The Complainant is Pfizer Inc. of New York, New York, United States of America, represented by Kaye Scholer, LLP, United States.
The Respondent is Fundacion Private Whois of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2012. On June 18, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On June 22, 2012, I Corp. 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 June 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2012.
A reply was received on June 26, 2012 from an unknown email address […]@ stating “We are closing our pharmacy. Can you stop the complaint?” The Center requested that the owner of this email state how it was related to the Respondent. In an email dated June 28, 2012 from another unknown email address […]@, […] stated “I’m the owner of ‘www.’ and [I]’ve received a complaint Case No. D2012-1228. We have closed our pharmacy and no longer will sell any drugs.” The Center forwarded this email correspondence to the Complainant stating that it might wish to request a suspension of the proceedings to explore a possible settlement. On July 4, 2012, the Center wrote to the parties stating that, as it had not received a request for suspension from the Complainant, the Response remained due on July 12, 2012.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2012. On July 24, noticing that the email address that appeared in the website to which the disputed domain name resolved on the date of notification was not used for purpose of notifying the Complaint, the Center forwarded the notification documents to that email address, giving five days to confirm to the Center in case it wishes to file a response. The Center has not received any reply within the specified date.
The Center appointed Isabel Davies as the sole panelist in this matter on August 8, 2012. 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 contends that it has registered VIAGRA as a trademark in more than 150 countries around the world. The registrations include United States trademark no. 2162548 which was issued on June 2, 1998. The VIAGRA trademark is registered in class 5 for pharmaceutical substances. The Complainant contends that the VIAGRA trademark is a well-known and famous trademark throughout the world.
The disputed domain name was registered on February 8, 2008.
The Complainant contends that the disputed domain name presently directs Internet users, for a profit, to a website that advertises tablets not made or authorized by the Complainant, Pfizer Inc. (“Pfizer”), as well as other third party products that compete with Pfizer’s Viagra product. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant contends that the disputed domain name (1) incorporates wholesale the famous and well-known VIAGRA mark, (2) merely appends to the VIAGRA mark the generic term “top”, (3) is confusingly similar to the Complainant’s own domain name at which the Complainant operates a website, and (4) is so clearly similar to the Complainant’s VIAGRA mark that it is likely to cause confusion among the Complainant’s customers and the consuming public.
The Complainant further contends that as the disputed domain name consists entirely of the famous VIAGRA mark, appending only the generic term “top”, it cannot be disputed that the disputed domain name is identical and confusingly similar to the Complainant’s VIAGRA mark.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant contends that it is not affiliated in any way to the Respondent and has never authorized the Respondent to register or use the disputed domain name or the VIAGRA mark.
The Complainant contends that upon information and belief, the Respondent is not commonly known by the name “Viagra” or “Top Viagra” or any variation of it and that the Respondent has no rights or legitimate interests in the VIAGRA mark or in the disputed domain name.
The Complainant contends that the Respondent had knowledge of the Complainant’s famous VIAGRA mark prior to registration of the disputed domain name.
The Complainant contends that the Viagra branded tablets obtained through the Respondent’s website have been tested by Pfizer and proved to be counterfeit tablets not manufactured or authorized by Pfizer. It is also offering “Generic Viagra”, “Cialis” and “Levitra” which are not made or authorized by Pfizer that are indicated for the treatment of erectile dysfunction. It contends that use of the disputed domain name to offer for sale counterfeit imitations of the Complainant’s branded products or to direct Internet users to websites offering competing products for sale is not a legitimate use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The Complainant contends that the Respondent had constructive knowledge of Pfizer’s rights in the mark at the time the disputed domain name was registered. Further, the disputed domain name deliberately and misleadingly includes wholesale the Complainant’s registered mark VIAGRA and the Respondent is not licensed to use the VIAGRA mark.
