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Lilly ICOS LLC v. Private Domain Trust, Ltd. [2005] GENDND 456 (21 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Carlos Rosario

Case No. D2005-0067

1. The Parties

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

The Respondent is Carlos Rosario, Pharmacia Espana, Malaga, Spain.

2. The Domain Name and Registrar

The disputed domain name, <europeanviagra.com> (the “Domain Name”), is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2005. On January 24, 2005, the Center transmitted by email to the Complainant and to the Respondent at the email address identified in the Complaint an acknowledgement of receipt of the Complaint. The Center also sent to Tucows a request for registrar verification in connection with the domain name at issue.

On January 24 2005, the Center also received an email signed “Peter, EuropeanViagra.com” as follows:

“We have not made any complaint about our domain name www.EuropeanViagra.com and do not understand why you are sending this email to us. What is it about? Who, if anyone, has made a complaint about our URL?”

Following reminders from the Center on February 1 and 9, 2005, on February 10, Tucows 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 registrant of the Domain Name;

(c) the contact details for Respondent including 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 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2005. The Respondent did not submit any response by that date. 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 14, 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.

In response to the Notification of Appointment of the Panel, on March 14, 2005, the Center received two further emails from “PlanetPharmaceuticals.com” as follows:

First:

“What is this garbage about non-response?

You are deliberately bombarding a 2 man operation with HUNDREDS of pages of material. We have already responded and YOU ignored that response. We asked why all other names containing viagra are completely ignored.

Is there a reason why you can't simply say, in plain English, what your problem is?”

Secondly:

“once again, you bombard us with hundreds of documents that we do not understand. There is nothing that we have read that tells us what the problem is or how we defend against this attack on OUR company and OUR domain. It has been in operation for years and nobody has ever complained so what right do they have to complain now????????????”

4. Factual Background

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 VIAGA 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. Annex 5 to the Complaint lists more than 5 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 16 registrations in Spain, with the earliest, No 2001414, dating from December 14, 1995.

The information provided by the Registrar does not indicate when the Domain Name was first registered. Nor does a whois search. A search via the Internet Archive, the Wayback Machine, shows pages archived from February 6, 2003 and nothing earlier.

The Domain Name currently resolves to a website that declares “This Domain No Longer Trades” and seeks to redirect browsers to planetpharmaceuticals.com where products under well-known trademarks, including Viagra, Valium, Meridia, Cialis, and Prozac, are offered for sale.

5. Discussion and Findings

The address details for the Respondent have been confirmed as correct by the Registrar. In addition, the three emails referred to above confirm that the Complaint has been served on the persons operating the website which the Domain Name resolved to when the Complaint was served.

The emails purport to claim that the Respondent is unable to deal with the Complaint or does not understand what is happening. It is not, of course, the Center’s role to provide legal advice to a party. The existing website, like the printouts of pages submitted with the Complaint, are expressed perfectly clearly in English and advertise Viagra (of some description) for GBP20, i.e., in pounds sterling, the currency of the United Kingdom. The emails themselves are expressed with a clarity and directness that belie the purported bewilderment of the sender. The Respondent has chosen to register the Domain Name with a Canadian Registrar using a service provider based in the United Kingdom. The language of the registration agreement is English. The far more detailed literature available at the website before the Complaint was filed (and included as Annex 6 to the Complaint) and now reproduced apparently verbatim, or substantially verbatim, at the website at “www.planetpharmaceuticals.com” is equally clearly expressed in English. It also provides a mail order address in Wigan, Lancashire in the United Kingdom. Accordingly, the Panel finds that the Respondent has had an adequate opportunity to put his or their case in rebuttal of the Complaint.

Paragraph 15(a) of the Rules directs the Panel to decide the 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.

Each of these are considered 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.

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) of the Policy.

Here, the Domain Name contains the registered trademark VIAGRA in its entirety. The Domain Name differs from the registered trade mark in that:

(a) the word “european”is placed before the registered trademark VIAGRA; and

(b) the suffix “.com” is included.

