The Complainant is Pfizer Inc, New York, New York, United States of America, represented by Hale and Dorr, LLP of United States of America.

The Respondent is Van Robichaux, of New Orleans, Louisiana, United States of America, represented by Daniel W. Nodurft of New Orleans, Louisiana, United States of America.

The disputed domain name <lipitorinfo.com> is registered with TierraNet d/b/a DomainDiscover.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 24, 2003. On May 26, 2003, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On May 28, 2003, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 June 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2003. The Response was filed with the Center on June 25, 2003.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 2, 2003. 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 Complainant has registered the word trademark "LIPITOR" on the Principal Register of the U.S. Patent and Trademark Office (USPTO), Reg. No. 2,074,561, dated June 24, 1997, in International Class 5, covering "Pharmaceutical preparations for use in the treatment of cardiovascular disorders and cholesterol reduction", claiming date of first use and use in commerce as January 28, 1997. The Complainant has registered the word trademark "LIPITOR" and related word and/or design marks in numerous countries throughout the world, and applications are pending in various countries. "LIPITOR" is an arbitrary term coined by the Complainant. (Complaint, para. 12 & Annexes 3-5)

"LIPITOR" is marketed as a cholesterol-lowering medicine and is "the most prescribed cholesterol-lowering medicine in the United States and is the second largest selling pharmaceutical product of any kind in the world. Last year, worldwide sales of the LIPITOR product were $7.972 billion". The Complainant has spent substantial sums of money advertising and promoting its "LIPITOR" product in the United States and other countries. (Id., para. 12)

According to the Registrar’s verification, the Respondent "Van Robichaux" is the registrant of the disputed domain name. According to a Better-Whois.com WHOIS database report submitted by the Complainant, the record of registration for the disputed domain name was created on August 14, 2002, and was last updated on February 12, 2003 (Complaint, Annex 1).

The Respondent, J. Van Robichaux, Jr., is an attorney with offices in New Orleans, Louisiana, USA. He provides information concerning his law practice at a website with Internet address at "www.robichauxlaw.com". This practice includes providing information to prospective clients concerning injuries that may have been caused to them by various medicines, including, for example "Baycol" and "Rezulin". An internal web page at "www.robichauxlaw.com/rezulin.asp" includes information such as a description of the medicine, the problems that have been associated with it, a recommendation to seek medical attention as may be appropriate, and a part that states:

The Respondent indicates that he rejected an offer from the Complainant to purchase the disputed domain name, although no details regarding the nature of that offer were provided by him (Response, para. III).

The disputed domain name has not been used by the Respondent to direct Internet users to an active website. However, the Respondent indicates that he would intend to use it to provide individuals with information about their legal rights and treatment options "should it ultimately be learned that ‘lipitor’ causes injuries to the consumer" (Response, para. III).

The Registration Agreement in effect between the Respondent and TierraNet d/b/a DomainDiscover, subjects the Respondent to dispute settlement under the Policy. The Policy requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

The Complainant asserts that it has rights in the trademark "LIPITOR" based on use in commerce in the United States and other countries and as evidenced by registration with the USPTO and other trademark authorities (see Factual Background, supra).

The Complainant contends that the "LIPITOR" mark is well-known throughout the world, "and especially in the United States, as designating Pfizer’s atorvastatin calcium product".

The Complainant argues that the disputed domain name is confusingly similar to its trademark. It asserts that addition of the common term "info" directly following its mark does not dispel potential consumer confusion, and that consumers are likely to assume that the disputed domain name is affiliated with it.

The Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant argues that the Respondent had knowledge of its mark prior to registration of the name, that the Respondent is not its representative nor is he licensed to use its mark, and that "passive holding" does not constitute a legitimate use of the name. The Complainant, in its words, argues:

The Complainant states that the Respondent registered and is using the disputed domain name in bad faith. It says that the Respondent deliberately selected the Complainant’s mark "for the purpose of preying on initial interest confusion", and because its mark is famous, this creates a prima facie presumption of intent to use improperly for commercial gain. The absence of the Respondent’s rights or legitimate interests is argued to dispense with the need for a finding of bad faith "use in registration".

The Complainant alleges that the Respondent’s passive holding of the disputed domain name evidences bad faith "use", citing, inter alia, Telstra Corp. v. Nuclear Marshmallows (WIPO Case No. D2000-0003).

