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Pfizer Inc. v. Asia Ventures, Inc. [2005] GENDND 407 (6 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Asia Ventures, Inc.

Case No. D2005-0256

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 Asia Ventures, Inc., Central Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <pfizerinc.com> is registered with The Registry at Info Avenue d/b/a IA Registry.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2005. On March 10, 2005, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On March 14, 2005, The Registry at Info Avenue d/b/a IA Registry 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 March 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2005.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on April 21, 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 Complainant is one of the largest pharmaceutical enterprises in the world. It discovers, develops, manufactures and markets leading prescriptions medicines for human and animals, as well as many of the world’s best-known consumer products.

The Complainant had used the PFIZER mark since 1849, and owns rights over the name Pfizer in the United States since August 24, 1948. Pfizer has registered the sign PFIZER as a trademark throughout the world, and holds several U.S. trademark registrations for PFIZER such as:

- U.S. Trademark Registration No. 501,762, issued August 24, 1948, for PFIZER,

- U.S. Trademark Registration No. 626,088, issued May 1, 1956, for PFIZER and design.

The PFIZER mark has become well-known throughout the world. In addition, Pfizer widely uses and is well-known for its corporate trade name, Pfizer Inc. Pfizer also owns and uses the domain name <pfizer.com>, which was registered on April 28, 1992, to communicate with the public about itself and its products.

The Respondent registered the disputed domain name <pfizerinc.com> on December 25, 2001, and is using the domain name to provide links to a variety of

websites relating to pharmaceutical products and to general business research.

5. Parties’ Contentions

A. Complainant

Complainant asserts that Respondent’s domain name <pfizerinc.com> is identical and confusingly similar to its registered service mark PFIZER and to its trade name Pfizer, Inc. for pharmaceutical products and general business services. Respondent’s adjunction of the abbreviation “inc”, meant for “Incorporation” does not serve to distinguish it from Complainant’s marks.

Complainant also contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, there is no evidence that Respondent is making a legitimate non-commercial use or fair use of the domain name without intent for commercial gain.

Any Internet’s user that accesses the disputed domain name will discover, that Respondent’s website is a mere shell that serves as a conduit to third party websites. Each of these websites proposes for sale products which are competitors to the Complainant’s products. More importantly, Complainant believes that Respondent makes profit out of the sale of the products and also out of the pop advertisements attached to the links.

Finally, Complainant asserts that Respondent has registered and is using the domain name <pfizerinc.com> in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Neither Respondent’s nor the third parties websites linked therein are in any way affiliated with Complainant. Respondent is seeking to capitalize on Complainant’s stature and reputation, lure Internet users who believe they are accessing a website affiliated with Complainant, to Respondent’s unaffiliated, unendorsed shell website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the following three elements is satisfied:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Consequently, failure on the part of a Respondent to file a Response to the Complaint may permit a Panel to infer that the Respondent does not deny the facts which the Complainant asserts nor the conclusions, which the Complainant asserts, can be drawn from those facts. (See: Harrods Limited v. Harrod’s Closet, WIPO Case No. D2001-1027.)

A. Identical or Confusingly Similar

Complainant has provided sufficient evidence of its trademark rights over the sign “Pfizer”.

Besides, the Panel has noticed that the trademark rights of the Complainant have been fully recognized through several WIPO UDRP decisions, such as:

- Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199

- Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784

- Pfizer Inc v. lipidor.com DNS Services, WIPO Case No. D2002-1099.

The above mentioned uncontested evidence of the Complainant satisfies the Panel that the domain name <pfizerinc.com> registered by the Respondent is identical or confusingly similar to the Complainant’s registered trademark.

It is established that the gTLD “.com” is of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark.

Furthermore, the fact that a domain name wholly includes a Complainant’s mark is sufficient to establish confusing similarity, despite the addition of generic words, such as “inc”, meant for “Incorporation”. This has been held by numerous prior panels. See ACCOR v. Winston Minor, WIPO Case No. D2003-1002, Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, and EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.

The Panel therefore considers that, as the domain name incorporates a very renowned distinctive trademark, there is a sufficient similarity created between the mark and the domain name.

Therefore, the condition set out by Paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

The Respondent is not affiliated with the Complainant and the Complainant has not authorized the Respondent to register any domain name incorporating the Complainant’s mark PFIZER or the Complainant’s trade name “Pfizerinc”. The Complainant has not granted any license or otherwise permitted the Respondent to use its trademark and the Respondent is not known under the name Pfizer, Pfizerinc or any similar term. Finally, the Complainant contends that Respondent is not making any legitimate non-commercial or fair use of the domain name.

The Panel notes that the Respondent did not answer to the cease and desist letter sent by the Complainant. Such behaviour maybe considered as an indication of the Respondent’s lack of legitimate interest. See Banque Transatlantique S.A. v. DOTSCOPE, WIPO, <banquetransatlantique.com>.

Besides, the Respondent did not contest any of the Complainant’ allegations. The Panel notices there is nothing in the case file suggesting the Respondent makes bona fida use of the disputed domain name.

Considering the above, the condition set out by Paragraph 4(a)(ii) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The last of the elements foreseen by Paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the domain name in bad faith.

Respondent’s action is in violation of paragraph 4(b)(iv) of the Policy as the Respondent is intentionally attempting to attract Internet users for commercial gain to ”www.pfizerinc.com” website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and services which are not in any way affiliated with Complainant. See The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; NCRAS Management LP v. Cupcake City, WIPO Case No. D2000-1803; Disney Enterprises Inc. v. John Zuccarini, d/b/a Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489. The Respondent appears to make profit out of the linking to these websites. In fact, it appears that the Respondent makes profit out of the presence of pop-up ads receiving click through fees. See COMSAT Corporation v. Ronald Isaacs, WIPO Case, <comsatradio.com>. This is, further evidence of bad faith.

Besides, the contact details provided on the Whois for the Respondent of the domain name <pfizerinc.com> appear to be false and incomplete. It has been held in previous UDRP decisions that such an element may indicate bad faith registration (The Football Association Premier League Limited v. Trademark, WIPO Case No. D2005-0014 <fapremierleague.com>).

Considering that the Complainant’s trademark is well-known and that the Respondent most certainly had knowledge of the Complainant’s trademark, the Panel finds that the Domain Name was registered and is used in bad faith.

Therefore, the condition set out by Paragraph 4(a)(ii) of the Policy has been met by the Complainant.

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 <pfizerinc.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist

Dated: May 6, 2005