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Pfizer Inc v. Andrey Michailov [2004] GENDND 1092 (31 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Pfizer Inc v. Andrey Michailov

Case No. D2004-0518

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 Andrey Michailov, Moscow, Russian Federation (“Russia”).

2. The Domain Name and Registrar

The disputed domain name <pfiser.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2004. On July 14, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 14, 2004, eNom transmitted by email to the Center its verification response. That response confirmed that the domain name was “under a locked status as to prevent any transfers or changes to the registration information during [this] proceeding,” and confirmed that “[y]ou can find current contact information for this domain by doing a whois lookup” on eNom’s website. (At the date of this decision, that whois lookup confirmed that the Respondent is listed as the registrant and the administrative, billing, and technical contact for the disputed domain name.) The Center then 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 July 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2004. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 11, 2004.

The Center appointed James A. Barker as the Sole Panelist in this matter on August 18, 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

Complainant

The Complainant, Pfizer Inc (“Pfizer”), is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. Pfizer discovers, develops, manufactures and markets prescription medicines for humans and animals, as well as many consumer products known world-wide. Pfizer has expended substantial sums and extensive resources on the research, development and marketing of human pharmaceuticals and animal health products.

Disputed domain name

The disputed domain name reverts to an online search engine which provides search results for “low price viagra.” Before re-directing to the search engine, the domain name also causes a small window to open that states “CONGRATULATIONS!!! YOU’VE WON VIRTUAL REALITY CASINO! CLICK on OK and Get up to +100$ Bonus on your first deposit!”

5. Parties’ Contentions

A. Complainant

The following contentions are summarized from the Complaint.

Identical or Confusingly Similar

The Complainant has registered the PFIZER name as a trademark in the United States and holds several U.S. trademark registrations for PFIZER. (Evidence of the Complainant’s U.S. trademark registrations were attached to the Complaint.) Complainant, or a wholly owned subsidiary, also owns trademark registrations for the PFIZER mark throughout the world. (A list of the Complainant’s international registrations of the PFIZER trademark and logo were also attached to the Complaint).

The PFIZER trademark is famous, and is universally recognized and relied upon as identifying the Complainant as the sole source of its products, and as distinguishing the Complainant from other companies and the Complainant’s products from the goods and services of others. Pfizer also owns and operates a website located at the domain name <pfizer.com>, registered on April 28, 1992.

The disputed domain name is (i) virtually identical to the PFIZER trademark, the only differences being that the disputed domain name includes a misspelling, a practice commonly known as “typo-squatting”; (ii) consists predominantly of the term “pfiser” which has an identical or nearly identical pronunciation to the Complainant’s marks; (iii) was registered in order to confuse users who may attempt to locate the Complainant’s website by spelling its name phonetically or by making minor misspellings; (iv) is confusingly similar to Pfizer’s own domain name <pfizer.com>; and (v) is so clearly similar to the Complainant’s PFIZER mark that it is likely to cause confusion among Pfizer’s customers.

Rights or Legitimate Interests

The Respondent has no legitimate use for the domain name <pfiser.com>. The Complainant’s adoption and use of the PFIZER mark precedes the Respondent’s registration of the disputed domain name in 2000. The Respondent had knowledge of the Complainant’s famous PFIZER mark prior to the registration of the disputed domain name. The Respondent is not and never has been a representative of the Complainant or licensed to use the PFIZER mark and is not commonly known by the name “Pfiser.”

The Complainant contended that the Respondent could not establish rights to and legitimate interests in the disputed domain name, under any of the three circumstances set out in paragraph 4(c) of the Policy.

Bad Faith

The disputed domain name was registered and is being used in bad faith. Pfizer’s adoption, use and registration of its PFIZER trademark precedes the Respondent’s registration of the disputed domain name by many years. The Respondent, in common with the public, is well aware of the vast and valuable goodwill and reputation represented and symbolized by the PFIZER trademark. Furthermore, the disputed domain name redirects to a website that provides a list of search results for Pfizer’s product Viagra. It is therefore inconceivable that the Respondent was not aware of the PFIZER mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complaint to succeed the Complainant must prove that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed respectively below.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the trademark PFIZER. Evidence of its rights were attached to the Complaint. The Complainant has been a frequent successful Complainant in other proceedings under the Policy in which the Complainant’s rights have clearly been recognized. (For a recent example, see Pfizer Inc v. Peter Carrington a/k/a Party Night Inc, WIPO Case No. D2003-0622.)

The disputed domain name is confusingly similar to the Complainant’s mark, phonetically and visually. The only difference between the Complainant’s mark and the relevant part of the domain name is the use of the letter “s” rather than “z.”

The mark PFIZER is distinctively associated with the Complainant. As such, the disputed domain name, being so phonetically and visually similar to the Complainant’s mark, is confusingly similar.

B. Rights or Legitimate Interests

The Respondent did not contest the statements by the Complainant: that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Complainant’s mark PFIZER is both well-known and distinctive. Nothing in the identity of the Respondent - as indicated in the registrar’s whois details - suggests that there is any legitimate relationship between the Respondent and the domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Registered

The Complainant’s trademark is well-known and distinctive. In the absence of a response from the Respondent, the Panel finds that the Respondent knew of the Complainant’s mark when it registered the disputed domain name, and so registered it in bad faith.

Used

The Panel also finds that the Respondent has used the domain name in bad faith. For all the reasons given above, it is highly unlikely that the Respondent would chose a domain name so confusingly similar to the Complainant’s mark unless the Respondent was seeking to misleadingly divert consumers. That the domain name reverts to a website providing links to other websites offering the Complainant’s and its competitors’ products supports that conclusion. Under paragraph 4(b)(iv) of the Policy, such an intention to misleadingly divert consumers is evidence of bad faith.

The circumstances set out in paragraph 4(b) of the Policy are not exclusive of the circumstances in which bad faith can be found. In this case there are other circumstances. In particular, the Respondent has been an unsuccessful respondent in several previous proceedings under the Policy, a number of which involved facts similar to the present case: that is, “typo-squatting” on a well-known and distinctive mark. (See, for example, Bellsouth Intellectual Property Corporation v. Andrey Michailov, WIPO Case No. D2003-0300; Kelley Blue Book Company, Inc. v. Michailov A.S., WIPO Case No. D2002 - 0328.) Accordingly, the Respondent has established a pattern of cybersquatting conduct. That pattern also suggests bad faith in this case.

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 <pfiser.com> be transferred to the Complainant.

James A. Barker
Sole Panelist

Dated: August 31, 2004