The Complaint argues that because of its lack of rights, it may be concluded that the Respondent acted "to facilitate dilution, cybersquatting or infringement of the Complainant’s LIPITOR trademark throughout the U.S. and the world".

The Complainant says, in its words:

The Complainant asserts that the Respondent’s use of its mark in a domain name may, by virtue of engendering confusion, prevent Internet users from reaching the Complainant’s "LIPITOR" website. The Complainant states:

The Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

The Respondent accepts that the Complainant has rights in the "LIPITOR" trademark and that the disputed domain name is confusingly similar to it.

The Respondent argues that he has rights or legitimate interests in the disputed domain name. He intends to use it for the purpose of providing information to the public concerning legal rights and treatment options "should it ultimately be learned that ‘lipitor’ causes injuries to the consumer." The Respondent refers to a website maintained by another law firm using the domain name <rezulininfo.com> that offers similar information, and notes that the website acknowledges that it is "not associated or approved in any way by Parke-Davis, Warner-Lambert or Pfizer Inc."

The Respondent states that in light of the Complainant’s extensive sales of "LIPITOR", its holding of the domain name is not having an adverse effect. The Respondent says "However, should it be shown that ‘lipitor’, like ‘Rezulin’, has side effects that were not disclosed, then it is understandable why Pfizer would want to limit its potential exposure."

The Respondent argues that he did not register the domain name to sell it to the Complainant or its competitor, and states that he rejected an offer from the Complainant to purchase it. He says that he has not engaged in a prohibited pattern of conduct in registering names. He argues that he is not a competitor of the Complainant, and because he has not activated any website he could not have caused injury to a competitor. The Respondent then states in its words:

The Respondent requests the Panel to reject the Complainant’s request for an adverse finding and relief.

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, para. 2(a)).

In this case, the Respondent has filed a timely Response. The Panel is satisfied that the Respondent had adequate notice of the proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

The Respondent has conceded that the Complainant has rights in the trademark "LIPITOR" and that the disputed domain name <lipitorinfo.com> is confusingly similar to that mark. The Panel finds that the Complainant has rights in the "LIPITOR" trademark, and that the disputed domain name is confusingly similar to it.

The Respondent has further acknowledged that it included the Complainant’s mark in the disputed domain name precisely because it identifies the Complainant’s widely sold medicine. This acknowledgement serves for present purposes to address the issue whether the "LIPITOR" mark is well known.

The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

The Respondent does not contend that it has been commonly known by the disputed domain name.

The Respondent had knowledge of the Complainant’s mark when it registered the disputed domain name, and should reasonably have foreseen that the Complainant would object to its use. Whether an offering of legal services using reference to a mark in circumstances such as those present here might be a bona fide offering of services need not be decided, as the Panel considers that the Respondent had effective notice of a dispute prior to any such offering.

The Respondent principally claims "fair use" as a defense for using the Complainant’s mark in its domain name. The Respondent essentially argues that in order to provide the public with information concerning the Complainant’s product, including advice concerning treatment or legal advice, it is necessary or appropriate to use the Complainant’s mark in its domain name.

The Respondent is seeking to establish a fair use defense without having actively used the Complainant’s mark to identify a website. Paragraph 4(c)(iii) of the Policy refers to a respondent "making … fair use of the domain name". This sole panelist has in prior decisions under the Policy noted that the express requirement of "making" does not foreclose the establishment of a fair use defense in circumstances in which the disputed domain name has not been actively used. For example, in Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000, (September 25, 2000), this panelist said:

In Fielding v. Corbert the respondent had presented no evidence of a plan to make a legitimate noncommercial or fair use of the disputed domain name other than speculative statements in a response filed in the Administrative Proceeding, and had made an offer to sell the name for a substantial sum to the complainant.

The circumstances of the present case are clearly distinguished from those in Fielding v. Corbert. Here the Respondent presently maintains a website on which he offers information and representation in connection with potential legal claims associated with pharmaceutical products. He indicates that he does not yet have information concerning the Complainant’s trademarked product that he considers would justify adding it to those he presently identifies as the potential subject of legal claims. There is very little reason to doubt that the Respondent will do exactly what he says he intends to do: that is, should he become aware of facts indicating this would be appropriate, he will use the disputed domain name to direct Internet users to a website where he will offer information about the Complainant’s trademarked product and recommend that potential clients be in contact with him.

