WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer, Inc. v. Martin Marketing

Case No: D2002-0793

The Complainant is Pfizer, Inc., a corporation organized in the State of Delaware, United States of America ("USA"), with place of business in New York, New York, USA.

The Respondent is Martin Marketing, with address in New York, New York, USA.

The disputed domain name is <viagra-nascar.com>.

The registrar of the disputed domain name is Intercosmos Media Group, Inc. dba directNIC.com ("Intercosmos"), with business address in New Orleans, Louisiana, USA.

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a Complaint via e-mail received by the WIPO Arbitration and Mediation Center (the "Center") on August 22, 2002, and via courier mail received by the Center on August 27, 2002. Complainant paid the requisite filing fees. On August 26, 2002, the Center transmitted a Request for Registrar Verification to the Registrar, Intercosmos, with the Registrar’s Response received by the Center on August 26, 2002.

(b) On August 28, 2002, the Center transmitted notification of the Complaint and commencement of the proceeding to Respondent via e-mail and courier mail. The last day for submitting a Response was set forth as September 17, 2002. The courier mail notification was returned to the Center as undeliverable.

(c) On August 29, 2002, Respondent transmitted an e-mail to the Center stating "We are looking into this and have attorneys preparing a letter as the site is clearly not misusing Pfizer trademark and even links to their site."

(d) On September 19, 2002, the Center transmitted via e-mail notification to Respondent of its default in responding to the Complaint.

(e) On October 28, 2002, the Center invited the undersigned to serve as Panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On October 29, 2002, the undersigned transmitted the executed Statement and Declaration to the Center.

(f) On November 1, 2002, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole Panelist as the Administrative Panel (the "Panel") in this matter. The Center notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to the Center by November 15, 2002. The Panel received a hard copy of the file in this matter by courier from the Center.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

Complainant has registered the term "VIAGRA" as a trademark on the Principal Register at the United States Patent and Trademark Office (USPTO), Reg. No. 2,162,548, dated June 2, 1998, in International Class 5, covering "Compound for treating erectile dysfunction", asserting date of first use and first use in commerce of April 6, 1998 (Complaint, para. 12 & Annex 3). "VIAGRA" is a coined term with no denotative meaning (id. Para. 12).

Complainant holds registrations for the "VIAGRA" trademark in many countries other than the United States (id., para. 12 & Annex 4).

Complainant has registered the domain name <viagra.com> and maintains an active commercial website at Internet address (URL) <www.viagra.com> (id., para. 12 & Annex 5).

Complainant has advertised its "VIAGRA" brand "sildenafil citrate" widely in the United States and in other countries (id., para. 12). As a consequence of such advertising and news reports, Complainant’s "VIAGRA" mark is well known in connection with a drug for the treatment of erectile dysfunction.

The National Association for Stock Car Racing ("NASCAR"), which claims ownership in the "NASCAR" trademark and service mark has consented to the transfer of the disputed domain name to Complainant (id., para. 12 & Annex 6 (Affidavit of Karen B. Leetzow, Intellectual Property Counsel to NASCAR)). NASCAR has not authorized Respondent to use its trademark and service mark in a domain name or otherwise (id.).

Complainant is the sponsor of a car that has participated in the NASCAR Winston Cup Series. Such car has prominently displayed the "VIAGRA" mark, enjoyed success in the racing series and been featured in Complainant’s television advertisements (id., para. 12).

According to the Registrar’s Verification to WIPO, "Martin Marketing" is the registrant of the disputed domain name <viagra-nascar.com>. The administrative contact is "Martin, Jim <firstpharmacy@yahoo.com>". The record of the disputed domain name was created on September 6, 2001, and was last updated on July 17, 2002.

Respondent has maintained an active commercial website at URL <www.viagra-nascar.com>. The home page of this website is headed with the terms "VIAGRA NASCAR" in large type, with the subheadings "MAIN/VIAGRA INFO/VIAGRA CAR/ORDER VIAGRA". The web pages include detailed information concerning VIAGRA, as well as detailed information concerning the NASCAR race car sponsored by Complainant. At the bottom of the web pages, the following appears in small type: "Copyright©2001. Viagra Nascar. ALL RIGHTS RESERVED. All trademarks and registered trademarks are of their respective companies. Viagra® is a registered trade [unreadable from printout] site is in now [sic] way affiliated with Phizer [sic]. Only a physician should decide if Viagra® is appropriate for you. These pages are only a summary. If you have further questi [unreadable] information about Viagra®, visit viagra.com [hyperlink] or feel free to fill out our contact form or simply e-mail." (Complaint, Annex 11)

As of August 20, 2002, Respondent’s website contained a hyperlink to <www.secure-medical.com/viagra-nascar.com/order.html>, which offered to sell VIAGRA product, as well as hyperlinks to websites selling jewelry and sporting tickets. A "pop-up" window also provided click-through links to an on-line gambling website <joebet.com> (id., para. 12 & Annex 12), as well as other websites offering VIAGRA information, herbal virility solutions and tooth whitener (id., para. 12 & Annexes 13-15).

