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Pfizer Inc. v. Vartan Seferian [2001] GENDND 894 (7 May 2001)

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Pfizer Inc., a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in New York, New York, U.S.A.

The Respondent is Vartan Seferian, an individual who resides at 4912 Dempster, Skokie, Illinois 60077, U.S.A.

The domain name in dispute is as follows <viagratea.com>. The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on March 24, 1999.

On March 2, 2001, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).

In an e-mail dated March 13, 2001, WIPO advised Complainant's counsel that the complaint was deficient in that Complainant did not expressly consent to submit, with respect to any challenge by Respondent to a decision to transfer or cancel the domain name in dispute, to jurisdiction in the location of the domain-holder's address. The complaint, thereafter, was amended accordingly.

The complaint, as amended, was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on March 20, 2001.

Respondent failed to file a response and a Notification of Respondent Default, dated April 10, 2001, was sent by WIPO to Respondent.

The decision of the Panel was due to WIPO on or before May 8, 2001.

Complainant Pfizer Inc. (Pfizer) is a company with global operations that discovers, develops, manufactures and markets leading prescription medicines for humans and animals. Pfizer has expended millions of dollars and extensive resources on research, development and marketing of VIAGRA brand sildenafil citrate, the first approved oral therapy for male impotence. The availability of Pfizer's VIAGRA brand sildenafil citrate represents a major medical breakthrough and the VIAGRA product has been the subject of extensive public scrutiny.

Pfizer's VIAGRA brand oral therapy was approved by the U.S. Food and Drug Administration on March 27, 1998, and the mark has been used on or in connection with the sildenafil citrate product in the U.S. since April 6, 1998. Pfizer owns U.S. Trademark Registration No. 2,162,548 for the mark VIAGRA. See Complaint, Annex 3. The VIAGRA mark is also registered by Pfizer, or by a wholly owned subsidiary, around the world. See Complaint, Annex 4.

As noted above, Respondent registered the domain name in dispute on March 24, 1999. Respondent offers to sell an herbal tea product on the <viagratea.com> web site.

Complainant contends that the domain name <viagratea.com> is identical or confusingly similar to the mark VIAGRA, in which Pfizer has rights, in that the disputed domain name wholly incorporates Pfizer's registered VIAGRA mark.

Complainant further argues that Respondent has no rights or legitimate interests in <viagratea.com>. In support of this argument, Complainant notes that:

1. It is inconceivable that Respondent did not have knowledge of the VIAGRA mark prior to registration of the domain name.

2. Respondent is not and never has been a representative of Complainant or licensed to use the VIAGRA mark.

3. While Respondent allegedly offers to sell an herbal tea product on the <viagratea.com> web site, Respondent does not fill orders for the product.

4. Even if Respondent did sell goods or services under the "viagratea" name, such use, at least in the U.S., would constitute trademark infringement and dilution and, thus, Respondent cannot be found to be making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert Pfizer's customers to its web site and to create an impression that its products are associated with or sponsored by Complainant.

Complainant further argues that the domain name should be considered as having been registered and used in "bad faith" because:

1. While Respondent was clearly aware of the VIAGRA mark, it wholly incorporated the mark as the predominant and recognizable portion of the domain name.

2. Respondent has no rights or legitimate interests in the use of <viagratea.com> and no product by that name can be or is actually sold on the web site. Thus, it follows that <viagratea.com> was registered for the illegitimate purpose of selling, renting, or otherwise transferring the domain name registration to Pfizer or to a competitor of Pfizer for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name.

3. Respondent has no rights or legitimate interest in the use of <viagratea.com>. Thus, it can be concluded that <vigratea.com> was registered to facilitate dilution, cybersquatting or infringement of Pfizer's VIAGRA mark throughout the U.S. and the world.

4. By using the domain name <viagratea.com>, Respondent has intentionally attempted to attract, for financial gain, Internet users to Respondent's web site by creating a likelihood of confusion.

5. As a direct consequence of Respondent's actions, the public will be misled as to the origin, sponsorship, or association of the products offered or sold, if any, on the <viagratea.com> web site and, as no product is actually sold on Respondent's web site, consumers will be disappointed when genuine Pfizer products are not received.

The Panel has carefully reviewed the evidence presented and determines that Complainant clearly has met all the requirements set forth in para. 4.a. of the Policy.

First, there is no question that the domain name in dispute is identical or confusingly similar to Complainant's VIAGRA mark. The inclusion of the generic term "tea" and of the top-level domain name .com in Respondent's domain name is without legal significance.

It is also clear that Complainant, through its use and registration of its VIAGRA mark throughout the world, has rights in the mark.

Further, the Panel determines that Respondent has no rights or legitimate interests with respect to the domain name, within the meaning of para. 4.c. of the Policy. The evidence establishes that while Respondent offers to sell an herbal tea product on the <viagratea.com> web site, no product is actually sold. Under such circumstances, the Panel concludes that Respondent is not engaged in a "bona fide" offering of goods or services, within the meaning of para. 4.c. (i) of the Policy. There also is no evidence that Respondent is commonly known by the domain name or that any use is noncommercial or "fair."

Finally, the Panel finds evidence of the requisite "bad faith" registration and use of the domain name. Given the widespread, virtually unprecedented, publicity that accompanied the approval of the VIAGRA brand product, it is inconceivable that Respondent was not aware of the mark at the time he registered the domain name in dispute. The Panel further concludes that there is no question that Respondent, in registering and "using" the domain name <viagratea.com>, intentionally and willfully intended to capitalize upon Complainant's trademark rights. Moreover, while Respondent's web site is technically "active" and goods are offered for sale at such site, the fact that such goods are not actually sold renders applicable a long line of panel decisions (see, e.g., Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)) to the effect that the "passive" holding of a domain name is evidence of "bad faith" registration and use.

In view of the above, the Panel grants Complainant's request for transfer to it of the domain name <viagratea.com>.

Jeffrey M. Samuels
Sole Panelist

Dated: May 7, 2001