In these circumstances, the absence of active "making" use in connection with a website by the Respondent does not preclude a finding of rights or legitimate interests in the disputed domain name based on fair use. The Respondent is making use of the disputed domain name, but in a passive way. He has reserved it for future use in circumstances in which this is justified.

This does not answer the more fundamental question whether the proposed active use of the name would constitute fair use. If the Complainant has proven that the Respondent’s proposed use of the disputed domain name would not be a fair one, the mere fact that the Respondent’s present use is of a passive nature cannot establish a defense. In the proceeding, the Complainant bears the burden of proof in establishing the absence of rights or legitimate interests. Paragraph 4(a) of the Policy states "the complainant must prove that each of the[se] three elements are present". One element is that "you [the respondent] have no rights or legitimate interests in respect of the domain name" (Policy, Paragraph 4(a)(ii)).

The Complainant asserts that the Respondent will create initial interest confusion concerning its sponsorship or endorsement of the Respondent’s website, and that creating such confusion for purposes of commercial gain precludes the establishment of a fair use defense. It further argues that even if the Respondent intends only noncommercial use of the disputed domain name, attracting Internet users by creating initial interest confusion is not permitted. It refers to the decision in Banque Cantonale de Genève v. Primatex Group S.A., WIPO Case No. D2001-0477, (June 21, 2001), in support of the latter proposition. It suggests that the public interest will be harmed by the Respondent’s activities because persons seeking information from the Complainant about the Complainant’s product will find a website on which information is provided by the Respondent.

Before turning to the Respondent’s defense, the Panel addresses the Banque Cantonale de Genève v. Primatex Group S.A. decision. In that proceeding, a respondent had used the trademark of a well known Swiss bank along with a common term ("-connection") in a domain name to direct Internet users to a noncommercial expression site that was sharply critical of the Bank. The panel in that proceeding suggested that a non-commercial expression site should in some manner identify itself as such in a domain name so that Internet users would not be misled by being transported to a site they had not elected to visit. The panel in that decision said:

The panel in Banque Cantonale de Genève v. Primatex Group S.A. wisely pointed out that disputes involving questions of fair use are context specific. There is a difference between an aggressive protest site directed at a Bank and a site maintained by a lawyer who is providing information and representation concerning potentially harmful pharmaceutical products. The interests of the public in information are different, and the motivations of the provider of information on the website are different. The complainant in Banque Cantonale de Genève v. Primatex Group S.A was Swiss and the respondent Panamanian. In the present proceeding, both parties are based in the United States, and the principal nexus of the Respondent’s activities is likely to be in the United States. This decision should take into account the perspective of the U.S. judiciary on questions of fair use. In sum, the facts and circumstances of this proceeding are different than those in Banque Cantonale de Genève v. Primatex Group S.A., and the determination in this proceeding is specific to its context.

The Respondent is essentially claiming "nominative fair use" of the Complainant’s mark. In the Respondent’s view, he should be able to refer to the Complainant’s product by its trademark as a means of identification, rather than being required indirectly to describe the product, and he should be allowed do so in the domain name itself.

This sole panelist, alone or as part of a three-person panel, has on a substantial number of occasions addressed the issue of fair use of marks in domain names. Each case is different, and the analysis in each is contextual, taking into account a number of factors. Two recent decisions of the U.S. Court of Appeals for the Ninth Circuit, Playboy Enters. v. Welles, 279 F.3d 796 (9^th Cir. 2002) and Horphag Research v. Mario Pellegrini, 328 F. 3d 1108 (9^th Cir. 2003), reaffirm a useful three-prong approach for determining whether third party use of a mark is "nominative fair use".

The Respondent here is an attorney seeking to advise potential clients concerning treatment options and legal rights with respect to a particular medicine. The medicine is known to the public by its trademark name "LIPITOR". Few members of the public would be expected to understand a reference to "Pfizer’s atorvastatin calcium product". "LIPITOR" is not readily identifiable without reference to the mark.

The Respondent has not used more of the mark in the domain name than is reasonably necessary to identify the product.

Has the Respondent done anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder?

