WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. PrivacyProtect.org / BkkDreams, Bangkok Dreams

Case No. D2013-1011

1. The Parties

1.1. The Complainant is Pfizer Inc. of New York, New York, United States of America, (the “Complainant”) represented by Kaye Scholer, LLP, United States of America.

1.2. The Respondent is PrivacyProtect.org of Queensland, Australia / BkkDreams, Bangkok Dreams of Bangkok, Thailand (the “Respondent”).

2. The Domain Name and Registrar

2.1. The disputed Domain Name <viagragirlescort.com> (the “disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2013. On June 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On June 7, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 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 June 10, 2013.

3.2. 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”).

3.3. On June 12, 2013, the Respondent sent an email to the Center indicating its willingness to transfer the disputed Domain Name to the Complainant, and the Center subsequently invited the Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the parties. Further to the Complainant’s request of June 17, 2013, the Center notified that the proceedings would be suspended from June 18, 2013 to July 18, 2013. On July 15, 2013, the Complainant requested the Center to resume the proceedings. On July 16, 2013, the Center notified the parties that the proceedings had been reinstituted.

3.4. 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 July 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2013.

3.5. The Center appointed Ike Ehiribe as the sole panelist in this matter on August 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.

4. Factual Background

4.1. The Complainant in these administrative proceedings is Pfizer Inc. a corporation created under the laws of the state of Delaware, United States with its principal place of business in New York. The Complainant is described as one of the world’s largest pharmaceutical manufacturers and sellers and maintains operations in more than 150 countries. The Complainant’s Viagra (sildenafil citrate) medication, a medication for erectile dysfunction was approved by the United States Food and Drug Administration on March 27, 1998. The Complainant also owns the trademark rights in VIAGRA which it registered in the United States with Registration No. 2,162,548 on June 2, 1998 with the United States Patent and Trademark Office (USPTO). A copy of the certificate of registration is attached to the Complaint and marked Annex 3. The Complainant and its affiliates use the VIAGRA mark as the name of and in connection with worldwide sales of, its medication for erectile dysfunction. The Complainant is said to have expended millions of dollars on research, development and the marketing of Viagra products, the first approved oral medication for the treatment of erectile dysfunction. The Complainant has attached a list marked Annex 4 of numerous trademark registrations for VIAGRA throughout the world including in Thailand where the Respondent is located. It is said that the Complainant has embarked on extensive publicity and post-approval advertising thereby rendering the trademark VIAGRA famous throughout the world as designating the Complainant’s brand of oral therapy for erectile dysfunction. The Complainant’s VIAGRA trademark is therefore said to be universally recognized and relied upon as identifying the Complainant as the sole source of the drug, and as distinguishing the Complainant’s product from the goods and services of others. As a result it is said that the VIAGRA trademark has acquired substantial goodwill and is an extremely valuable asset.

4.2. The Respondent in these administrative proceedings is BkkDreams, Bangkok Dreams located in Bangkok, Thailand. The Respondent registered the disputed Domain Name <viagragirlescort.com> on August 24, 2011 according to the publicly available WhoIs database.

5. Parties’ Contentions

A. Complainant

5.1. The Complainant contends that the disputed Domain Name <viagaragirlescort.com> is identical or confusingly similar to the Complainant’s VIAGRA trademark in that the disputed Domain Name incorporates entirely the Complainant’s famous and well-known VIAGRA trademark and merely attaches to the VIAGRA mark, the generic terms “girl” and “escort”. The Complainant also asserts that the disputed Domain Name is in addition, confusingly similar to the Complainant’s own domain name <viagra.com>, at which the Complainant operates a website. The Complainant refers to a large number of previous UDRP decisions to submit that the addition of mere generic terms to the disputed Domain Name does not preclude a finding of confusing similarity as held in Miss Universe L.P. LLP v. Abon Hazarika, WIPO Case No. D2010-2077 and Nokia Corporation v. Nokia-girls.com, WIPO Case No. D2000-0912 among other decisions.

