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Pfizer Inc v. Ian Herman [2004] GENDND 1197 (22 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc v. Ian Herman

Case No. D2004-0597

1. The Parties

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

Respondent is Ian Herman, Montreal, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <shopgenericviagra.com> (the “Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2004. On August 3, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On August 5, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2004. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2004.

The Center appointed Anna Carabelli as Sole Panelist in this matter on September 8, 2004, indicating that, absent exceptional circumstances, the decision would be due by September 22, 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 is a multinational pharmaceutical corporation engaged, amongst other, in the development, manufacture and marketing of prescription medicines for humans and animals. Complainant’s products include sildenafil citrate, an oral medication for the treatment of erectile dysfunction, marketed under the trademark VIAGRA.

Complainant has provided evidence of trademark registrations for the word “VIAGRA” in the United States (Registration No. 2,162,584 dated June 2, 1998 - see Annex 3) and in many other countries, including Canada (see Annex 4), owned by Complainant or by its wholly owned subsidiaries.

According to the US certificate of registration, the first use of the trademark in commerce was April 6, 1998.

The VIAGRA medication was approved by the United States Food and Drug Administration (FDA) in March 1998.

In June 1997, Complainant registered the domain name <viagra.com> (Annex 5) and maintains an active web site at the URL “www.viagra.com”.

Respondent registered the Domain Name on September 2, 2003 (Annex 1).

The Domain Name currently does not resolve to any active web page, but only to the registrar Network Solutions, LLC holding page. The printout of said web page (Annex 6) shows the statement “This Site is Under Construction and Coming Soon”.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the VIAGRA medication has attracted enormous media attention even prior to FDA approval which was also highly publicized and subject to public scrutiny and commentary;

- by virtue of this extensive publicity and post-approval advertising and promotion, the VIAGRA trademark has become famous worldwide as designating Complainant’s brand of oral therapy for erectile dysfunction and is to be considered as an extremely valuable commercial asset;

- the VIAGRA trademark is a coined and fanciful term having no denotative meaning;

- the Domain Name wholly incorporates Complainant’s trademark with the addition of the generic terms “shop” and “generic”;

- the Domain Name is confusingly similar with Complainant’s trademark since a common term preceding or following a trademark does not create a new or different mark in which Respondent has right;

- Respondent has no rights or legitimate interests in the Domain Name;

- in particular, Respondent is not and never has been a representative of Complainant or licensed to use the VIAGRA trademark; furthermore Respondent is not commonly known by the Domain Name and does not offer goods or services under the Domain Name;

- Respondent is using the web site to which the Domain Name resolves, as a search engine, which does not constitute a use in connection with a bona fide offering of goods and services;

- Respondent registered and has been using the Domain Name in bad faith;

- Respondent clearly had knowledge of Complainant’s famous trademark prior to registration of the Domain Name;

- by taking Complainant’s trademark as his domain name, Respondent is attempting to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant’s trademark as to source, sponsorship, affiliation or endorsement;

- the fact that Respondent has no legitimate interest in the Domain Name and that no product with the name “shopgenericviagra.com” is actually sold on a web site affiliated with the Domain Name, shows Respondent’s primary purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name.

In support of its contentions Complainant refers to a number of factors and to previous Panel decisions.

Consequently, Complainant requests the transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; and

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

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by the respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.

In the Panel’s view it is beyond dispute that Complainant has trademark rights in the “VIAGRA” name which is an invented word with a high degree of inherent distinctiveness and is well known in respect of a drug addressing erectile dysfunction (Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870; Pfizer Inc. v. Martin Marketing, WIPO Case No. D2003-0793; Pfizer Inc. v. Jason Haft, WIPO Case No. D2003-0133; Pfizer Inc. v. myviagra WIPO Case No. D2002-0463; Pfizer Inc. v. Order Viagra online, WIPO Case No. D2002-0366).

The Domain Name entirely incorporates Complainant’s trademark VIAGRA with the addition of the descriptive and generic terms “shop” and the “generic”.

It is an established principle that the mere addition of a generic term does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name and the complainant’s trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464).

On this issue the Panel further notices that the word “shop” can likely be associated with Complainant’s business and therefore the combination with “VIAGRA” clearly is confusing (Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428).

In the light of the above and of the fact that the addition of the gTLD.com has no legal significance when comparing the Domain Name and Complainant’s trademark, the Panel finds that this element has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

Complainant has provided evidence of its rights in the trademark for the term “VIAGRA” and that the Domain Name was registered by Respondent on or about September 2, 2003. Based on Complainant’s submissions, the Panel considers that at that time Complainant had acquired a considerable reputation throughout the world for the VIAGRA mark in respect of a drug addressing erectile dysfunction.

