York Times the following day, and feature articles in other publications such as USA Today. The Complainant now has more than 20 years of active use of its mark, around the world, resulting in unparalleled brand awareness and recognition among consumers.

The disputed domain name <viagramalaysia.com> was registered on October 17, 2019 and reverts to a website which promotes and sells products in direct competition with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <viagramalaysia.com> is confusingly similar to the Complainant’s famous VIAGRA trademark. The disputed domain name incorporates the Complainant’s registered trademark in its entirety and the addition of the word “malaysia” does not distinguish the disputed domain name from the Complainant’s registered VIAGRA trademark.

The Respondent is not affiliated with the Complainant and was never authorized to register or use the disputed domain name. The Complainant’s trademark VIAGRA is a coined word and is not commonly used in English or any other language. The Respondent is not known by the VIAGRA trademark and does not own any trademark rights in the mark. The Respondent is not using the disputed domain name in association with a bona fide offering of goods and/or services. The Respondent is using the disputed domain name in association with a website which promotes and sells products that compete with authentic VIAGRA tablets.

The Respondent has registered and used the disputed domain name in bad faith for the following reasons:

1) the Respondent was aware of the Complainant’s rights in the registered VIAGRA trademark when he registered the confusingly similar disputed domain name;

2) the Respondent has used the confusingly similar disputed domain name in association with a website which promotes and sells products that are in direct competition with the Complainant’s products;

3) the Respondent has made references on his website that includes offering wholesale VIAGRA products, when he is not a representative of the Complainant and is not authorized or licensed to use the VIAGRA trademark in any form or circumstance;

4) the Respondent is deliberately using a confusingly similar domain name to mislead and direct Internet users to his website for the purposes of monetary gain; and

5) the Respondent is offering for sale counterfeit products bearing the Complainant’s VIAGRA trademark.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the 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.

A. Identical or Confusingly Similar

The Panel notes that the Complainant is a subsidiary of Pfizer Inc, and that according to the Complaint the Complainant is a successor-in-interest to Pfizer’s rights in the VIAGRA trademark.

The Panel finds that under the UDRP the Complainant does have rights in the trademark VIAGRA for purposes of standing to file a complaint.

The Panel finds that the disputed domain name <viagramalaysia.com> is confusingly similar to the Complainant’s trademark as the disputed domain name incorporates the entire VIAGRA trademark. The addition of the geographic word “malaysia”, designating a country, does not serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s registered trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a strong prima facie case with respect to the Respondent’s lack of rights or legitimate interests. The Complainant clearly owns rights in the VIAGRA trademark as noted in section 4 of this Decision. The Panel acknowledges that the Complainant’s VIAGRA trademark is famous and accordingly it is not possible that the Respondent was unaware of the Complainant’s trademark rights when he registered the disputed domain name.

In the circumstances of this case, the composition of the disputed domain name, incorporating the entirety of the Complainant’s trademark, and combining it with the geographic term “malaysia” reveals an obvious intention to capitalize on the Complainant’s worldwide goodwill and reputation. See WIPO Overview 3.0, section 2.5.1.

Further, the Respondent’s use of the disputed domain name in association with a website which promotes and sells counterfeit or competing products is clearly not a bona fide use of the disputed domain name under the Policy.

In this situation, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.

Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name with obvious knowledge of the Complainant’s famous VIAGRA trademark in order to divert Internet users seeking the Complainant’s website and services for purposes of monetary gain. The Respondent has intentionally targeted the Complainant’s VIAGRA trademark, which was well known long before the registration of the disputed domain name, by using the confusingly similar disputed domain name in association with a website which promotes and sells competing products of the Complainant. The Panel finds that the Respondent has registered and used the disputed domain name in bad faith. In addition, the Respondent’s website offered for sale what appears to be counterfeit VIAGRA products, which is evidence of an abusive registration and use under the Policy.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.

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 <viagramalaysia.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: July 27, 2020