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Pfizer Inc. v. Mmyongjin Kim [2005] GENDND 774 (19 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Mmyongjin Kim

Case No. D2005-0083

1. The Parties

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

The Respondent is Mmyongjin Kim, Gyeongju Gyeongbuk, Republic of Korea.

2. The Domain Name and Registrar

The disputed Domain Name <pfizer-viagra.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2005. On January 26, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On January 28, 2005, OnlineNic, Inc. d/b/a China-Channel.com 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. A supplement to the Complaint was filed with the Center on February 10, 2005. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 3, 2005. The Center verified that the Complaint, the supplement and the amendment to 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 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2005.

The Center appointed António L. de Sampaio as the sole panelist in this matter on May 4, 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.

The Panel verified that the language of the registration agreement is English and therefore the proceedings will be conducted in English.

4. Factual Background

The Complainant, Pfizer Inc., a United States of America Corporation, asserts in its Complaint the following facts, which have not been disputed. Accordingly, consistent with the Panel’s obligation under the Rules [paragraph 15(a)] the Panel considers and decides these facts - based on the statements and documents submitted - as sufficiently proved for the purposes of this Complaint.

a) The Complainant, besides other US trademark registrations, owns the United States trademark registration for the word mark PFIZER, under No. 501,762, issued as a registration, on August 24, 1948.

b) The Complainant is the trademark owner of the word mark PFIZER in numerous jurisdictions worldwide.

c) Complainant’s VIAGRA - (sildenafil citrate) a medication for erectile dysfunction - was approved by the United States Food and Drug Administration (the “FDA”) on March 27, 1998, and the mark VIAGRA has been used on or in connection with the sildenafil citrate drug in the United States, since April 6, 1998.

d) The Complainant is the owner of the United States trademark registration No. 2,168,548 for VIAGRA, issued as a registration on June 2, 1998, on the Principal Register, maintained by the United States Patent and Trademark Office (USPTO).

e) The Complainant and its affiliates also own trademark registrations for the VIAGRA mark around the world, at least as many as 200, in many different jurisdictions, either national or regional.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is among the major pharmaceutical enterprises in the world, having global operations in more that 150 countries, having at present at least 10 medicines that are leaders in their therapeutic categories worldwide.

Complainant also asserts that it has been known by and has used the PFIZER mark since 1849, being the first US trademark registration for the word mark PFIZER, dated August 24, 1948. The PFIZER mark is also registered in numerous jurisdictions worldwide, either at national or regional levels.

Complainant concludes that by virtue of the highly extensive sales and advertising throughout the world under the PFIZER mark, said PFIZER mark has become and is extremely well-known and famous worldwide.

One of the Complainant’s best known and successful products, presently, is its VIAGRA brand for sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction. This new medication was approved on March 27, 1998, by the United States Food and Drug Administration (the “FDA”) and used in the United States on or in connection with the sildenafil citrate since April 6, 1998. The United States trademark registration No. 2,162,548 for the word mark VIAGRA was issued on the Principal Register of the USPTO on June 2, 1998.

The Complainant and its affiliates are the owners of more that 200 trademark registrations for VIAGRA worldwide, at national and regional jurisdictions.

The Complainant asserts that Pfizer’s VIAGRA mark is also extremely famous and well-known worldwide.

The disputed Domain Name was registered on April 21, 2004.

The Complainant, Pfizer, argues that the Respondent, on registering the disputed Domain Name <pfizer-viagra.com> was seeking to capitalize on the fame of the Complainant’s PFIZER and VIAGRA trademarks.

The Complainant states that it is not related and/or affiliated in any way to the Respondent and has never authorized the Respondent to register or use the Domain Name at issue or the mark PFIZER or the mark VIAGRA.

The Complainant states that the Respondent has no rights or legitimate interests in the subject Domain Name.

Complainant’s adoption and registration of the mark PFIZER and of the mark VIAGRA in the United States and in any other jurisdiction elsewhere precedes Respondent’s registration of the Domain Name at issue.

The Complainant refers to the lack of evidence that the Respondent is using the Domain Name for a bona fide offering of goods and/or services, and to the fact that there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed Domain Name without intention for commercial gain. The Complainant concludes that the registration and use of the Domain Name <pfizer-viagra.com> (incorporating the mark PFIZER and the mark VIAGRA) leads to “a brazen act of cybersquatting”.

The Complainant states that upon information and belief, Respondent has no rights in the PFIZER and/or VIAGRA marks.

The Complainant asserts that “UDPR Panels have made it quite clear that it takes more than Domain Name registration to obtain rights in the Domain Name”. Jerome Gilson, Trademark Protection and Practice, § 7A.06 [2][b][iii] at page 7A-82 § n 236 (Mathew Bender 2004) (citing Panel decisions).

Finally, the Complainant argues the Respondent’s bad faith on registering and using the disputed Domain Name, through the following points:

I Respondent was perfectly aware of the fame and goodwill associated worldwide with the PFIZER mark and the VIAGRA Mark when deciding to register the Domain Name <pfizer-viagra.com> which is intended to be, and is, confusingly similar to Pfizer’s trademarks and trade name, both visually and phonetically.