5.2. The Complainant further submits that the Respondent is not in any way affiliated with the Complainant and has never authorized the Respondent to register or use the disputed Domain Name or the Complainant’s VIAGRA mark. The Respondent therefore has no rights or legitimate interests in the VIAGRA mark. The Complainant states further that the Respondent is not commonly known by the name “Viagra”, <viagragirlescort.com> or any variation thereof. The Complainant further argues that the Respondent’s use of the disputed Domain Name confirms that it is not making a legitimate noncommercial or fair use of the disputed Domain Name as the Respondent has intentionally registered the disputed Domain Name for the purpose of making illegitimate or unfair use of the Complainant’s trademark by using the disputed Domain Name to attract visitors to its for-profit website advertising “escort” and adult entertainment services. In support of this contention, the Complainant refers to several UDRP decisions that have held that diverting Internet users to websites advertising “escort” and similar services does not constitute a “bona fide” offering of goods or services and is not a legitimate or noncommercial fair use of the disputed Domain Name. The Complainant refers to Prada S.A. v. WhoIs as N/A, WIPO Case No. D2008-0135 and Dig Eh Hotel LLC Delaware, Jumeirah Hospitality & Leisure (USA) Inc. and Jumeirah International LLC v. Liq-Wid Advertising Inc., WIPO Case No. D2007-0573 to mention a few.

5.3. On the question of bad faith registration and use, the first submission made by the Complainant is that the Respondent’s lack of rights or legitimate interests in the use of the disputed Domain Name renders the issue of bad faith registration unnecessary to be considered following Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020. To further substantiate the bad faith use and registration requirement of the Policy, the Complainant refers to a number of other factors that exemplify bad faith use and registration discernible from the Respondent’s conduct. Firstly, the Complainant submits that the VIAGARA trademark is an invented and coined mark, without any specific meaning in the English language, which has a strong worldwide reputation of which the Respondent was undoubtedly aware at the time the disputed Domain Name was registered by the Respondent. Furthermore, the Complainant asserts that the Respondent was undoubtedly aware of the Complainant’s registration of the VIAGRA trademark in the United States and in other jurisdictions at the time the Respondent registered the disputed Domain Name. In support, the Complainant relies on Diners Club International Ltd. v. Cameron Jackson, NAF Claim No. 0502782 and other cases such as Pfizer Inc. v. Vartan Seferian, WIPO Case No. D2001-0316; Pfizer Inc. v. Order Viagra Online, WIPO Case No. D2002 -0366 and Pfizer Inc. v. Sangwoo Cha, WIPO Case No. D2003-0256 amongst others. Secondly, it is submitted that the Respondent has never been a representative of the Complainant or licensed to use the VIAGRA trademark. Thirdly, the Complainant draws attention again to the fact that the Respondent has registered and is using the disputed Domain Name intentionally to misdirect and divert Internet users to a for-profit website that promotes the Respondent’s “escort” service business. Such conduct, it is said, is thereby, creating a likelihood of confusion with the Complainant’s VIAGRA trademark as to source, sponsorship, affiliation or endorsement of the website to which the disputed Domain Name resolves and the services offered on that website. The Complainant therefore concludes that the Respondent is taking an unfair advantage of the Complainant’s famous trademark for the Respondent’s own commercial benefit. In conclusion, the Complainant submits that the Respondent’s actions are intentional, willful and in bad faith and were committed with the full knowledge of the Complainant’s exclusive rights to use and license the VIAGRA trademark.

B. Respondent

5.4. The Respondent did not reply to the Complainant’s contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1. Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights: (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.

6.2. As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings.

A. Identical or Confusingly Similar

6.3. The Panel finds from the unchallenged facts as advanced by the Complainant that the disputed Domain Name <viagragirlescort.com> is undoubtedly identical or confusingly similar to the Complainant’s well-known trademark VIAGRA and indeed the Complainant’s own domain name <viagra.com> at which the Complainant operates a website. Furthermore, the Panel finds that the mere addition of generic or descriptive terms such as “girl” and “escort” to the disputed Domain Name does nothing to preclude a finding of confusing similarity under the Policy. See in this regard, a previous UDRP decision in Miss Universe L.P. LLP v. Abon Hazarika, supra considering the domain name <missuniverseescort.com>. Clearly, the disputed Domain Name incorporates entirely the Complainant’s VIAGRA trademark. Considering the Complainant’s well-established rights in the famous VIAGRA trademark as recognized in several UDRP decisions including Pfizer Inc. v. Jeff Ferris, WIPO Case No. D2006-1242, a decision where the panel described the Complainant’s trademark VIAGRA as being both a strong and famous trademark and Pfizer Inc. v. CheapViagraStore, WIPO Case No. D2005-0159 amongst other decisions, the Panel finds that there cannot be any doubt that the disputed Domain Name is identical and confusingly similar to the Complainant’s VIAGRA trademark.

6.4. The Panel is accordingly satisfied that the Complainant has established that the disputed Domain Name <viagragirlescort.com> is confusingly similar to the Complainant’s VIAGRA trademark.

