Complainant is Pfizer Inc. of New York, New York, United States of America (“United States”), represented by Kaye Scholer, LLP, United States.
Respondent is Daniel Santos of Salem, New Hampshire, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2016. On September 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 17, 2016.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on November 7, 2016. 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
Complainant is a pharmaceutical company that, among other things, manufactures a medication for erectile dysfunction known as VIAGRA. Complainant has numerous registered marks for VIAGRA dating back to at least 1998. Respondent registered the disputed domain name on August 23, 2015. 5. Parties’ Contentions A. Complainant
Complainant asserts that it is one of the largest pharmaceutical enterprises in the world, operating in more than 150 countries. Complainant further asserts that it “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 … a serious medical condition estimated to affect more than 20 million men in the United States and over 100 million men around the world.” Complainant attached to the Complaint a copy of its United States trademark registration for VIAGRA with a date of first use of April 6, 1998, and also alleges that Complainant and its affiliates own trademark registrations for the VIAGRA mark in more than 150 countries and that the VIAGRA mark is a coined, famous mark.
Complainant also attached to the Complaint copies of screenshots from the website for the disputed domain name, which show “Generic Viagra” for sale as well as “Generic Cialis” and “Generic Levitra”. Complainant asserts that the disputed domain name is confusingly similar to Complainant’s VIAGRA mark. Complainant also asserts that Respondent has no rights or legitimate interests in the VIAGRA mark because Respondent is not affiliated with Complainant, is not authorized to use the VIAGRA mark, is not commonly known as VIAGRA or , was aware of Complainant’s mark before Respondent registered the disputed domain name, and is making commercial use of the disputed domain name rather than a fair use.
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith because Respondent is seeking to capitalize on the value of Complainant’s mark to mislead those searching for Complainant’s product to find Respondent’s website instead. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Complainant’s trademark registration attached to the Complaint demonstrates that Complainant has rights in the VIAGRA mark.
The disputed domain name consists of the VIAGRA mark plus the “.online” generic Top-Level Domain. “The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. See also Audi AG, Automobili Lamborghini Holding S.p.A., Skoda Auto a.s., Volkswagen AG v. JUS TIN Pty Ltd.,WIPO Case No. D2015-0827 (“The only difference between the two is the addition of the ‘.social’ TLD to that mark to form each one of the disputed domain names, with that addition being irrelevant in assessing confusing similarity or identity under paragraph 4(a)(i) of the Policy and thus typically ignored.”); WRc plc v. W&R Corp.,WIPO Case No. D2007-1284 (“The addition of the generic top-level domain ‘.com’ is insufficient to distinguish the domain name from Complainant’s mark”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.
“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 [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] 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.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by VIAGRA or , or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Rather, the only evidence of Respondent’s identity is the WhoIs record identifying Respondent as Daniel Santos, and the only evidence of how the disputed domain name is being used indicates that it is being used to sell products that compete with Complainant’s VIAGRA product, without Complainant’s authorization.
These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See, e.g., Pfizer Inc v. CheapViagraStore,WIPO Case No. D2005-0159 (“Many Panels have concluded that it is not a legitimate use of the trademark to use it in a domain name to attract customers and re-direct them to competing products.”); Pfizer Inc. v. Alex Schreiner/ Schreiner & Co.,WIPO Case No. D2004-0731; Philip Morris USA Inc. v. Moniker Privacy Services / Adam Feinberg,WIPO Case No. D2014-0914 (“The sale of commercial products using complainant’s trademark typically is not considered ‘bona fide’ or ‘legitimate’ or ‘fair’ for purposes of paragraph 4(a)(ii).”); Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED,WIPO Case No. D2008-1483 (“The use of the disputed domain name in connection with a website that offers pharmaceutical drugs for sale appears to be designed to trade on the goodwill associated with Complainant's trademark. Such use is not considered a bona fide or a fair use under the Policy”); Marriott International, Inc. v. Thomas, Burstein & Miller,WIPO Case No. D2000-0610 (“No evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that the Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.”); Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word ‘telstra’ appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.”).
Accordingly, the Panel finds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). As set forth in the Policy, paragraph 4(b):
“[T]he 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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Complainant asserts that paragraph 4(b)(iv) of the Policy is met in that the VIAGRA mark allegedly is famous, and Respondent allegedly registered the disputed domain name to capitalize on the value of the VIAGRA mark by selling competing products to users who are confused as to the affiliation of Respondent’s website with Complainant’s VIAGRA mark. Respondent has not presented any evidence to the contrary. Accordingly, the Panel agrees with the other panels that have held – in the specific context of Complainant’s VIAGRA mark – that such actions constitute bad faith registration and use. See, e.g., Pfizer Inc. v. Premium Registration Service / Mooney James,WIPO Case No. D2013-1771 (“Respondent has registered and is using the Domain Name intentionally to misdirect and divert customers looking for information about the Complainant and its VIAGRA product to a commercial website that profits from an online pharmacy that offers third-party products, including products that compete with genuine VIAGRA product. 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 online retailers to which that site links, and the non-Complainant products sold on those sites. Use of a complainant’s mark to generate visitors to such a for-profit site constitutes bad faith”); Pfizer Inc. v. Jeff Ferris,WIPO Case No. D2006-1242 (“There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. … Under paragraph 4(b)(iv) of the Policy, bad faith use of a domain name exists where the name is intentionally used to attract Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the products promoted on the website.”); Pfizer Inc. v. Vartan Seferian,WIPO Case No. D2001-0316 (“the Panel finds evidence of the requisite ‘bad faith’ registration and use of the domain name. 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.”).
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is 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 Complainant.
Bradley A. Slutsky
Sole Panelist
Date: November 21, 2016
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