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Pfizer Inc v. Kent Gormat aka kgormat [2004] GENDND 1391 (2 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc v. Kent Gormat aka kgormat

Case No. D2004-0591

1. The Parties

The Complainant is Pfizer Inc (the “Complainant” or “Pfizer”) located in New York, New York, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP of New York, New York, United States of America.

The Respondent is Kent Gormat aka kgormat (the “Respondent”) located in Grand Haven, Michigan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <genericviagra.com> (the “Domain Name”) is registered with Moniker Online Services located in Pompano Beach, Florida, United States of America (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2004 via email. On August 3, 2004, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On August 4, 2004, the Center received hardcopies of the Complaint. The Complainant paid the required fee.

On August 5, 2004, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

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”).

On August 6, 2004, 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 August 25, 2004, the Center received the Response from Respondent. On August 26, 2004, the Center acknowledged receipt of the Response.

On September 14, 2004, the Center sent notification of the appointment of Richard W. Page, Esq. (the “Sole Panelist”) as sole panelist in this matter.

The Sole Panelist finds that he was properly appointed. The Sole Panelist 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, among other things, in the developing, manufacturing 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 Mark VIAGRA.

Complainant has provided evidence of trademark registrations for the Mark VIAGRA in the United States (Registration No. 2,162,584 issued June 2, 1998). The Mark is owned by Complainant or by its wholly owned subsidiaries.

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

The VIAGRA medication was approved by the United States Food and Drug Administration (“FDA”) on March 27, 1998.

In June 1997, Complainant registered the domain name <viagra.com> and maintains an active website at the URL “www.viagra.com.”

Respondent registered the Domain Name on April 8, 2002.

As shown by the printout of relevant pages of the website to which the Domain Name resolves, Respondent advertises and sells sildenfil citrate as “Generic Viagra.”

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 Mark 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 Mark is a coined and fanciful term having no denotative meaning;

- the Domain Name wholly incorporates the Mark with the addition of the descriptive term “generic”;

- the Domain Name is confusingly similar to the Mark since a common term or number preceding or following a trademark does not create a new or different mark in which Respondent has rights;

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

- in particular, Respondent is not and never has been a representative of Complainant nor licensed to use the VIAGRA Mark; furthermore Respondent is not commonly known by the Domain Name;

- Respondent’s use of the Domain Name to advertise and sell an alleged generic version of VIAGRA 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 Mark prior to registration of the Domain Name;

- by taking the Mark as its domain name, Respondent is attempting to attract, for commercial gain, Internet users or Netizens to its website by creating a likelihood of confusion with the Mark as to source, sponsorship, affiliation or endorsement.

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

The Respondent replies that:

- the Domain Name was registered on June 10, 2004, for the purpose of creating a non-commercial website related to erectile dysfunction and not for the sale of goods or services;

- the previous owner may have redirected the Domain Name to another site which had a commercial purpose;

- the current owner has derived no commercial gain from the Domain Name.

The Respondent requests that the request to transfer the Domain Name be denied.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Sole Panelist 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 respondent, shall be evidence of the respondent’s rights to or legitimate interests in a 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 the Complainant has rights. The Respondent has not contested Complainant’s allegations that the Domain Name in confusingly similar to the VIAGRA Mark.

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

The Domain Name entirely incorporates the Mark VIAGRA with the addition of the descriptive term “generic.”

It is an established principle that the mere addition of a generic or descriptive term and/or number does not create a different trademark in which Respondent has rights and cannot be considered as 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).

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 the Mark, the Sole Panelist finds that Complainant has enforceable trademark rights and that the Domain Name is confusingly similar to the VIAGRA Mark pursuant to the Policy, paragraph 4(a)(i).

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, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name.

Complainant has provided evidence of its rights in the VIAGRA Mark and that the Domain Name was registered by Respondent on or about April 8, 2002. Based on Complainant’s submissions, the Sole Panelist considers that at that time Complainant had acquired a considerable reputation in the VIAGRA Mark in respect of a drug addressing erectile dysfunction throughout the world.

Complainant also contends that Respondent is not and never has been a representative of Complainant nor licensed to use the VIAGRA Mark and that he is not commonly known by the Domain Name.

Complainant further contends that Respondent’s use of the Domain Name to advertise and sell an alleged generic version of VIAGRA does not constitute a use in connection with a bona fide offering of goods and services. In line with previous WIPO decisions (Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870; Nikon, Inc. and Nikon Corporation. v. Technilab Inc.,WIPO Case No. D2000-1774) the Sole Panelist finds that no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar to the Mark and is used in connection with the promotion and sale of competing products.

In light of the above, Complainant has established a prima facie evidence demonstrating that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many WIPO decisions, in such a case, the burden of proof shifts to 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).

Respondent contends that the Domain Name is no longer redirected to a commercial website as of June 10, 2004. However, Complainant attached as Annex 6 to the Complaint the printout of the website to which the Domain Name resolved on July 30, 2004. The website clearly offered “Generic Viagra” for sale. The Sole Panelist logged on to “www.genericviagra.com” on the date of this decision and was redirected to the same commercial website.

The Sole Panelist 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.

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Sole Panelist is convinced that Respondent purchased a Domain Name which was registered and used in bad faith. Furthermore, the Respondent continues to use the Domain Name in bad faith, to intentionally attract for commercial gain Internet users to its website by trading on the goodwill associated with the VIAGRA Mark and creating a likelihood of confusion with the Mark as to source, sponsorship, affiliation or endorsement of Respondent’s website and of the products and services offered on the site (paragraph 4(b)(iv) of the Policy).

As mentioned in paragraph 6(A) above, the VIAGRA Mark has acquired worldwide reputation, identifying sildenafil citrate pharmaceutical products 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 the intent to use it in good faith. Respondent appears rather to have intentionally registered the Domain Name entirely incorporating Complainant’s mark, to take advantage of the goodwill associated with the VIAGRA Mark.

Furthermore, the print out of relevant pages of the website to which Respondent’s Domain Name resolves shows that Respondent has been using the Domain Name to promote and sell sildenafil citrate pharmaceutical products as “Generic Viagra,” along with an acknowledgement that the VIAGRA brand sildenafil citrate originates from Complainant.

This is further evidence of Respondent’s bad faith registration and use of the Domain Name under paragraph 4(b)(iii) of the Policy (Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; The Body Shop International plc v. A-Team/ Lasse Nygaard, WIPO Case No. DAS2003-0001; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177).

Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy, paragraph 4(b)(iv) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

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

Richard W. Page
Sole Panelist

Dated: October 2, 2004