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Pfizer Inc v. Michel Mertz [2005] GENDND 210 (29 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc v. Michel Mertz

Case No. D2005-0150

1. The Parties

The 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.

The Respondent is Michel Mertz, Paris of France.

2. The Domain Name and Registrar

The disputed domain name <viagra-123.net> is registered with Go Daddy Software Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2005. On February 11, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. Later that day, Go Daddy Software transmitted by email to the Center its verification response confirming that:

(a) it is the Registrar for the Domain Name;

(b) the Respondent is listed as the current registrant of the Domain Name;

(c) the contact details for the Respondent and its administrative and technical contacts are as set out in the Complaint; and

(d) the language of the registration agreement is English.

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 February 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2005.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 15, 2005. 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 Complaint asserts the following facts which have not been disputed. Accordingly, consistent with the Panel’s obligation under the Rules (see paragraph 15(a)), the Panel treats these facts as sufficiently proved for the purposes of this Complaint.

The Complainant, Pfizer Inc. is one of the largest pharmaceutical enterprises in the world, operating in more than 150 countries. It claims to have spent millions of dollars on research, development and marketing of VIAGRA brand sildenafil citrate which was the first oral medication approved for the treatment of erectile dysfunction, a condition that is claimed to afflict 20 million men in the USA and 100 million men around the world.

The Complainant obtained marketing approval for its VIAGRA medication in the USA from the FDA on March 27, 1998, and it went on sale there on April 6, 1998.

VIAGRA has been registered as a trademark in the USA, No 2,162,548, since June 2, 1998, in respect of a compound for treating erectile dysfunction. Exhibit 4 to the Complaint lists more than 6 pages of trademark registrations for VIAGRA in other countries including significantly in the present context as a Community Trademark, No CTM233890, from April 19, 1996, and 8 registrations in France, with the earliest, No 95601843 dating from December 19, 1995.

The Respondent appears to have registered the disputed Domain Name on March 21, 2004.

Annex 6 to the Complaint contains a print out of the website which the disputed Domain Name resolved to on February 2 and 6, 2005, that is, shortly before the Complaint was filed.

Annex 6 shows that the Home Page featured a banner across the top, headed “Viagra-123.net” “Your Best On-Line Source to obtain CHEAPEST Viagra Prescriptions (Brand & Generic) From Leading On-Line Pharmacies Treating Men’s Erection Problem (ED)!”

Below this banner, there is a table showing in the third and fourth columns prices and “Visit Pharmacy” buttons for “Viagra® (Brand)”. The fifth and sixth columns are similar, but under the heading “Viagra Generic (Sildenafil Citrate)”. The prices for the “generic” products of 30 or 60 tablets are about one third the prices shown for the equivalent “Brand” products.

Beneath this, there is a further table under the heading “Treat Erectile Dysfunction (ED) Alternatively: CHECK OUT our offers on Viagra Alternates:” and then a listing for Cialis ®, Levitra ® and others.

According to the print out in Annex 6, <viagra-123.net> then goes on to describe itself as a marketing partner of premium worldwide on-line pharmacies. A later table lists 10 pharmacies which are represented as selling products variously in the USA (e.g. Pharmacy-24x7.net and Top-Pharmacy.us) or other parts of the world (e.g. European-pharmacy.com and Medix24.com).

Other Annexes attached to the Complaint are print-outs from the websites for eight of the on-line pharmacies referenced on the “www.viagra-123.net” website. Each of these has an affiliate program by which persons with their own domain name and website may refer customers for medications in return for varying commission payments.

5. Discussion and Findings

As the Center has communicated the Complaint to the contact details which the Registrar for the disputed Domain Name has confirmed are the current contact details for the Respondent as the registrant of the disputed Domain Name, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention.

There being no Response, paragraph 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(i) The domain name 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 in respect of the domain name; and

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

the Panel considers each of these in turn below.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights.

