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Pfizer Inc. v. Capital Market Advisors LLC [2004] GENDND 1350 (17 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Capital Market Advisors LLC

Case No. D2004-0733

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 Capital Market Advisors LLC, Reno/ Carson City, Nevada, United States of America.

2. The Domain Names and Registrar

The disputed domain names <blueviagra.com> and <yellowviagra.com> are registered with Wild West Domains, Inc.

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 Wild West Domains, Inc., a request for registrar verification in connection with the domain names at issue. On September 10, 2004, Wild West Domains, Inc., 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 15, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 5, 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 <blueviagra.net> on December 18, 2002, and the disputed domain name <yellowviagra.com> on February 3, 2003. The domain names currently resolve to websites where they are offered for sale. The domain names are described in the websites as “memorable business name[s]” that are “easy to remember” and have “high development potential”. In addition, <blueviagra.net> is characterized as “totally descriptive”. The asking price for the domain names is not specified in the websites, but minimum offers for <blueviagra.com> and <yellowviagra.com> are set at $500.00 and $200.00, respectively.

5. Parties’ Contentions

A. Complainant

The Complainant contends that VIAGRA is a famous mark that generates worldwide recognition and attention, that the disputed domain names wholly incorporate the VIAGRA mark, and that the disputed domain names thus are confusingly similar to the VIAGRA mark, in which the Complainant has rights. The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain names, that the Respondent was aware of the Complainant’s VIAGRA mark prior to the registration of the domain names, and that the Respondent’s offer to sell the disputed domain names over the Internet for amounts in excess of the documented out-of-pocket costs related to the domain names constitutes bad faith.

The Complainant also argues that bad faith is shown by the Respondent’s use of incomplete contact information in connection with the registration of the disputed domain names, and by the Respondent’s use of the domain names to attract for financial gain Internet users to its websites by creating a likelihood of confusion. For all of these reasons, the Complainants seek 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 names are 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 names registered by the Respondent are 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. The Complainant began using and registered VIAGRA as a trademark long before the Respondent’s registration and use of the domain names <blueviagra.net> and <yellowviagra.net>, and there is no indication that the Respondent has been commonly known by the disputed domain names, or that the Respondent is attempting to make any legitimate noncommercial use of the domain names. Instead, the record reflects that the Respondent is offering to sell the disputed domain names over the Internet at prices in excess of any reasonable out-of-pocket expenses associated with the registration of the domain names. 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 names.

As noted above, the Respondent is offering to sell the disputed domain names over the Internet, and for purposes of Paragraph 4(c)(i), the Panel considers it likely that the Respondent was offering to sell the disputed domain names before receiving notice of this dispute. The Panel does not question that under certain circumstances an offer to sell a domain name may be an “offering of goods or services” under Paragraph 4(c)(i). Nevertheless, the critical inquiry is whether the Respondent is using the domain names 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)).

The Panel concludes that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. It is clear from the record that Respondent is attempting to profit from the strength and reputation of the VIAGRA mark in offering the disputed domain names for sale. The Respondent’s assignment of value to the disputed domain names as “memorable business name[s]” that are “easy to remember”, have “high development potential” and are “totally descriptive” amply demonstrates this. Clearly, it is the singular use of the VIAGRA mark, and not the additional common terms “blue” and “yellow”, which make the Respondent’s claims concerning the value of the domain names believable.

The websites on which the Respondent is offering the disputed domain names for sale are hosted by Afternic, Inc., which is in the business of hosting websites on which domain names registered though Afternic may be offered for sale at “reserve prices”. In this instance, it is apparent that the “reserve prices” posted by the Respondent are in excess of any out-of-pocket expenses that the Respondent reasonably would have incurred in registering the domain names through Afternic. There can be no serious question under the circumstances that the Respondent is attempting to profit from the sale or transfer the disputed domain names. See National Association for Stock Car Auto Racing, Inc. v. Imaging Solutions, WIPO Case No. D2001-0777 (Respondent’s offer to sell domain name to highest bidder betrays clear motive to extract maximum obtainable profit for domain name, and comports with Paragraph 4(b) example of bad faith).

Who would be most interested in buying these “memorable” and “totally descriptive” business names from the Respondent? Undoubtedly, both the Complainant and its competitors would be among the class of prospective buyers. See Gateway, Inc. v. Bellgr, Inc., WIPO Case No. D2000-0129 (Complainant and its competitors would be logical targets). In fact, the Panel infers from the manner in which the Respondent has marketed the disputed domain names for commercial use that the Complainant and its competitors would be precisely the type of prospective buyers being solicited by Respondent. In any event, the Respondent’s offering to sell the domain names to all constituted an offer to sell to the Complainant or its competitors. Gateway, Inc. v. Bellgr, Inc., WIPO Case No. D2000-0129.

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”. Under the circumstances, the Panel concludes that the Respondent’s primary purpose in registering the disputed domain names was to sell or otherwise transfer those domain names for commercial gain at an exorbitant price to the Complainant or to its competitors. This does not constitute a bona fide offering of goods or services under Paragraph 4(c)(i). See National Association for Stock Car Auto Racing, Inc. v. Imaging Solutions, WIPO Case No. D2001-0777 (Respondent’s offer to sell domain name to highest bidder betrays clear motive to extract maximum obtainable profit for domain name, and comports with Paragraph 4(b) example of bad faith). See also Scania CV AB v. Hong, Hee Dong, WIPO Case No. D2004-0340.

The Panel also finds that the Respondent has not been commonly known by the domain names for purposes of Paragraph 4(c)(ii), and that the Respondent has not made any legitimate noncommercial or fair use of the domain names under Paragraph 4(c)(iii). Accordingly, the Panel concludes that Respondent has no rights or legitimate interest in the disputed domain names 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 that the Respondent’s primary purpose in registering the disputed domain names was to sell or otherwise transfer the domain names for a profit – that is, in excess of the Respondent’s out-of-pocket expenses in acquiring the domain names. If the domain names have any commercial value, it is only because they wholly incorporate the Complainant’s VIAGRA mark. Under the circumstances, the Complainant and its competitors were logical targets, and the Respondent’s offering to sell the domain names to all constituted an offer to sell to the Complainant or its competitors. Gateway, Inc. v. Bellgr, Inc., WIPO Case No. D2000-0129. Accordingly, the Panel finds from the circumstances of this case that Respondent registered the disputed domain names primarily for the purpose of selling or otherwise transferring the domain names to the Complainant or to a competitor of the Complainant, which constitutes bad faith registration and use for purposes of Paragraph 4(b)(i) of the Policy.

The Panel also notes that the examples of bad faith registration and use set forth in Paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. Even if this case does not fall squarely within Paragraph 4(b)(i), in the opinion of this Panel the totality of the circumstances at hand still reflect the Respondent’s bad faith registration and use of the disputed domain names. See Scania CV AB v. Hong, Hee Dong, WIPO Case No. D2004-0340; National Association for Stock Car Auto Racing, Inc. v. Imaging Solutions, WIPO Case No. D2001-0777. In addition to the factors discussed above, the Panel notes that the Respondent provided incomplete contact information to the Registrar, a further indication of bad faith. See Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550 (absence of information in registration application suggests intent by Respondent to create a covert position).

Accordingly, the Panel concludes that the disputed domain names have been registered and are being used in bad faith by the Respondent for purposes of Paragraph 4(a)(iii) of the Policy.

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 names <blueviagra.com> and <yellowviagra.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Date: October 17, 2004