The Complainant contends that the Respondent has registered and is using the disputed domain name intentionally to misdirect and divert customers looking for information about Pfizer and its Viagra product to a for-profit website that offers counterfeit and infringing products as well as other non-Pfizer products that compete with genuine Viagra product. This creates a likelihood of confusion with Pfizer’s marks as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves, the on-line retailers to which that website links, and the non-Pfizer products sold on those sites.
The Complainant contends that UDRP panels routinely hold that it is bad faith to use a domain name to sell counterfeits, as the Respondent is doing here. B. Respondent
The Respondent did not submit a formal response to the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. The Complainant bears the onus of production of evidence of its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of the trademark rights in VIAGRA in connection with pharmaceutical substances and that it is a well-known and famous trademark.
The Complainant contends that it cannot be disputed that the disputed domain name is identical and confusingly similar to the Complainant’s VIAGRA mark.
Compared to the Complainant’s trademark, the disputed domain name consists of the trademark VIAGRA in addition to the word “top”. The disputed domain name is not identical to the trademark held by the Complainant. Therefore, the Panel must consider whether there is confusing similarity.
It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S.Wilson, Sr., WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for the purposes of the Policy”.
The Panel finds that the addition of the word “top”, which is a generic term, does not add a distinctive element to the disputed domain name and is not sufficient to render the disputed domain name dissimilar or to prevent consumer confusion to the trademark of the Complainant.
For the reasons stated above, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraphs 4(c)(i)-(iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes inter alia: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark VIAGRA, nor has the Respondent been authorized to register and use the disputed domain name.
The Complainant contends that the Respondent was aware of the Complainant’s trademarks when it registered the disputed domain name.
The Panel cannot view the Respondent’s website as it is no longer available. However, in the absence of a Response, the Panel accepts the Complainant’s supported contention that the Respondent’s website did link to websites promoting the Complainant’s competitors. By diverting traffic to third parties using paid link advertisements, the Panel finds that the Respondent is not in any way engaged with, or preparing for, a bona fide offering of goods or services using the disputed domain name.
The Complainant contends that it obtained Viagra branded tablets through the Respondent’s website, carried out tests and found the tablets to be counterfeit tablets not authorized or manufactured by the Complainant. In the absence of a Response, the Panel accepts the Complainant’s contention that the tablets sold through the disputed domain name were counterfeit. This is a potential danger to consumers. The Panel finds that this is not a bona fide offering of goods and services.
The Respondent is not commonly known by the disputed domain name.
In view of the above, the Panel finds that the Complainant has established the second condition of the paragraph 4(a) of the policy. C. Registered and Used in Bad Faith
The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation”, will be evidence of bad faith registration and use of a domain name, and lists four possible circumstances which shall be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. These circumstances include the situation where a respondent uses the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Panel notes that the Complainant’s VIAGRA trademark is well-known and the Panel finds it inconceivable that the Respondent was not aware of the existence of the VIAGRA mark owned and used by the Complainant at the time when it registered the disputed domain name on February 8, 2008. The panel in Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0850 stated that “only someone who was familiar with the Complainant’s mark and its activity would have registered the disputed domain name inclusive of such mark”.
Finally, bad faith is evidenced by the Respondent’s use of the disputed domain name in a manner that is potentially harmful to the health of many unsuspecting consumers. The disputed domain name resolved to a website that offered counterfeit Viagra drugs for sale, offering a potential danger to consumers. By doing so, the disputed domain name resolved to a website that created the false impression that those who purchase pharmaceutical products through the disputed domain name were buying safe and effective products from the Complainant that have been approved by the United States Food and Drug Administration (“FDA”) and many other health authorities around the world. The products sold through the disputed domain name were therefore illegal and potentially dangerous.
As stated in paragraph 15 of the Rules, the Panel can only make its decision based on the information and evidence submitted before it and, given the circumstances, the Panel is satisfied that the Respondent.
Registered and used the disputed domain name in bad faith. 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 domain name, be transferred to the Complainant.
Isabel Davies
Sole Panelist
Dated: August 21, 2012
Full & Egal Universal Law Academy