The Complainant is Pfizer Inc. of New York, New York, United States of America ("United States"), represented by Kaye Scholer LLP, United States.
The Respondent is Jan M. Rydningen of Banglamung, Chonburi, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2014, 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 November 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2014.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on November 28, 2014. 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
4.1. The Complainant is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. The Complainant discovers, develops, manufactures and markets leading prescription medicines, as well as consumer healthcare products. In particular, the Complainant has expended millions of dollars and extensive resources on research, development and marketing of VIAGRA brand sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction. Erectile dysfunction, sometimes referred to as male impotence, is a serious medical condition estimated to affect more than 20 million men in the United States and over 100 million men around the world. The introduction of the Complainant's VIAGRA (sildenafil citrate) represented a major medical breakthrough.
4.2. The Complainant's VIAGRA (sildenafil citrate) medication for erectile dysfunction was approved by the United States Food and Drug Administration (the "FDA") on March 27, 1998, and the VIAGRA mark has been used on or in connection with the sildenafil citrate product in the United States since April 6, 1998. The Complainant is the owner of United States Trademark Registration No. 2,162,548 for the trademark VIAGRA. The VIAGRA trademark registration was issued on June 2, 1998 on the Principal Register maintained by the United States Patent and Trademark Office. The Complainant and its affiliates also own trademark registrations for the VIAGRA mark in more than 150 countries around the world.
4.3. Sildenafil citrate is lawfully marketed in the United States and in numerous other countries exclusively under the Complainant's registered trademark VIAGRA, which is a well-known and famous trademark throughout the world. Even prior to FDA approval, the Complainant's VIAGRA brand sildenafil citrate received enormous media attention, including a cover story in Newsweek Magazine and discussions on such popular television programs as "20/20" and "Today." The approval in 1998 was highly publicized, including front page coverage in the New York Times the following day, and feature articles in other major publications such as USA Today. Since then, VIAGRA brand sildenafil citrate has been the subject of intense media attention, public scrutiny and commentary throughout the world. By virtue of this extensive publicity, and the Complainant's own post-approval advertising and promotion, the Complainant's VIAGRA trademark has become famous throughout the world as designating the Complainant's brand of oral therapy for erectile dysfunction.
4.4. The Complainant's VIAGRA trademark is a coined and fanciful term having no denotative meaning. The VIAGRA trademark 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 VIAGRA trademark has acquired substantial goodwill and is an extremely valuable commercial asset. 5. Parties' Contentions A. Complainant
5.1. The Complainant's states that the Respondent, seeking to capitalize on the fame of the Complainant's VIAGRA trademark and recognizing the importance of the Internet as a means of communication between
the Complainant and the public, registered without authorization the disputed domain name on November 10, 2013.
5.2. Moreover, the Complainant contends that the disputed domain name resolves to a website that advertises and sells products not made or authorized by the Complainant, including purported VIAGRA tablets and various other pharmaceutical products not made by or affiliated with the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1. Paragraph 4(a) of the Policy provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) proves each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of disputed the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, "the panel shall draw such inferences […] as it considers appropriate". A. Identical or Confusingly Similar
6.4. The Complainant has exclusive rights in the mark VIAGRA and has provided sufficient evidence.
6.5. The disputed domain name incorporates wholesale the famous and well-known VIAGRA mark, merely appends to the VIAGRA mark the common term "ninja," is confusingly similar to the Complainant's own domain name , at which the Complainant operates a website, and 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.
6.6. In this sense, it is an established principle that "a domain name is identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name." See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. So, it is clear that the disputed domain name is identical and confusingly similar to the Complainant's VIAGRA mark. See LEGO Juris A/S v. Ranan Lachman,WIPO Case No. D2013-0915. The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
6.7. According to paragraph 4(c) of the Policy, the burden of demonstrating the Respondent lacks rights or legitimate interests in the disputed domain name rests with the Complainant.
