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Pfizer Inc. v. Alex Schreiner/ Schreiner & Co. [2004] GENDND 1330 (24 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Alex Schreiner/ Schreiner & Co.

Case No. D2004-0731

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 Alex Schreiner/ Schreiner & Co. The Panel notes that the contact information provided by the Respondent to the domain name registrar is suspect.

2. The Domain Name and Registrar

The disputed domain name <blu-viagra.com> is registered with Communigal Communications Ltd.

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 Communigal Communications Ltd. a request for registrar verification in connection with the domain name at issue. On September 20, 2004, Communigal Communications Ltd., 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 20, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2004.

The Center appointed William R. Towns as the sole panelist in this matter on October 20, 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, under the brand name VIAGRA. The Complainant has used VIAGRA in connection with this product since April 6, 1998, and obtained its first United States trademark registration for VIAGRA on June 2, 1998. The Complainant and its wholly owned subsidiaries hold numerous trademark registrations for VIAGRA around the world. These include a Community Trademark registration and national registrations in many European Union countries. The Complainant also owns and operates a website at “www.viagra.com”.

The Respondent registered the disputed domain name <blu-viagra.com> on February 10, 2004. The domain name until recently resolved to the “ViagraEurope” website, an online pharmacy offering “genuine Viagra from Pfizer” for sale, principally in European Union countries. The “Customer Support” page of the website states that ViagraEurope is a division of the International Pharmacy, Cyprus. At present, the disputed domain name <blu-viagra.com> directs Internet users to a web page bearing the legend “under construction”.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name <blu-viagra.com> is confusingly similar to its VIAGRA mark, which the Complainant urges is not only strongly distinctive but also a well known or famous mark by virtue of numerous trademark registrations and the substantial use of the mark in the United States and other countries. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because it is not licensed or authorized to use the Complainant’s mark, and that the Respondent registered and is using the domain name in bad faith by creating a likelihood of confusion with the Complainant’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant also argues that bad faith is shown by the Respondent’s provision of false contact information to the domain name registrar. For 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.

C. Rights or Legitimate Interests

The record reflects that the Complainant has not licensed or otherwise authorized the Respondent to use the VIAGRA mark. Nevertheless, the Respondent has incorporated the entirety of the Complainant’s mark in the disputed domain name, and has used the domain name to attract Internet users to a commercial website. The record does not reflect that the Respondent is commonly known by the disputed domain name, or that the Respondent is making any legitimate noncommercial or fair 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)(i), it appears that before receiving notice of this dispute the Respondent was using the <blu-viagra.com> domain name in connection with the “ViagraEurope” website, an online pharmacy where “genuine Viagra from Pfizer” purportedly is offered for sale.¹ 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. Ult.Search, 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)). See also The Sportsman’s Guide, Inc. v. JoyRide, WIPO Case No. D2003-0153 (respondent’s use of confusingly similar domain name to profit from confusion of internet users was a parasitic use).

In determining what constitutes a bona fide offering of goods or services, a number of panels have rejected out of hand any right on the part of a distributor or reseller to register a domain name consisting of or containing the manufacturer’s trademark, at least in the absence of the trademark owner’s consent. See, e.g., Motorola, Inc. v. New Gate Internet, Inc., WIPO Case No. D2000-0079 (“[T]he right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product”); Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., WIPO Case No. D2000-0113 (retail seller of complainant’s goods does not have enough legitimate interest in complainant’s trademark “to confer the right to use these trademarks as domain names”). Even panels concluding that distributors may have a legitimate interest in the nominative use of a trademark in a domain name have done so only under carefully circumscribed conditions, including a requirement that the domain name registrant’s relationship to the trademark owner be accurately disclosed. See Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See also Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774.

In this case, the Panel concludes that under any relevant and appropriate analysis, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not licensed or authorized to use the Complainant’s mark. 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 rights in the VIAGRA mark, which beyond question has a strong reputation and is widely recognized.² It is one thing to advertise by name a product such as Viagra for sale on a website; it is quite another to incorporate the entirety of a widely recognized mark such as VIAGRA into a domain name that is intentionally used to attract Internet users to the website, particularly where no effort is made to inform Internet users that the website is not affiliated with, sponsored or endorsed by the owner of the trademark. The Panel cannot conclude under such circumstances that the Respondent’s use of the VIAGRA mark in the disputed domain name is justifiable as a nominative or descriptive use of the mark. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.