Many panels have held that the addition of a geographical description after a trademark is insufficient to avoid confusing similarity. Here, the geographical description “European” is added before the trademark component. While there may be cases where that transposition might avoid confusing similarity, this is not such a case. The term VIAGRA remains the dominant, distinctive component of the Domain Name. When the term “European” is used, something more is required to indicate what is suggested. The combined expression, EuropeanViagra, will almost certainly be taken as suggesting a website or other URL which is a European source for Viagra. A similar conclusion was reached in Piaggio & C. SpA v. Phillip K. Waters Jr, WIPO Case No. D2004-0959.

The addition of the generic gTLD “.com” does not affect the likelihood of confusion. See for example 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.

Viewing the Domain Name as a whole, the addition of the geographic description “European” before the term “viagra” and the appending of the suffix .com do nothing to dispel the significance of the term “viagra” as the distinctive component of the Domain Name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark.

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 examples given in paragraph 4(c) are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.

In view of the difficulty that a complainant faces in proving a negative of the sort required by paragraph 4(a)(ii) of the Policy, Panels have required a complainant to establish at the least a prima facie case under this heading and, if that is made out, an evidential onus shifts to the respondent to rebut the presumption of no rights or legitimate interests.

The Complainant here easily establishes the required prima facie case. It claims that the trademark VIAGRA is a coined or invented word. It is very well known. It is registered in respect of the very products that the Respondent was offering for sale at its website before the Complaint was filed. The Complainant denies that it has ever authorised the Respondent to use the trademark VIAGRA, and the trademark has no obvious connection with the Respondent.

Insofar as the three emails received by the Center in response to service of the Complaint and other documents on the Respondent can be said to constitute a Response, they provide no support at all for a claim to legitimate rights or interests under paragraph 4(c)(ii) or (iii) of the Policy. In this connection, the Panel also notes that Annex 6 to the Complaint shows that the Domain Name resolved to a website that featured prominently the banner heading “Planet Pharmaceuticals” and the postal address given for mail orders was “Planet”. Thus, the Domain Name is not obviously derived from the website operator’s own name.

The third email claims that the “domain has been in operation for years and nobody has ever complained”. To the extent that that might be thought to be attempting to make out a claim to entitlement under paragraph 4(c)(i), the Panel rejects it.

As noted above, the Complainant’s trademarks have been registered in Europe going back to late 1995 and 1996. The email, assuming it should be taken into account, provides absolutely no detail about what “for years” means. The Panel would require far more specificity before it would be prepared to consider paragraph 4(c)(i) had been satisfied. Further, paragraph 4(c)(i) requires that the use be in connection with a bona fide offering of goods or services. The Domain Name was being used in connection with the sale of products competing with Viagra brand sildenafil citrate. For the reasons discussed below in connection with registration and use in bad faith, however, use of the trademark to sell competing products cannot be a bona fide offering within the meaning of paragraph 4(c)(i) of the Policy.

The suggestion in the first email that there are other sites using the term VIAGRA cannot assist the Respondent either. The bare reference to “other sites” is too vague to act on. It is not clear what, if any, sites the Respondent is referring to, how many there are, or what they are offering for sale. In any event, the relevant question in this Complaint is whether or not the Respondent has rights or legitimate interests.

Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Before the Complaint was filed, the Complainant made a “trap” purchase via the website to which the Domain Name resolved and was supplied with “Kamagra” brand sildenafil. While the website was reached through the Domain Name, it was headed “European Viagra” and solicited orders under the heading “What is Viagra”. All of these factors combine to indicate that the Domain Name was registered and being used to attract persons seeking to buy genuine Viagra branded medication, and to sell them a competing brand.

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.”

The use of the Domain Name in the manner described above to sell competing brand sildenafil citrate, such as Kamagra brand sildenafil citrate, clearly falls within paragraph 4(b)(iv) of the Policy. Moreover, apart from the bare and unsatisfactory assertions the Panel has referred to above, the Respondent has made no attempt to elucidate the circumstances in which it came to register the Domain Name. In the absence of any such credible explanation, the Panel is entitled to infer that the Respondent could not advance anything to assist its case and, accordingly, registered the Domain Name with the intention of using it in the manner that it has done.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith.

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 <europeanviagra.com> be transferred to the Complainant.

Warwick, A. Rothnie
Sole Panelist

Date: March 28, 2005