The Complainant is Pfizer Inc. of New York, United States of America, represented by Kaye Scholer, LLP, United States of America.
The Respondent is Vladyslav Rybak of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 14, 2012. On September 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2012, the Registrar 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 September 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2012.
The Center appointed Luca Barbero as the sole panelist in this matter on November 5, 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 is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. It discovers, develops, manufactures and markets prescriptions medicines for human and animals, as well as consumer healthcare and nutritional products. The Complainant’s Viagra medication (sildenafil citrate) was the first approved oral medication for the treatment of erectile dysfunction.
Viagra medication was approved by the United States Food and Drug Administration (the “FDA”) on March 27, 1998, and the mark has been used on or in connection with the sildenafil citrate product in the United States since April 6, 1998.
The Complainant and its affiliates own trademark registrations for the VIAGRA mark in more than 150 countries in the world, as shown in the list of trademark registrations for VIAGRA submitted as Annex 4 to the Complaint.
The Complainant is the owner, amongst others, of the United States Trademark No. 2,162,548 for VIAGRA, registered on June 2, 1998, in International class 5.
The Complainant is the owner of the domain name , which was registered on June 19, 1997.
The disputed domain name was registered on December 22, 2009 and is redirected, at the time of the drafting of the decision, to a web page promoting the sale of “cheap VIAGRA” drugs; selecting the link “buy now” published on the web page, users are redirected to a web site where various medicines are offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant states that “Sildenafil citrate” is marketed in the United States and in numerous other countries under the Complainant’s trademark VIAGRA, which is well-known and famous throughout the world.
Since its approval in 1998, which was highly publicized, the Viagra medication has been the subject of intense media attention, public scrutiny and commentary throughout the world. Therefore, the Complainant highlights that, by virtue of this extensive publicity and of the Complainant’s own post-approval advertising and promotion, the Complainant’s trademark has become famous throughout the world as designating the Complainant’s brand of oral therapy for erectile dysfunction.
The Complainant underlines that Viagra is a coined and fanciful term having no denotative meaning and that it is universally recognized and relied upon as identifying the Complainant as the sole source of the drug, and as distinguishing the Complainant’s product from the goods and services of others. As a result, the Complainant concludes that the VIAGRA trademark has acquired substantial goodwill and is an extremely valuable commercial asset.
The Complainant contends that the disputed domain name is confusingly similar to its trademark VIAGRA, as it incorporates the trademark with the addition of the generic term “otc”. The Complainant also underlines that the disputed domain name is confusingly similar to the domain name , at which the Complainant operates a web site.
With reference to right or legitimate interest in the disputed domain name, the Complainant states that it is not affiliated in any way with the Respondent and has never authorized it to register or use the disputed domain name or the VIAGRA mark.
The Complainant also states that the Respondent has no right or legitimate interest in the VIAGRA mark (or any variant spelling) or in the disputed domain name and that, upon information and belief, the Respondent is not commonly known by the name “Viagra,” “V” or any variation thereof.
The Complainant contends that the Respondent’s use of the disputed domain name confirms that it is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Complainant states that the Respondent has intentionally registered the disputed domain name explicitly for the purpose of making illegitimate or unfair use of the Complainant’s mark to attract visitors who will then generate pay-per-click fees when they click through the links on Respondent’s website. The Complainant highlights that the online pharmacy to which user are redirected sells products that compete with the Complainant’s products, such as the “Cialis” and “Levitra” drugs for erectile dysfunction, as well as purported “Viagra soft” tablets which are not authorized by the Complainant and infringe upon the VIAGRA mark.
The Complainant highlights that redirecting Internet users to web sites featuring revenue generating advertisements or links does not constitute a “bona fide offering of goods or services” and is not “a legitimate or noncommercial fair use”. The Complainant asserts that prior panels have repeatedly held that a registrant has no legitimate interest in the Complainant’s VIAGRA trademark where, as in the present case, the registrant was using its domain name to direct Internet users to online pharmacies that offered for sale, inter alia, products that competed with the Complainant’s genuine Viagra product.
