WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pfizer Inc., G.D. Searle LLC Inc. v. Samir Kumar Case No. D2009-0429 1. The Parties
The Complainants are Pfizer Inc., New York, New York, United States of America and G.D. Searle LLC Inc., New York, New York, United States of America, represented by Moses & Singer LLP, United States of America.
The Respondent is Samir Kumar, Bangalore, Karnataka, India. 2. The Domain Names and Registrars
The disputed domain names and are registered with Communigal Communications Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2009. On April 2, 2009, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the disputed domain names. On April 4, 2009, Communigal Communications Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on April 27, 2009.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on May 4, 2009. 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 is submitted by Pfizer Inc. and G.D. Searle LLC (collectively referred to as “Complainants”).
Pfizer is among the largest pharmaceutical companies in the world with global operations in more than 150 countries. Pfizer discovers, develops, manufactures and markets leading prescription medicines for humans and animals and also consumer products. Complainant is well known for the Viagra brand sidenafil citrate, the first approved oral medication for the treatment of erectile dysfunction.
G.D Searle LLC. is a wholly owned and controlled subsidiary of Pfizer Inc. A. Concerning Pfizer
Pfizer Inc. has used the PFIZER mark since 1849, and has owned a United States trademark registration for the mark PFIZER since August 24, 1948. Pfizer has registered the sign PFIZER as a trademark throughout the world, and holds several US Trademarks registrations:
- US Trademark Registration N° 501,762, issued August 24, 1948, for PFIZER;
- US Trademark Registration N° 626,088, issued May 1, 1956, for PFIZER and design.
PFIZER owns and uses the domain name , which was registered on April 28, 1992 to communicate with the public about Pfizer, its products and consumer programs.
PFIZER also operates a website at , providing information to the Indian public.
The Respondent registered the disputed domain name on March 14, 2009. B. Concerning Celebrex
G.D. Searle LLC has used the CELEBREX mark since 1999 and owns following US trademarks:
- US Trademark Registration N° 2,307,888, issued January 11, 2000, for CELEBREX.
- US Trademark Registration N° 2,321,622 issued February 22, 2000 for CELEBREX
G.D. Searle LLC also owns CELEBREX trademarks in countries such as India, Turkey, Pakistan and Canada and registered the domain name on September 4, 1998. This domain name is used to give access to a website providing information about the Celebrex product.
The Panel could check that the website at is operated by Pfizer Inc. and that the domain names , , , and are registered in the name of Pfizer Inc.
The Respondent registered the disputed domain name on March 14, 2009. 5. Parties' Contentions A. Complainant 1. Identity or confusing similarity
The Complainants contend that the domain names at issue are identical to the trademarks PFIZER and CELEBREX. 2. Rights or legitimate interests in the domain names
The Respondent has no right or legitimate interest in the trademarks. It is not affiliated in any way with the Complainants. It uses the domain names without authorization for profit websites linking to various online pharmacies that sell products directly competing with the Complainants products.
Given the widespread publicity and fame of the PFIZER and CELEBREX marks, it is indisputable that the Respondent had knowledge of Complainants famous trademarks prior to the registration of the domain names.
Furthermore, it would be virtually impossible that the Respondent registered both related marks without prior knowledge of them.
The Respondent's organization name is “samirnet-domainsforsale”. There is no evidence that the Respondent is making a legitimate non-commercial use of the disputed domain names. On the contrary, the Respondent uses the domain names and for commercial gain from pay-per-click revenue through parking web pages providing links to various online pharmacies that sell products directly competing with Pfizer products. 3. Registration and use in bad faith
The domain names and have been registered only to falsely attract Internet users searching for information about Pfizer and its products, so that it could profit from the Internet traffic through collection of click-through revenue, and/or to mislead or confuse consumers as to the origin, source or sponsorship of the purchaser's website and goods. The Respondent acted being well aware of the reputation represented by the trademarks PFIZER and CELEBREX.
The Complainants consider the fact that the disputed domain names are not only substantially similar to the Complainant trademarks, but identical thereto, as a proof for the bad faith of the Respondent.
The Respondent knows that the Internet is very important for the Complainants and he registered the domain names and to capitalize on the fame of the Complainants trademarks.
Furthermore, the attempts of the Respondent to sell the domain names to third parties and the fact that he proposed Pfizer to “offer a price to buy” also evidence the Respondent's bad faith.
The PFIZER and CELEBREX trademarks are recognized worldwide by consumers and health care professionals.