II Reference is made to several UDRP panel decisions, where they found bad faith on the registration of domain names incorporating the very marks at issue in the present case.

III The Domain Name <pfizer-viagra.com> deliberately and misleadingly includes Pfizer’s registered marks PFIZER and VIAGRA.

IV Respondent is not at present, nor has it ever been, a representative of Pfizer, or licensed to use the PFIZER mark or the VIAGRA mark.

V There is a full applicability in this case of the factors enumerated in paragraph 4(b)(i) of the Policy. The Respondent has registered and is using the Domain Name <pfizer-viagra.com> primarily for the purpose of selling it.

VI As evidence of Respondent’s intention to sell the disputed Domain Name, the Complainant has annexed to the Complaint a copy of an e-mail dated February 3, 2005, sent by MJ Kim to Pfizer’s counsel.

In said e-mail, the Respondent explicitly offers to sell to Pfizer the Domain Name <pfizer-viagra.com> at a price of USD 950.

VII The Respondent’s actions are intentional, with knowledge of Pfizer’s trademark rights.

VIII Complainant seeks transfer of the Domain Name <pfizer-viagra.com> to the Complainant.

B. Respondent

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

6. Discussion and Findings

Interim Remarks

The Panel is satisfied that the Center has taken all the possible and reasonable steps to bring the Complaint to the Respondent’s knowledge and attention.

There being no response, paragraph 5(e) and paragraph 14(a), both of the Rules, and in the presumption of the absence of exceptional circumstances, under the direction of paragraph 15(a) also of the Rules, the Panel shall decide the present Complaint on the basis of the statements and of the documents submitted, bearing in mind the Policy, the Rules and principles of law deemed 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 considered each of the above elements and concludes as follows as regards its applicability to the present case.

A. Identical or Confusingly Similar

The Complainant is the registered owner - and has proved its ownership - of the trademark registration PFIZER (word mark) and of the trademark registration VIAGRA (word mark). These two trademarks are both registered in the United States of America and also in many other foreign jurisdictions worldwide.

The Domain Name <pfizer-viagra.com> is identical to Complainant’s marks PFIZER and VIAGRA. The fact that the Domain Name contains a hyphen between the two combined Pfizer marks and the addition of a .com suffix is irrelevant to such a finding.

The Panel thus concludes that the disputed Domain Name is identical to the Complainant’s trademarks

B. Rights or Legitimate Interests

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

In this case, the Complainant claims its ownership of the registered trademarks PFIZER and VIAGRA and that those two marks are well-known in the United States and throughout the world.

The Complainant also states that it is not related and/or affiliated in any way with the Respondent and that the Respondent is not at present, nor has it ever been, a representative of Pfizer or licensed to use the PFIZER or VIAGRA marks.

Considering the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this element. The burden then shifts to the Respondent to rebut, if possible, that prima facie case.

In this case, the Respondent failed to respond and rebut the Complainant’s supported contentions.

Therefore, the Panel considers and concludes that the Respondent has no rights or legitimate interests in the Domain Name <pfizer-viagra.com>.

C. Registered and Used in Bad Faith

The Complainant’s PFIZER trademark was registered in the United States in 1948, and is, as is commonly accepted, one of the most well-known trademarks in the pharmaceutical industry, on a worldwide basis.

The Complainant’s VIAGRA trademark was registered in the United Sates in 1988, and is, as is commonly accepted, one of the most well-known trademarks worldwide to identify a pharmaceutical product for the treatment of erectile dysfunction.

The VIAGRA mark became a “success story” not only in the United States but, also, around the world.

Therefore, the Respondent, when registering the Domain Name <pfizer-viagra.com> in March 2004, had to have been, without any reasonable doubt, perfectly aware of the Complainant’s trademarks.

Complainant presents several indicia of use in bad faith by the Respondent.

The Respondent knew of the existence of the Complainant’s registrations for the famous marks PFIZER and VIAGRA, prior to its registration of the disputed Domain Name.

Thus, the Respondent must be perfectly aware, just as the general public is well aware, of the vast and valuable goodwill and reputation represented and symbolized by the PFIZER and VIAGRA marks.

The Respondent has publicly offered to sell his Domain Name registration to the highest bidder, and has also explicitly offered to sell said Domain Name to the Complainant, thus acting with bad faith intent to unlawfully profit from Pfizer’s name and reputation in accordance with paragraph 4(b)(i) of the Policy.

Considering of all the above, the Panel concludes that the Domain Name <pfizer-viagra.com> was registered and used in bad faith.

7. Decision

The Panel concluded that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy. The Domain Name in dispute, which was registered by the Respondent, is confusingly similar to the trademarks of the Complainant; and, the Respondent has no rights or legitimate interests in respect of the Domain Name in dispute; and, the Respondent’s Domain Name has been registered and is being used in bad faith.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <pfizer-viagra.com> be transferred to the Complainant.

António L. De Sampaio
Sole Panelist

Dated: May 19, 2005