Complainant also contends that Respondent has no legitimate justification for having registered the Domain Name since he (i) is not and never has been a representative of Complainant or licensed to use the VIAGRA trademark; and (ii) is not commonly known by the Domain Name. Complainant also contends that Respondent is using the Domain Name as a search engine which does not constitute a legitimate fair use under the Policy.

In this regard, the Panel disagrees with Complainant that Respondent is using the Domain Name as a search engine. In the Panel’s view Annex 6 to the Complaint shows that the Domain Name actually resolves to the registrar Network Solutions, LLC holding page, the latter hosting a search engine. Hence, there is no active web site connected to the Domain Name, given that, as clearly stated at the Network Solutions LLC holding page, the web site is still under construction.

This therefore is rather a case of passive holding of the Domain Name, given that, even though over a year has passed since Respondent registered the Domain Name, there is evidence, according to Annex 6 to the Complaint, that Respondent is not using and has not made “demonstrable preparations” to use the Domain Name in connection with a bona fide offering of goods or services. In fact, the Domain Name is not currently being used for any purpose whatsoever, being presently kept “under construction” (see Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602; Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy Development USA Corp., WIPO Case No. D2002-0336).

In the light of the above, Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many UDRP decisions, in such a case the burden of proof shifts to the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

Because Respondent failed to submit an answer to the Complaint, and given that the allegations of the Complaint prima facie do not raise substantial doubts, the Panel accepts as true all allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel is convinced that Respondent registered and has been using the Domain Name in bad faith, to intentionally attract for commercial gain Internet users to his web site by trading on the goodwill associated with the VIAGRA brand and mark and creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site (paragraph 4(b)(iv) of the Policy).

As mentioned in paragraph 6(A) above, Complainant’s trademark VIAGRA has acquired worldwide reputation, identifying the sildenafil citrate pharmaceutical product developed, manufactured and marketed by Complainant. It is therefore inconceivable that Respondent registered the Domain Name unaware of Complainant’s rights in its VIAGRA mark and with an intent to use it in good faith. Respondent appears rather to have intentionally registered the Domain Name entirely incorporating Complainant’s mark, both to take advantage of the goodwill associated with the VIAGRA trademark and to prevent Complainant as holder of the trademark VIAGRA from reflecting the mark in a corresponding domain name.

Since the web site connected to the Domain Name is presently under construction, the Domain Name is not being used for any commercial or non-commercial activity. Since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (see also the Redcats S.A. And La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859; Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Sveriges Television AB v. Lars Bergqvist, WIPO Case No. D2004-0480) it has been held that the “passive holding of a domain name may be sufficient to constitute bad faith use, taking into consideration the overall context of Respondent’s behaviour”.

In the present case, the following circumstances are conclusive evidence of registration and use of the Domain Name in bad faith:

(i) it is inconceivable that Respondent registered, as a mere coincidence, Complainant’s trademark “VIAGRA”. Under paragraph 2 of the Policy, when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the present case, given that Respondent must have been well aware of the existence of Complainant’s trademark, the Panel finds that Respondent must have registered the Domain Name in bad faith (see for instance Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Nokia, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397);

(ii)Respondent has not conducted any legitimate commercial or non-commercial activity in connection with the Domain Name;

(iii) Respondent has submitted no response and therefore has provided no evidence whatsoever of any actual or contemplated good faith use of the Domain Name;

(iv) Respondent has failed to provide evidence of his rights and legitimate interests in the Domain Name; and

(v) it is difficult to imagine any circumstance in which Respondent could use the Domain Name as a web site address without infringing Complainant’s trademark, given that Internet users would inevitably be misled into believing that there is a sort of connection between the Domain Name and Complainant’s product VIAGRA.

As consistently established by previous WIPO decisions, the facts that Respondent’s registration is identical or confusingly similar to Complainant’s trademark, that Respondent has no apparent right or legitimate interest in the registered Domain Name and that he failed to file a response to the Complaint, suggest that the Domain Name was registered and is being used in bad faith (see amongst others Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In the light of the above, and in the absence of any response, the Panel finds that Complainant has evidenced bad faith in registration and use on the part of Respondent.

7. Decision

For all the foregoing reasons, the Panel orders, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, that the Domain Name <shopgenericviagra.com> be transferred to Complainant.

Anna Carabelli
Sole Panelist

Dated: September 22, 2004