Rather, the Panel concludes that the Respondent sought to trade on the good will and reputation of the Complainant and its VIAGRA mark by incorporating the entirety of the mark into the disputed domain name, and by utilizing the disputed domain name to resolve to the “ViagraEurope” website, where no disclaimer is provided regarding the Complainant’s affiliation with, sponsorship or endorsement of the website. 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”. See also The Sportsman’s Guide, Inc. v. JoyRide, WIPO Case No. D2003-0153 (respondent’s use of confusingly similar domain name to profit from confusion of internet users was a parasitic use). If anything, given the strength and reputation of the VIAGRA mark, the Respondent’s use of the disputed domain name under the circumstances of this case seems calculated to falsely suggest to Internet users that the Complainant was affiliated with the website. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211.

The foregoing constitutes bad faith registration and use of the disputed domain name by the Respondent, which precludes any bona fide offering of goods or services under Paragraph 4(c)(iii) of the Policy.³ See Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946. The Panel also finds no indication that the Respondent has been commonly known by the domain name, or that the Respondent has made any legitimate noncommercial or fair use of the domain name. Accordingly, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name for purposes of the Policy.

D. Registered and Used in Bad Faith

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, the Panel has concluded from the circumstances of this case that the Respondent registered and has used the disputed domain name in an attempt to attract, for commercial gain, internet users to the “ViagraEurope” web site, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of that website.⁴ The Panel also finds it noteworthy that, since the commencement of this proceeding, the Respondent has discontinued its use of the disputed domain name to attract users to the “ViagraEurope” website, and is making no use of the domain name. The Panel further notes that the Respondent provided obviously false contact details⁵ to the registrar of the domain name, conduct that a number of panels have considered evidence of bad faith. See The Sportsman’s Guide, Inc. v. JoyRide, WIPO Case No. D2003-0153; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel concludes from all of these circumstances that the Respondent has registered and is using the disputed domain name in bad faith for purposes of Paragraph 4(a)(iii).

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 <blu-viagra.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Date: October 24, 2004

¹ Since the filing of the Complaint in this case, the Respondent no longer is using the disputed domain name to resolve to the “ViagraEurope” website. Instead, the domain name takes Internet users to a web page bearing the legend “under construction”. Hence, the Respondent currently is not using the domain name for any purpose, insofar as the Panel can discern.

² The Complainant has made a substantial showing that the VIAGRA mark is a well known or famous mark, but in any event the mark clearly has a strong reputation and is widely known as a result of its substantial use in the United States and in other countries.

³ As noted below, the Panel also considers the Respondent’s provision of obviously false contact information to the domain name registrar and the Respondent’s passive holding of the domain name subsequent to the commencement of this proceeding to be indicative of bad faith registration and use of the domain name.

⁴ Paragraph 4(b)(iv) seems to contemplate that the website to which Internet users are diverted should be owned by the respondent. In view of what this Panel finds to be deliberate attempts by the Respondent to conceal its true identity, some question may exist regarding the precise nature of the Respondent’s connection to the “ViagraEurope” website. This should not be a determinative question here. The examples provided in Paragraph 4(b) are not intended to be exhaustive of all circumstances evidencing bad faith registration and use. It is a clear inference from the circumstances of this case that the Respondent has an interest in the website, and it is beyond question that the Respondent intentionally used the disputed domain name to attract for commercial gain Internet users to the website, trading on the reputation and good will of the Complainant and its VIAGRA mark.

⁵ For example, the Respondent provided a contact address at “Main Street 205/a, Aberdeen, Aberdeen 9852, US”. It is a matter of common knowledge that “Aberdeen” is not one of the fifty states comprising the United States. This is an obvious fabrication to which this Panel can ascribe no legitimate purpose.