The physical address provided by Respondent in its domain name registration apparently does not exist. The telephone number, as of August 14, 2002, was not working. (Id., Affidavit of Toth, counsel for Complainant, at Annex 10).

The Registration Agreement in effect between Respondent and Intercosmos subjects Respondent to Intercosmos’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

Complainant asserts that it holds rights in the trademark "VIAGRA" based on use in commerce in the United States and elsewhere, and as evidenced, inter alia, by registration at the USPTO (see Factual Background supra).

Complainant asserts that the National Association for Stock Car Racing holds rights in the trademark and service mark "NASCAR", and has consented to Complainant’s registration of the disputed domain name, should its transfer be directed to Complainant.

Complainant argues that the disputed domain name is identical or confusingly similar to its mark.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent has not been authorized to use its mark, that Respondent has not been commonly known by the disputed domain name and that Respondent’s use of false contact information evidences its lack of legitimate interests. Complainant further argues that Respondent’s use of the disputed domain name in a manner intended to confuse consumers regarding an association between them for commercial gain is not a legitimate use, and that Respondent’s use of the name in connection with the sale of products unrelated to Complainant is not a legitimate use. Complainant states that Respondent’s website is not a legitimate fan website.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith, as evidenced by deliberate registration and use of Complainant’s well known mark to confuse consumers regarding Complainant’s association with or sponsorship of its website, which inter alia offers for sale products not related to Complainant, and also offers to sell its product without authorization, all for commercial gain. Complainant asserts that Respondent’s disclaimer is not effective to dispel Internet user confusion.

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

Respondent did not formally reply to Complainant’s contentions. It asserted in an e-mail to the Center "the site is clearly not misusing Pfizer trademark and even links to their site."

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 for Uniform Domain Name Dispute Resolution Policy (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., para. 2(a), Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. Respondent transmitted an e-mail to the Center indicating that it was aware 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:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

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

Complainant is the holder of a trademark registration for the term "VIAGRA" on the Principal Register of the USPTO. It has registered the mark with other trademark authorities throughout the world. The term "VIAGRA" is arbitrary and distinctive. The "VIAGRA" mark is well known in respect to a drug addressing erectile dysfunction. The Panel determines that Complainant has rights in the trademark "VIAGRA". Those rights arose before Respondent’s registration of the disputed domain name.

The disputed domain name <viagra-nascar.com> directly incorporates Complainant’s mark as its lead term, and adds a hyphen and the trademark and service mark of a third party (as well as the gTLD ".com"). The addition of the third party mark does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark. Moreover, in light of Complainant’s use of its mark in connection with the third party mark for its own advertising purposes, the combination of the two marks would convey to Internet users familiar with Complainant’s advertising an expected association. In the circumstances of this proceeding, the addition of a hyphen and ".com" do not serve to alleviate potential Internet user confusion between the disputed domain name and Complainant’s mark. Based on the overall visual impression and expected Internet user association, the Panel determines that the disputed domain name is confusingly similar to Complainant’s "VIAGRA" mark.

Complainant has established the first element necessary for a finding of abusive domain name registration and use.

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

"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 noncommercial 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." (Policy, paragraph 4(c))."

Respondent has offered no evidence that it has been commonly known by the disputed domain name. Respondent has no prior business association with Complainant and has used Complainant’s mark in the disputed name to attract Internet users to a website where it offers to sell various products and services unconnected with Complainant or its trademarked product. Such use of the disputed domain name is not a fair use of Complainant’s mark.

Complainant’s mark is arbitrary and well known. Respondent was without doubt aware of Complainant’s mark when it registered the disputed domain name, and would likewise be on constructive notice that Complainant would dispute its use of the mark in connection with its website. In the circumstances of this proceeding, in which Respondent has used the marks of two third parties without their consent to attract Internet users to a website where it offers for sale goods and services unconnected with those third parties, Respondent did not make a bona fide offering of goods prior to notice of a dispute.

Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name, and has established the second element necessary for a finding of abusive domain name registration and use.

Respondent registered and used the disputed domain name to direct Internet users to a commercial website where it directly and indirectly offered for sale a variety of goods and services unconnected with Complainant, as well as offering for sale Complainant’s product. Respondent included a small typeface disclaimer of association with Complainant at the bottom of certain web pages. However, that disclaimer is not adequate to overcome the overall impression created by Respondent’s use of Complainant’s mark in the domain name and again prominently on its home page (and elsewhere on its website) of an association with or sponsorship by Complainant. The Panel finds that Respondent has used the disputed domain name for commercial gain by creating confusion among Internet users as to Complainant’s sponsorship of or affiliation with Respondent’s website. Such use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has satisfied the third element necessary for a finding of abusive domain name registration and use by Respondent.

Complainant has submitted authorization from the holder of the NASCAR trademark and service mark sufficient to relieve potential concern that transfer of the disputed domain name to Complainant would interfere with the rights of the third party trademark holder.

The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.

Based on its finding that the Respondent, Martin Marketing, has engaged in abusive registration and use of the domain name <viagra-nascar.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <viagra-nascar.com> be transferred to the Complainant, Pfizer, Inc.