WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Websites
Case No. D2004-0730
1. The Parties
The Complainant is Pfizer Inc., New York, New York, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is Websites, United States of America.
2. The Domain Name and Registrar
The disputed domain name <blue-viagra.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2004. On September 10, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 10, 2004, eNom 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 September 14, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 4, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2004.
The Center appointed William R. Towns as the sole panelist in this matter on October 8, 2004. 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 develops and markets sildenafil citrate, an oral medication for the treatment of erectile dysfunction, as VIAGRA. The Complainant has used VIAGRA in connection with this product since April 6, 1998, and obtained its first United States registration for the VIAGRA mark on June 2, 1998. Since that time, the Complainant and its wholly owned subsidiaries have obtained numerous trademark registrations for VIAGRA around the world. The Complainant also owns and operates a website at “www.viagra.com”.
The Respondent registered the disputed domain name <blue-viagra.net> on January 24, 2004. The domain name resolves to a website bearing the title “Generic Viagra”, where generic sildenafil citrate (“GSC-100”) is offered for sale at substantially lower prices than “Viagra ®” is claimed to be available for. On the “About Us” page of the website, “Generic Viagra” is described as “a pharmaceutical company offering inexpensive and effective solutions to common health problems”. The website clearly displays an awareness that VIAGRA is a registered trademark used by the Complainant to distinguish its product from those of others.
5. Parties’ Contentions
A. Complainant
The Complainant maintains that the disputed domain name <blue-viagra.net> is confusingly similar to VIAGRA, a registered trademark that the Complainant urges is not only distinctive but famous. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent was aware of the VIAGRA mark prior to the registration of the domain name, and that the Respondent’s registration and use of the domain name in connection with the offering for sale of a competing product constitutes bad faith.
The Complainant also argues that bad faith is shown by the Respondent’s use of false contact information in connection with the registration of the disputed domain name, and by the Respondent’s use of a domain name intended by the Respondent to attract Internet users to its commercial website by creating confusion as to the Complainant’s affiliation or endorsement of the Respondent’s website. For all of these reasons, the Complainant seeks to have the disputed domain name transferred.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names.” Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process pages 169 & 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).
Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. Although the Complainant bears the ultimate burden of establishing all three elements of Paragraph 4(a), a number of Panels have concluded that Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel concludes that the Respondent’s domain name is confusingly similar to Complainant’s VIAGRA mark for purposes of Paragraph 4(a)(i) of the Policy. The Complainant beyond question has established rights in the VIAGRA mark through its registration and use in the United States and elsewhere. At a minimum, that mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
A domain name that incorporates a complainant’s mark in its entirety may be confusingly similar to that mark despite the addition of other words. It is well settled that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms. Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727. See, e.g., Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>). See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates complainant’s mark).
Accordingly, the Panel finds that the domain name registered by the Respondent is confusingly similar to the Complainant’s VIAGRA mark.
The record reflects that the Complainant has not licensed or otherwise authorized the Respondent to use the VIAGRA mark in connection with the conduct of the Respondent’s business or as part of Respondent’s domain name. The record further reflects the Complainant’s registration and use of its VIAGRA mark long before the Respondent’s registration of the <blue-viagra.net> domain name, and it is evident from the Respondent’s own website that Respondent is aware that VIAGRA is a registered trademark owned by the Complainant. There is no indication that the Respondent has been commonly known by the disputed domain name, or that the Respondent is attempting to make any legitimate noncommercial use of the domain name. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
While the Respondent has not provided a reply to the Complainant’s contentions, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Accordingly, the Panel considers it appropriate to examine the record in its entirety to determine whether any evidence exists supporting a claim by Respondent of rights or legitimate interests in the disputed domain name.
Regarding Paragraph 4(c)(ii), the Panel finds no indication in the record that the Respondent has been commonly known by the disputed domain name, although there is some indication that the Respondent may be known by the name “Generic Viagra”. Nevertheless, the Panel reads Paragraph 4(c)(ii) to require that the Respondent had rights prior to and not merely following from use of the domain name. Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. This is particularly relevant, where as here, the Respondent, marketing a generic equivalent of the Complainant’s product, has adopted a domain name so obviously connected with the Complainant and its product that the very use of the domain name suggests “opportunistic bad faith”. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (finding no legitimate interest in use of CHANEL as part of domain name leading to website selling various types of perfume). See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453; Palm, Inc. v. South China House of Technology Consultants Ltd., WIPO Case No. D2000-1492 (even a respondent commonly known by a name corresponding to the domain name should not be able to take advantage of this if the name was adopted with mala fide intent.).
For purposes of Paragraph 4(c)(i), the Panel considers it likely that the Respondent was using the disputed domain name in connection with the offering for sale of generic sildenafil citrate on its website before receiving notice of this dispute. Nevertheless, the critical inquiry under Paragraph 4(c)(i) is whether the Respondent was using the domain name in connection with a bona fide offering of goods or services. In determining whether an offering of goods or services is bona fide under Paragraph 4(c)(i), the dispositive question is whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under Paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. UltSearch, Inc, WIPO Case No. D2000-1840 (for offering under Paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under Paragraph 4(a)(iii)).
The Panel concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. It is a clear inference from the record that Respondent knew at the time of the registration of the disputed domain name that the Complainant had established rights in the VIAGRA mark. The Complainant has made a substantial showing that VIAGRA is a famous mark in the United States, but in any event the mark is clearly distinctive. The Respondent simply has no legitimate interest in using the VIAGRA mark as part of a domain name that directs Internet users to a website where a competing generic product is offered for sale. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (finding no legitimate interest in use of CHANEL as part of domain name leading to website selling various types of perfume).
As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. The Panel cannot ascribe to the Respondent’s registration and use of the disputed domain name in connection with an offering of a generic equivalent of VIAGRA anything other than the intent to disrupt the business of a competitor, which clearly constitutes bad faith under the Policy. See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408; Ansell Healthcare Products, Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
Accordingly, the Panel finds that the Respondent’s bad faith registration and use of the disputed domain name precludes any bona fide offering of goods or services under Paragraph 4(c)(iii) of the Policy. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296. The Panel also finds that the Respondent has not been commonly known by the domain name for purposes of Paragraph 4(c)(ii), and that the Respondent has not made any legitimate noncommercial or fair use of the domain name. Accordingly, the Panel concludes that Respondent has no rights or legitimate interest in the disputed domain name for purposes of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.
As noted above, there can be no dispute that the Respondent had knowledge of the VIAGRA mark at the time of registration of the disputed domain name, and no dispute that the Respondent is using the domain name to attract Internet users to a commercial website where a generic equivalent of the VIAGRA is offered for sale. The Panel has found above that the Respondent’s primary purpose in registering and using the disputed domain name was to attract, for commercial gain, Internet users to this website, thereby disrupting the business of the Complainant. This constitutes bad faith registration and use of the disputed domain name for purposes of Paragraph 4(b)(iii) and Paragraph 4(a)(iii) of the Policy. Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408; Ansell Healthcare Products, Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.1
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <blue-viagra.net>, be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: October 17, 2004
1 The Complainant argues that bad faith registration and use of the disputed domain name is shown under Paragraph 4(b)(iv) by the Respondent’s use of the domain name to create a likelihood of confusion with the Complainant’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Because the Panel finds clear and compelling evidence in the record of bad faith registration and use under Paragraph 4(b)(iii), the Panel considers it unnecessary to address this issue. The Panel also notes that the Respondent by all appearances provided false contact information when registering the disputed domain name, which some Panels also have considered to be evidence of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.