WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc v. CheapViagraStore
Case No. D2005-0159
1. The Parties
The Complainant is Pfizer Inc, of New York, New York, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is CheapViagraStore, of Lagomar, NA, Uruguay.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February�10,�2005. On February�10,�2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February�11,�2005, 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 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�15,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March�7,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March�10,�2005.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March�17, 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 Panels 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. Annex 4 to the Complaint lists more than 6 pages of trademark registrations for “VIAGRA” in other countries including Trademark No 285186 registered in Uruguay, the Respondent’s location according to its registration details, with effect from October�24,�1997.
The Respondent registered the disputed Domain Name on December�10,�2003.
Annex 6 to the Complaint is a print out of the website to which the Domain Name resolved, made on February�2,�2005, by the Complainant’s lawyers.
The website to which the Domain Name, , resolved includes a banner for “cheap Viagra & cialisstore�”.
Under the heading, “Welcome to our online store”, it states “V-viagra is a leading global provider of lifestyle medications to consumers ….” Next to this, there is an image of a tablet with a stylized representation of the word “Pfizer” engraved on it and the caption “Starting at $64 for 15pills/100 mg”.
Under a heading “Generic Viagra”, it states “VIAGRA” is a prescription drug that works by increasing blood flow to the penis. It is not a hormone or an aphrodisiac. Once you take it, VIAGRA can work in as quickly as 30 minutes. VIAGRA works for 4 hours so you can set you own pace. And in most patients, VIAGRA can be taken as often as once a day.”
Then follows a table comparing the price and services for “Viagra Ingredient” available from a local pharmacy “(e.g. Walgreens)”, an online pharmacy “(e.g. Drug )” and “CheapViagraStore”. There is also what purports to be a testimonial from “Richard, California” who declares that “This Viagra worked PERFECT for me. ….”
The FAQ page starts “VIAGRAX-DS – Generic Sildenafil Citrate is an effective treatment for ED regardless of the cause or duration of the problem or the age of the patient. This section takes you through how VIAGRAX-DS works, its side effects and the dosage that is right for you. Always consult your doctor for the right dosage.”
There is a section:
“How is VIAGRAX-DS different?
“Viagrax-DS is made with through [sic] reverse engineering for the sildenafil citrate molecule – a totally different process of making sildenafil and its reaction. That is why it has effect in 15 minutes compared to others which takes [sic] 25 – 30 minutes to take effect.”
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, para 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 para 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.
The Complainant has demonstrated ownership of the registered trademarks referred to in section 4 above. As noted, these cover both Uruguay, which is the location of the Respondent, and the USA which appears to be a target market for the website “www.” in view of the comparison of the website’s services and prices to US-based pharmacies and the testimonial from the satisfied Californian.
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).
Ultimately, this is a matter of impression. The Domain Name incorporates the whole of the Complainant’s registered trademark “VIAGRA”. It differs only in the addition of the descriptive terms “cheap” and “store” plus the addition of the gTLD, .com. The Panel finds that the impression conveyed by the Domain Name as a whole is that consumers are likely to associate it with trademark “VIAGRA”. The distinctive component of the Domain Name is the Complainant’s registered trademark, “Viagra”, the other elements of the disputed Domain Name do not add anything distinctive to that. The essential component, the memorable part, is the term “VIAGRA”, a coined or invented term.
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 “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”.
The Domain Name is the same as the Respondent’s name – at least as given in the registration details. The name is clearly not the name of a natural person; it is either an assumed or adopted name. The Respondent has not provided any information about how or when the name was assumed or adopted. Accordingly, the Panel is entitled to conclude that that he or it could not advance anything which would have assisted his or its case. Moreover, the Domain Name was registered long after the Complainant acquired its trademark rights and was clearly registered with knowledge of the Complainant’s rights and products. The Policy would be rendered substantially unworkable if it could be circumvented by the simple expedient of adopting a name, the distinctive feature of which was a well-known trademark, as it would be an extremely rare case, if ever, that a Complainant would have notice of such a plan and be able to dispute it before it was carried into effect.
From Annex 6 and the details recounted above in Section 4, it appears that the Respondent offers for sale genuine Viagra-brand sildenafil citrate – see e.g. the image of the tablet engraved with the word “Pfizer” offered for sale at substantially higher prices than the so-called generic products. The Complaint does not address this aspect of the website, so it is not clear whether or not the Complainant disputes the genuineness of these products.
In this case, however, the fact that the Respondent is using its website to offer for sale Viagra-brand sildenafil citrate tablets originating from the Complaint is not enough to give rise to a right or legitimate interest within the meaning of the Policy as the Respondent is also offering for sale at the same website directly competing products, at very much cheaper prices, such as Viagrax-DS “generic sildenafil citrate” and, possibly, “Generic Viagra”.
As the Complainant contends, there is no such thing as “generic” Viagra: “VIAGRA” is a brand name, it is (as already recounted) a registered trademark in many parts of the world including both Uruguay and the USA. If there is something that is generic, it is sildenafil citrate. Many Panels have concluded that it is not a legitimate use of the trademark to use it in a domain name 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 and Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400.
The principle espoused in those decisions has been applied in cases like the present where the respondent is offering for sale both genuine and competitive products: see Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870. While that decision is not binding on this Panel, there is obviously much desirability in Panels treating similar fact situations similarly, all the more so where the same trademark rights are in issue. Moreover, this Panel finds that the prominent offering for sale of so-called generics at a website using a competitor’s trademark as the distinctive component of the domain name falls outside what the Policy contemplated by rights or legitimate interests for the purposes of paragraph 4(b).
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 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”.
As already discussed, the Respondent uses the Domain Name to attract customers for sildenafil citrate to the Respondent’s website where both (apparently) Viagra-brand sildenafil citrate and a competing product are offered for sale. It registered the Domain Name well after the Complainant acquired its rights and with knowledge of the Complainant’s well-known “VIAGRA” trademark. The competing product (or products) are offered for sale quite prominently and under the promotional tag that the site offers “cheap Viagra”. Accordingly, in line with the decisions already referred to - Ansell Healthcare Products Inc. v Australian Therapeutic Supplies Pty Ltd, Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim and Pfizer Inc v. The Magic Islands – the Panel finds that the Domain Name has been registered and 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, , be transferred to the Complainant.
Warwick, A. Rothnie
Sole Panelist
Date: March�30,�2005
Full & Egal Universal Law Academy