B. Rights or Legitimate Interests

6.5. The Panel finds in addition that the Respondent has not furnished any evidence of circumstances necessary to establish that the Respondent has any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The WhoIs database reveals that the Respondent registered the disputed Domain Name on August 24, 2011 well after the Complainant had established exclusive rights in its VIAGRA trademark in numerous jurisdictions including the United States where the Complainant is based. The Complainant registered the VIAGRA trademark through USPTO on June 2, 1998 and in Thailand where the Respondent is based on April 4, 1997. In the first instance, the Panel finds that the registration of a domain name which entirely incorporates a third party’s famous trademark may not establish the existence of any rights or legitimate interests by the Respondent. See in this regard an often-cited previous UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Secondly, as the Complainant argues, the Respondent is not in any way affiliated with the Complainant nor has it been authorized to register or use the disputed Domain Name. Thirdly, the Panel finds that the Respondent intentionally registered the disputed Domain Name after approximately thirteen years of the Complainant’s trademark registration, for the purposes of making illegitimate or unfair use of the Complainant’s trademark by using the disputed Domain Name to divert Internet users for commercial gain to the Respondent’s website advertising its “escort” and adult entertainment services. As the Complainant asserts, in this Panel’s view such conduct cannot be described as a bona fide offering of goods and services or a legitimate or noncommercial fair use. See the previous UDRP decisions such as Miss Universe L.P. LLP v. Abon Hazarika, supra and Dig Eh Hotel LLC Delaware, Jumeirah Hospitality & Leisure (USA) Inc. and Jumeirah International LLC v. Liq-Wid Advertising Inc., supra. See also generally, Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903 on the principle propounded therein, to the effect that the unauthorized usage of a domain name cannot be described as a bona fide offering of goods and services nor a legitimate noncommercial or fair use of a disputed domain name.

6.6. In the circumstances, the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.7. On the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name in bad faith and has since that registration, engaged in bad faith use. In arriving at this conclusion, the Panel has taken into account a number of factors, which as the Complainant submits exemplifies the Respondent’s bad faith registration and use. In the first instance the Complainant’s trademark VIAGRA is an invented and coined mark, which the Respondent must have been aware of as at the time the Respondent decided to register the disputed Domain Name. Considering that the Respondent must have had actual or constructive knowledge of the Complainant’s rights at the time of registration, such registration as has been held in a number of previous UDRP decisions must be tantamount to bad faith registration. See in this regard Pfizer Inc. v. Vartan Seferian, supra and in particular Pfizer Inc. v. Sangwoo Cha, supra where the panel in finding that the requirement of bad faith registration had been established in a complaint concerning the domain name <viagra.net> held as follows: “On the basis of its considerations concerning the allegations and the evidence presented, the Panel first concludes that it is inconceivable that the Registrant of the domain name was, at the time of the registration of the domain name, unaware of Complainant’s trademark VIAGRA which is a particularly distinct invented word without any specific meaning in the English language. The Panel therefore concludes that the registration was made in the full knowledge of the trademark and made possibly for the purpose of marketing the pornographic material and/or to capitalize, for the purposes on the reputation of the well-known VIAGRA mark. The Panel considers that the circumstances present in this case amount to registration in bad faith.” This Panel is satisfied that the findings and reasoning in this case applies with equal force to the present proceedings.

6.8. Secondly, as submitted by the Complainant it is abundantly clear that the Respondent has registered and is using the disputed Domain Name intentionally, to misdirect and divert Internet users, for commercial gain, to the Respondent’s website that advertises the Respondent’s “escort” service and adult entertainment business. That conduct in itself is evidence of bad faith registration and is further evidence of bad faith use, as such conduct creates the likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website to which the disputed Domain Name resolves and the services offered on that website. In addition and as argued by the Complainant, numerous previous UDRP decisions, including, V&S Vin & Spirit AB v. Coreswood Limited, WIPO Case No. D2006-0594, (where the panel in considering the domain name <absolut-escort.com>), have found the use of the complainant’s trademark to direct Internet visitors to a website offering, “escort” or similar services to constitute bad faith use. Thirdly, the Complainant asserts that the Respondent’s actions are intentional, willful and have been carried out in bad faith with full knowledge of the Complainant’s ownership of the VIAGRA trademark. The Panel finds this assertion to be well founded, as there is no evidence to show that the Respondent has ever had any affiliation with the Complainant or was it ever authorized or licensed to use the Complainant’s trademark. Fourthly, as indicated above at paragraph 5.4, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to rebut the evidence and submissions made by the Complainant in these proceedings.

6.9. Accordingly, the Panel finds that the Complainant has established satisfactorily that the Respondent registered and is using the disputed Domain Name in bad faith.

7. Decision

7.1. 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 <viagragirlescort.com> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Date: August 22, 2013