With reference to the bad faith requirement, the Complainant contends that the Respondent, like the public generally, is well aware of the vast and valuable goodwill and reputation represented and symbolized by the VIAGRA trademark and underlines that the VIAGRA mark is recognized and relied upon by medical professionals and the public throughout the world as the sole means to identify and distinguish the Complainant and its erectile dysfunction medication from the goods and services of others.
The Complainant highlights that the VIAGRA mark is an invented and coined mark that has a strong worldwide reputation, of which the Respondent was undoubtedly aware at the time the disputed domain name was registered. The Complainant also states that the Respondent’s references, on the web site corresponding to the disputed domain name, to erectile dysfunction, to purported Viagra product and to products that compete with Viagra tablets, confirms the Respondent’s awareness of the Complainant’s VIAGRA mark. Moreover, by virtue of the Complainant’s registration of the VIAGRA mark in the United States and other jurisdictions, Respondent had constructive knowledge of the Complainant’s rights in the mark at the time the domain was registered.
With reference to the use of the disputed domain name, the Complainant contends that the Respondent has registered and is using the disputed subject domain name intentionally to misdirect and divert customers looking for information about the Complainant and its Viagra product to a for-profit web site that collects pay-per-click revenue from sites that offer third-party products, including products that compete with genuine Viagra product. The Complainant highlights that this creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the site to which the domain name resolves, the on-line retailers to which that site links, and the non-Complainant products sold on those sites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the trademark VIAGRA owned by the Complainant.
Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive or generic terms to a trademark is not a distinguishing feature.
See inter alia, amongst others, Barry D. Sears, Ph.D. v. YY / Yi Yeanling, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Who’s ID Theft Protection, WIPO Case No.? D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
Therefore, the mere addition of the acronym “otc”, which stands for “over-the-counter” medicines, does not exclude the likelihood of confusion between the disputed domain name and the Complainant’s trademark.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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.”
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003 0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. There is also no indication before the Panel that the Respondent is commonly known by the disputed domain name.
In addition, the Panel finds that the use of the disputed domain name, incorporating the Complainant’s trademark, to promote the sale of products that compete with the Complainant’s products, such as the “Cialis” and “Levitra” drugs for erectile dysfunction, as well as purported “Viagra soft” tablets which are not authorized by the Complainant, does not constitute a bona fide offering of goods or services, or a legitimate, noncommercial or fair use of the disputed domain name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel notes that, in light of the well-known character of the Complainant’s trademark VIAGRA, recognized also in many prior UDRP decisions (inter alia, Pfizer Inc. v. Jeff Ferris,WIPO Case No. D2006-1242; Pfizer Inc. v. Pretzel Publishing,WIPO Case No. D2005-1329; Pfizer Inc. v. CheapViagraStore, WIPO Case No. D2005-0159; Pfizer Inc. v. Carlos Rosario,WIPO Case No. D2005-0067; Pfizer Inc v. Phillip Pizzurro,WIPO Case No. D2004-0600; Pfizer Inc v. Generic Viagra Pills,WIPO Case No. D2004-0592; Pfizer Inc v. Kent Gormat aka kgormat,WIPO Case No. D2004-0591) and supported by the intensive advertising campaigns dedicated to the Complainant’s medication since its approval in 1998, the Respondent was or ought to be aware of the Complainant’s trademark when it registered the disputed domain name.
Moreover, the Panel agrees with the Complainant that the Respondent’s references, on the web site corresponding to the disputed domain name and on the web site linked thereto, to erectile dysfunction, to purported Viagra product and to products that compete with Viagra tablets, confirms the Respondent’s awareness of the Complainant’s VIAGRA mark.
With reference to the use of the disputed domain name, the Panel finds that, in light of the contents of the web page displayed at “www.” and of the web site to which users are redirected by selecting the link “buy now” published on that web page, where various medicines, including purported Viagra product and medicines that compete with genuine Viagra product, are offered for sale, the Respondent has intentionally attempted to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site, of the web site linked thereto and of the products promoted and sold thereon.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Along the same lines is the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
In view of the above, the Panel finds that the disputed domain name was registered and is being used 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 disputed domain name be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: November 19, 2012
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