The Complainant is Pfizer Inc. of New York, United States of America represented by DLA Piper US LLP, United States of America.
The Respondent is PrivacyP of Munsbach, Luxembourg / li, be of the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2011. On April 15, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On April 14, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 20, 2011.
The Center verified that the Complaint together with the amendment to 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 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2011.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 26, 2011. 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, Pfizer Inc., a United States based company is one of the largest pharmaceutical companies in the world, with global operations in more than 150 countries.
The Complainant has developed a medication for the treatment of erectile dysfunction under the mark Viagra. The Complainant has spent millions of dollars and extensive resources on research, development and marketing of Viagra medication.
The Complainant has been using the VIAGRA mark in connection with its product in the United States since 1998.
The Complainant owns numerous trademark registrations for the mark VIAGRA. For example; United States trademark registration No. 2162548 - VIAGRA, with the registration date of June 2, 1998; Community trademark registration No. 000233890 – VIAGRA, with the registration date of April 21, 1998; Taiwan trademark registration No. 00771202– VIAGRA, with the registration date of August 16, 1997, and many more.
The disputed domain name was registered on July 21, 2010.
The disputed domain name leads Internet users to an on-line market place, which offers for sale the Viagra medication tablets, while using the Complainant's trademarks. 5. Parties’ Contentions A. Complainant
The Complainant argues that its VIAGRA trademark, which is a coined and fanciful term having no denotative meaning, is universally recognized and relied upon as identifying the Complainant as the sole source of the drug. The Complainant contends that the VIAGRA trademark has acquired substantial goodwill and is an extremely valuable commercial asset.
The Complainant further argues that numerous UDRP decisions have recognized the Complainant’s well-established rights in its famous VIAGRA trademark.
The Complainant further argues that the website under the disputed domain name offers for sale counterfeit Viagra medication. The Complainant further contends that even assuming, for the sake of argument, that the Respondent is selling genuine Viagra medication through the website under the disputed domain name, its use of the Complainant's trademark is unauthorized.
The Complainant further argues that the disputed domain name is confusingly similar to the VIAGRA trademark, as it incorporates the VIAGRA trademark as a whole. The Complainant contends that the mere addition of the letters "tw", which is an abbreviation for Taiwan, is insufficient to avoid confusing similarity between the VIAGRA trademark and the disputed domain name.
The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its
VIAGRA trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not commonly known by the name “Viagra” “Twviagra” or any variation thereof.
The Complainant further argues that the Respondent was aware of the Complainant when registering the disputed domain name, and that the disputed domain name was registered to divert Internet traffic from the Complainant's website for commercial gain.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Matter - Respondent's Identity
An initial search of the WhoIs database by the Complainant resulted the registrant as being “PrivacyP”, which is a service that allows registrants to protect their identities. After filing the Complaint, the concerned registrar provided the Center with the registrant's registered identity, physical and email address. The new contact details were forwarded to the Complainant with an invitation to amend the Complaint. The amendment to the Complaint named PrivacyP as co Respondents and li, be.
Previous UDRP panels under similar circumstances have raised the question of who is the proper respondent, when the privacy service is originally named in the Complaint as the Respondent, and the registrar later discloses the underlying registrant (see BPCE v. PrivacyP / Maksym Pastukhov, WIPO Case No. D2010-1666; Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Anton Beloshitskiy / PrivacyP,WIPO Case No. D2011-0118).
Paragraph 1 of the Rules, state that a UDRP complaint must be filed against the person identified as the registrant in the registrar’s WhoIs database at the time the Complaint is submitted.
Also, it is the opinion of this Panel that a registrant who chose to register through a privacy service must bear some of the consequences of the anonymous registration (see Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Anton Beloshitskiy / PrivacyP, (supra); F. Hoffmann-La Roche AG v. PrivacyP, Domain Admin and Mark Sergijenko,WIPO Case No. D2007-1854; Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum,WIPO Case No. D2006-0881).
It is for these reasons that a privacy provider can be treated as the Respondent. However, since the amended Complaint had identified, li, be, as a valid second Respondent, the Panel will consider li, be as the substantive Respondent in the present case. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns numerous worldwide trademark registrations for the mark VIAGRA. For example; United States trademark registration No. 2162548 - VIAGRA, with the registration date of June 2, 1998; Community trademark registration No. 000233890 – VIAGRA, with the registration date of April 21, 1998; Taiwan trademark registration No. 00771202– VIAGRA, with the registration date of August 16, 1997, and many more.
Also, the Complainant's rights in the VIAGRA mark have been established in numerous UDRP decisions (see e.g.; Pfizer Inc. v. NA,WIPO Case No. D2005-0072; Pfizer Inc. v. Jeff Ferris,WIPO Case No. D2006-1242).
The disputed domain name differs from the registered VIAGRA trademark by the addition of the two letters “tw” and the additional gTLD “.com”. The disputed domain name integrates the Complainant’s VIAGRA trademark in its entirety, as a dominant element.
The addition of the letters “tw” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s VIAGRA trademark, as it indicates a geographical location, which is a market for the Complainants products, and is a descriptive element.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
And, “the addition of the geographical indicator "China" is insufficient to avoid confusing similarity as it is a non-distinctive element that is somewhat connected with the Complainant is markets its products in among other countries, in China. The most prominent element in the domain name is clearly the term "grundfos", which lacks dictionary meaning in both English and Chinese, and may cause the public to view it as connected to the GRUNDFOS trademark. ” (Grundfos A/S v. WangShuLi,WIPO Case No. D2010-1575; See also Wal-Mart Stores, Inc . v. Su Rong Ye,WIPO Case No. D2002-0771)
Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Furthermore, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use its VIAGRA trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the VIAGRA trademark since the year 1997. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark's goodwill. The Panel cites the following with approval; "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Furthermore, previous UDRP panels have determined that incorporating a widely-known trademark, such as the Complainant's VIAGRA trademark, as a domain name is a clear indication of bad faith (see Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441).
The disputed domain name leads Internet users to a website that appears to sell Viagra medication while using the Complainant's trademark.
Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainants and of the use the Complainants are making in their well-known VIAGRA trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
Also, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Given the circumstances of this case, the Panel further finds that the Respondent's use of a privacy service is another indication of bad faith registration (Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598). The Respondent failed to submit a Response and indicate any legitimate reason to use a privacy service. The Panel finds it very likely that the Respondent used a privacy service to make it difficult for the Complainant to protect its trademark.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name, the similarity between the disputed domain name and the Complainant’s mark, and the Respondent's use of a privacy service, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: June 8, 2011
Full & Egal Universal Law Academy