At the least, the Complainant has demonstrated ownership of the registered trademarks set out in section 4 above. As noted, these cover both the USA which is one of the target markets for pharmacies that <viagra-123.net> refers business to and France where the Respondent is located.

The question of resemblance for the purposes of the Policy requires a comparison of the disputed Domain Name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c).

The disputed Domain Name contains the whole of the Complainant’s registered trademark, VIAGRA. It differs from the registered trademark only in:

(a) the addition of a hyphen;

(b) the addition of the numbers “123”; and

(c) the addition of the .com gTLD.

None of these integers alone would preclude the disputed Domain Name from being confusingly similar. For a hyphen, see e.g. Viacom International Inc v. Erik Peterson, WIPO Case No. D2001-0346; for the addition of the .com gTLD, see e.g. Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252; Williams-Sonoma d/b/a Pottery Barn v. John Zuccarini, WIPO Case No. D2002-0582.

Considering the disputed Domain Name as a whole, the combined effect of the differences does not alter the conclusion that it is confusingly similar to the Complainant’s registered trademarks. The distinctive component of the disputed Domain Name is the Complainant’s registered trademark, VIAGRA, the other elements of the disputed Domain Name do not add anything distinctive to that other than, possibly, to differentiate the website from (at least) 122 other “Viagra” websites. The essential component, the memorable part, is the term VIAGRA.

Accordingly, the Panel finds that the disputed Domain Name is confusingly similar to the Complainant’s registered trademark rights.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.

As it is very difficult, if not impossible, to disprove a negative, many Panels have accepted that a Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.

Here, the Complainant claims that VIAGRA is an invented or fancy word. It is very well-known throughout the world. It is registered for the very products that the Respondent is offering for sale from, or via, its website. The Complainant also denies that it has ever authorised the Respondent to use the trademark, VIAGRA, and the trademark has no obvious connection with the Respondent’s name.

As recounted in section 4 above, the disputed Domain Name resolved to a website which offered for sale both genuine VIAGRA® brand medication and something described as “Viagra Generic (Sildenafil citrate)”. As the Complainant points out, however, there is no such thing as “generic” Viagra. VIAGRA is a registered trademark and brand name indicating sildenafil citrate of a particular source or origin. Many panels have concluded that it is not a legitimate use of the trademark to use it in this way to attract customers and re-direct them to competing products. See e.g. Ansell Healthcare Products Inc. v. Australian Therapeutic Supplies Pty Ltd, WIPO Case No. D2001-0110; Casio Keisanki KK v. Jongchan Kim, WIPO Case No. D2003-0400, Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870.

As already noted, the Respondent has not filed a Response and accordingly the Panel is entitled to conclude that the Respondent could not advance anything which would have assisted his case.

In light of these considerations, therefore, the Panel concludes that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed Domain Name.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed Domain Name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

b. Evidence of Registration and Use in Bad Faith.

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

From the materials included in Annexes 6 to 14 of the Complaint, it appears that the Respondent has used the disputed Domain Name in connection with the sale of both genuine VIAGRA brand sildenafil citrate and something which the Respondent’s website designates as “Viagra Generic”. It would appear that the Respondent does not itself sell either of these categories of products, but provides links to on-line pharmacies that do sell them and, in return, the Respondent receives some sort of commission from those sales as an “affiliate”.

The Respondent appears on the evidence in the Complaint to have registered the disputed Domain Name well after the Complainant acquired its trademark rights and, obviously, was well aware of the VIAGRA trademark.

In these circumstances and in the absence of any rebuttal from the Respondent, the Panel concludes that the disputed Domain Name has been registered and used in bad faith: see e.g. the Ansell Healthcare Products Inc. v. Australian Therapeutic Supplies Pty Ltd, Casio Keisanki KK v. Jongchan Kim and Pfizer Inc v. The Magic Islands decisions already referred to.

6. 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, <viagra-123.net> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist

Dated: March 29, 2005