Numerous cases have held that the registration of a domain name that is merely similar to the well-known PFIZER mark is itself evidence of bad faith registration. See, e.g., Pfizer Inc. v. Fizer Inc.,WIPO Case No. D2005-0285 (May 11, 2005) (“Bad faith can be presumed based on the fame of Complainant's [PFIZER] mark [ ]”); Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256 (May 6, 2005) (“Considering that the [PFIZER] 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”); Pfizer Inc. v. jk a/k/a Josh Green,WIPO Case No. D2004-0784 (December 6, 2004) (finding bad faith where domain incorporated PFIZER mark, because the PFIZER mark is a “famous mark [.]” that is “recognized worldwide by consumers and professionals”); Pfizer, Inc. v. Seocho and Vladimir Snezko,WIPO Case No. D2001-1199 (November 28, 2001) (finding “bad faith registration where a Respondent has registered a domain name which is clearly seeking to typosquat the Complainant's famous [PFIZER] mark and primary web-site [i.e. ].”)
Additionally, the Complainants cite UDRP decisions concerning the Respondent and other pharmaceutical trademarks. See, e.g., F. Hoffmann-La Roche AG v. Samir Kumar, samirnet - domain names for sale,WIPO Case No. D2008-0919 (August 8, 2008) (transferring to complainant); F. Hoffman-La Roche AG v. Samir Kumar,WIPO Case No. D2008-0808 (July 21, 2008) (transferring to the complainant.) B. Respondent
The Respondent did not reply to the Complaint. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the complainant's trademark or service mark; 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. A. Identical or Confusingly Similar
A complainant is required under paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which the complainant has rights.
The disputed domain names in this case are and .
They are identical to the Complainants registered trademarks. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainants to prove that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) of the Policy provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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 Respondent is not affiliated with the Complainants and the Complainants have not authorized the Respondent to register any domain name incorporating the Complainants Trademarks PFIZER and CELEBREX. The Complainants have not granted any license or otherwise permitted the Respondent to use their trademarks.
Furthermore, the Respondent is not known under the names “Pfizer”, “Celebrex” or any similar name.
The Panel takes into consideration the fact that the Respondent did not answer to the Complaint.
The Panel notes in this context that the Complainants have trademark rights in the marks PFIZER and CELEBREX. As suggested by the Complainants, the trademarks were registered before the registration by the Respondent of the disputed domain names.
The Panel concurs with the allegation that the Respondent is well aware of the world famous renown of the Complainants and is just trying to take advantage of this reputation. This kind of use does not constitute a “legitimate non-commercial or fair use of the domain name”.
The fact that the disputed domain names give access to parking websites implies that the Respondent is getting profits. As alleged by the Complainants, those websites propose links to various online pharmacies that sell products directly competing with the products offered by the Complainants. The use made by the Respondent is therefore not a “legitimate non-commercial or fair use of the domain name”.
Therefore, the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainants. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name. It provides that:
“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 registration and the use of the domain names at issue will mislead the public as to the source, sponsorship or origin of the information and of the products.
1. Concerning bad faith registration of the domain names and
It is inconceivable that the Respondent was unaware of the Complainants' trademarks PFIZER and CELEBREX when he registered the domain names.
The contact details provided on the Whois of the domain names further suggest that the domain names have been registered for the purpose of selling them.
The Complainants have brought evidence that the Respondent actively tried to sell the domain name to third parties. The Respondent also invited the Complainant to offer a price to buy the domain name . This behaviour clearly shows that the domain name was clearly registered for the purpose of selling it.
The Complainants have brought evidence that the domain name is also for sale.
The Panel's opinion is that there is clear evidence that the Respondent registered the domain names in bad faith.
2. Concerning bad faith use of the domain names and
It is obvious that the links referenced on the parking pages offered at the website with the disputed domain names are based on the trademark value of the Complainants trademarks. Such practices are clearly considered as cybersquatting.
The Respondent's action is in line with paragraph 4(b)(iv) of the Policy as the Respondent is intentionally attempting to attract Internet users for commercial gain to “www.” and “www.” websites by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website and services which are not in any way affiliated with the Complainants.
The Respondent obviously profits from pay-per-click revenue generated by the websites available from the domain names at issue, which constitutes commercial gain. This is further evidence of Respondent's bad faith pursuant to Policy paragraph 4(b)(iv). See Asian World of Martial Arts Inc v. Texas International Property Associates,WIPO Case No. D2007-1415.
The Panel is of the opinion that there is ample evidence for a finding of bad faith in this case.
Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainants. 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 names and be transferred to Pfizer Inc.
Marie-Emmanuelle Haas
Sole Panelist
Dated: May 20, 2009
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