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Pfizer Inc. v. BargainName.com [2005] GENDND 277 (28 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. BargainName.com

Case No. D2005-0299

1. The Parties

The Complainant is Pfizer Inc., New York, New York, United States of America, represented by Kaye Scholer, LLP, United States of America.

The Respondent is BargainName.com, Domain Admin, Georgetown, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <pfzer.com> is registered with Mobile Name Services, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2005. On March 24, 2005, the Center transmitted by email to Mobile Name Services, Inc., a request for registrar verification in connection with the domain name at issue. On March 24, 2005, Mobile Name Services, Inc. transmitted by email to the Center its verification response confirming that:

(a) it is the registrar of the domain name;

(b) the domain name is registered to the Respondent;

(c) the Respondent’s contact details and those of its administrative, billing and technical contacts are as set out in the Complaint;

(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 March 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2005.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 22, 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 discovers, develops, manufactures and markets leading prescription medicines for humans and animals as well as many consumer products.

The trademark PFIZER has been in use since 1849. The Complainant has owned a US trademark registration, No. 501,762, since August 24, 1948. It has had a US registration for PFIZER and an oval device, No. 626,088, since 1956. It also has trademark registrations in Canada, Japan, Mexico, United Kingdom of Great Britain and Northern Ireland and for Community Trademarks.

In 2003, the Complainant reported revenues under its name of US$45.2 billion and invests US$100 million each week in research and development.

Exhibit 5 to the Complaint contains a print out of the website which the domain name resolved to on March 15, 2005, made by the Complainant’s lawyers. It shows a type of web search page listing a number of categories including (in order) Jobs, Pharmacy, Products, Corporate Information. Under “Products” are listed (in order) Norvasc, Dilantin, Male Infertility, Airline tickets and Texas holdem. When viewed on April 28, 2005, the order of some of these categories was slightly different.

Exhibit 6 to the Complaint contains print outs of the websites which the links on the Respondent’s website under the heading “Pharmacy” resolved. These include “www.usamedsonline.com”; “www.usmedsatcost.com”; “www.newpharm.net” and “www.pillvault.com” – from the content of which, all appear to seek custom from customers in the USA at least. Other “sponsored” links are to Candrugstore.com and medoutletcanada.com. It would appear from the content of all websites that they are willing to sell to customers outside their home locations (although “www.pillvault.com”, at least, disclaims the power to sell VIAGRA products in Nevada or Missouri in the USA “due to state laws”.

5. Discussion and Findings

As the Center has communicated the Complaint to the contact details which the Registrar for the domain name has confirmed are the current contact details for the Respondent, 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, paragraphs 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 trade mark 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.

I consider 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 referred to in section 4 above. It also seems likely that the Complainant can claim common law rights in many parts of the world (where such rights are recognised) in view of both the longevity and scale of its operations. In any event, the trademark registrations established in the Complaint cover both the USA and Canada where online pharmacies linked to the Respondent’s website are located and appear to seek custom. The Panel notes, however, that many panels have concluded that the location of the registration(s) is (are) irrelevant to satisfaction of this requirement. See for example the discussion in Thaigem Global Marketing Limited v. Sanchai Aree WIPO Case No D2002-0358.

The question of resemblance for the purposes of the Policy requires a comparison of the 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 domain name <pfzer.com> is identical to the Complainant’s registered trademarks save for the omission of the letter “i”. It is a misspelling of the Complainant’s name and trademark. Panels have routinely found such domain names to be confusingly similar to the proved trademark rights. The Panel respectfully agrees with the learned panelist in Sharman License Holdings Limited v. Icedit.com WIPO Case No. D2004-0713 who considered that confusing similarity must still depend on the similarity of sound, appearance and idea suggested by the mark and the domain name. Even on this more stringent approach, however, there can be little doubt that the domain name is confusingly similar to the Complainant’s registered trademark rights.

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.

The instances are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.

In view of the difficulty in disproving a negative, the 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 it is not in any way affiliated with the Respondent. It specifically denies authorising the Respondent to use the name “Pfizer” or “Pfzer” in the domain name. The domain name clearly is not derived from the Respondent’s name as recorded in its Whois details and there is no information suggesting any other name by which the Respondent might be commonly known. The date of registration of the domain name is not clear, but clearly it must be well after the date the Complainant started using the trademark PFIZER and also well after the Complainant first registered the trademark rights identified in section 4 above.

As already discussed, the domain name is not being used for a non-commercial purpose: it seeks to offer for sale, or procure sales for, a wide range of goods and services including, in particular, pharmaceutical products. It would appear from the materials in the Complaint that some of these products may be genuine Pfizer products. Many, probably the majority, however are not. Quite a number are products that compete with the Complainant’s products: for example, the Complainant produces the VIAGRA brand medication and one of its competitor products is CIALIS, this latter product being prominently advertised on at least some of the websites linked from “www.pfzer.com”. Many other products do not appear to have any connection with the Complainant at all: for example, airline tickets.

The use of a domain name which is confusingly similar to the Complainant’s registered trademarks in this fashion is not a bona fide offering of goods or services in the sense contemplated by the Policy: see e.g. Oki Data Americas Inc. v. ASD Inc., WIPO Case No D2001-0903, Ansell Healthcare Products Inc. v. Australian Therapeutic Supplies Pty Ltd, WIPO Case No. D2001-0110, Philip Morris Inc. v. Alex Tyspkin WIPO Case No. D2002-0946, Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400 and, more recently, Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481.

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 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 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 your website or location or of a product or service on your website or location.

These are examples of “bad faith” only and not an exhaustive listing as they are listed “without limitation”.

In light of the circumstances outlined above, the inference is clear that the Respondent has registered the domain name and is using it in what is commonly called “typosquatting”. It is doing so for commercial gain. This practice has routinely been held to breach the Policy. See for example Yahoo Inc and Geocities v. Data Art Corp., DataArtEnterprises, Inc, Stonybrook Investments, Global Net 20000, Inc., and Yahoo Search, Inc. WIPO Case No. D2000-0587 and Sharman License Holdings Limited v. Icedit.com, WIPO Case No. D2004-0713.

Accordingly, the Panel finds that the domain name has been registered and is being used in bad faith.

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, <pfzer.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist

Dated: April 28, 2005