The use of the domain name <lipitorinfo.com> may initially suggest to Internet users who view it that it will direct them to a website sponsored by or affiliated with the Complainant. There may be, as the Complainant suggests, "initial interest confusion".

Some initial interest confusion will be associated with any domain name that incorporates a trademark, whether or not it is conjoined with "sucks" or another signal of impending disaffection. The domain name "LIPITOR-sucks" would initially attract Internet users by virtue of the trademark "LIPITOR" because some users would naturally be curious to find out why. Indeed "LIPITOR-sucks" would provide notice that the referenced site was not sponsored by the Complainant before it was viewed, but there nonetheless would be Internet users who set out to seek information regarding the product from its producer who would visit it because of the mark incorporated in the name. This is a question of degree, and the point at which the Internet user becomes fully aware of the provider of content.

If any nominative fair use of domain names is to be permitted, initial interest confusion cannot standing alone act as a per se preclusion. In the context of the third prong of the Ninth Circuit’s analytic approach, use of a mark in a domain name does not standing alone constitute doing something in conjunction with a mark that suggests sponsorship or endorsement by the trademark holder such as to bar a finding of nominative fair use.

The Respondent suggests that he would use the format of his existing informational web pages, plus a disclaimer, to make clear to any Internet user that the Complainant does not sponsor his website. The Respondent acknowledges by reference to another law firm’s website that appropriate nominative fair use may require an express disclaimer of affiliation with the Complainant. Since the Respondent has not established a website addressed by the disputed domain name, the Panel is not in a position to evaluate his actual conduct. Nonetheless, since the Respondent has indicated his awareness of what an appropriate fair use might require, this would be consistent with allowing a passive nominative fair use defense that might later be adversely rebutted by the Respondent’s conduct.

As the Complainant observes, the public has an interest in receiving information about medicines directly from their producers. The Complainant can and does maintain an active commercial website on which information concerning its medicine products is available.

The public also has an interest in learning of potential risks posed by medicines, and in securing the assistance of counsel as appropriate. This may be facilitated by the Respondent’s proposed use of the disputed domain name.

The Respondent by his proposed use of the disputed domain name would not prevent the public from accessing information directly from the Complainant at the latter’s website. The Respondent could provide information concerning "LIPITOR" to the public without using the mark in a domain name, although his communication to the public will be less effective that way. It would be exceedingly difficult for the Respondent to provide information about "LIPITOR" to the public on the Internet, or for the public to receive such information from the Respondent, without some use by the Respondent of the trademark (for example, on web pages addressed by other terms).

The Complainant has a commercial interest that conflicts with that of the Respondent. It is obviously in Complainant’s best commercial interests that Internet users seeking information about "LIPITOR" not be directed to a site warning them of risks, and recommending adversary legal counsel.

As the Court of Appeals for the Ninth Circuit noted in Playboy Enters v. Welles, a successful nominative fair use defense is not dependent on whether the party relying on it will make a profit from doing so. The fact that Respondent may profit from use of the disputed domain name does not prevent him from establishing a nominative fair use defense.

As noted earlier, the Complainant bears the burden of proving that the Respondent does not have rights or legitimate interests in the disputed domain name (including by establishing a nominative fair use right to use the Complainant’s mark in the name).

The Panel is not persuaded that the Complainant has carried its burden. The Complainant has established that it has rights in the mark in the disputed domain name and that the Respondent’s proposed use of the name would conflict with its interests. The Respondent has presented a number of reasons why his use of the disputed domain name would be fair under the circumstances. The Respondent’s showing has sufficiently rebutted the Complainant’s showing so as to preclude the Panel from finding that the Respondent has no rights or legitimate interests in the disputed domain name.

Proceedings under the Policy are intended to address "abusive" domain name registration and use. The Complainant is not suffering immediate harm. The Respondent is not actively using the disputed domain name. The Complainant may further pursue its interests in the courts. In light of the important public interests at stake and the reasonable nature of the Respondent’s defense, the Panel does not consider it appropriate to deprive the Respondent of the disputed domain name in this Administrative Proceeding.

Having determined that the Complainant has not proven that the Respondent lacks rights or legitimate interests in the disputed domain name, the Panel will not address the issue of bad faith.

For all the foregoing reasons, the Complaint is denied.