6.8. The Complainant is not affiliated in any way with the Respondent and has never authorized the Respondent to register or use the disputed domain name or the VIAGRA mark. The Respondent has no rights or legitimate interests in the VIAGRA mark (or any variant spelling) or in the disputed domain name. Respondent is not commonly known by the name "Viagra," "" or any variation thereof. Accordingly, the Respondent has no trademark rights in the mark VIAGRA
6.9. The Complainant's adoption and registration of the mark VIAGRA in the United States and throughout the world precedes the Respondent's registration in 2013 of the disputed domain name.
6.10. Moreover, given the widespread publicity and fame of the VIAGRA mark, and given the Respondent's incorporation of the Complainant's VIAGRA mark in the disputed domain name, and sale of other erectile dysfunction treatments on its website, it is indisputable that the Respondent had knowledge of the Complainant's famous VIAGRA mark prior to the registration of the disputed domain name.
6.11. 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. Rather, the Respondent has intentionally registered the disputed domain name explicitly for the purpose of making illegitimate or unfair use of the Complainant's mark by using the disputed domain name to offer products that compete with authentic VIAGRA tablets.
6.12. In this scenario, the Respondent is using the disputed domain name for a for-profit website offering
purported VIAGRA-branded tablets, as well as other products that compete with the Complainant's products.
6.13. Furthermore, the Respondent has failed to rebut the Complainant's arguments and to provide evidence of its rights or legitimate interests in the disputed domain name, as demonstrated by the Respondent's default.
6.14. Therefore, for all the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
6.15. Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, 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 the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) that the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location or of a product or service on the respondent's web site or location.
6.16. The Respondent's bad faith use of a domain name is determined, not by whether the Respondent is making a positive action in bad faith, but instead whether all of the other circumstances of the case indicate bad faith by the Respondent. See Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
6.17. The Respondent, like the public generally, is well aware of the vast and valuable goodwill and reputation represented and symbolized by the VIAGRA trademark. As used by the Complainant, 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 also currently has registered and utilizes for a website the domain name . The Respondent, recognizing the world-famous renown of the VIAGRA mark, and recognizing the value of the Internet to the Complainant in enhancing its ability to communicate with its target audience, registered and uses the disputed domain name, which wholly incorporates the Complainant's VIAGRA mark, so as to attract and mislead web users who are searching for information about the Complainant and its VIAGRA product. Given the lack of a legitimate basis for such use of the Complainant's VIAGRA mark in a domain name, the only reasonable inference is that Respondent has acted with bad faith intent to profit from the Complainant's name and reputation.
6.18. The Complainant's 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 Respondent's repeated references to a purported VIAGRA product, and products that compete with VIAGRA, confirm the Respondent's awareness of the Complainant's VIAGRA mark. Indeed, on this basis, several panels have found bad faith registration of domain names incorporating the Complainant's VIAGRA mark. Thus, as the panel noted in a previous case involving a domain name that wholly incorporated the Complainant's VIAGRA mark: "Given the widespread, virtually unprecedented, publicity that accompanied the approval of the VIAGRA brand product, it is inconceivable that Respondent was not aware of the mark at the time he registered the domain name in dispute. The Panel further concludes that there is no question that Respondent, in registering and "using" the domain name , intentionally and willfully intended to capitalize upon Complainant's trademark rights". See Pfizer Inc. v. Vartan Seferian,WIPO Case No. D2001-0316.
6.19. As a direct consequence of the Respondent's conduct, the public will be misled as to the source, sponsorship or origin of the information and products offered on the website at the disputed domain name. The Respondent's purposefully deceptive domain name anticipates, relies upon on, and profits from this consumer confusion or mistake, and constitutes bad faith use of the disputed domain name.
6.20. Under these circumstances, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof as to whether the Respondent has registered and is using the disputed domain name in bad faith.
6.21. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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.
José Pio Tamassia Santos
Sole Panelist
Date: December 12, 2014
Full & Egal Universal Law Academy