Complainant is Pfizer Inc. of New York, New York, United States of America ("United States" or "US"), represented by Kaye Scholer, LLP, United States.
Respondent is Graeme Purdy of Hemel Hempstead, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , and are registered with GoD, LLC. The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 22, 2016. On November 22, 2016, the Center transmitted by email to GoD, LLC and F (the "Registrars") a request for registrar verification in connection with the disputed domain names. On November 23, 2016 and November 26, 2016, the Registrars transmitted by email respectively to the Center their verification responses 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 November 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2016. The Center notified Respondent's default on December 19, 2016.
On December 19, 2016, emails were received from the Parties. On December 20, 2016, the Center acknowledged receipt of these emails indicating that the Center would proceed with panel appointment and that the panel upon appointment will decide in its sole discretion whether to consider any response (if submitted later) in deciding the case.
The Center appointed Roberto Bianchi as the sole panelist in this matter on December 22, 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 leading pharmaceutical company operating in numerous countries.
Complainant owns United States trademark registration for VIAGRA, Registration No. 2162548, Registration Date June 2, 1998, filed on April 12, 1996, covering a compound for treating erectile dysfunction in International Class 5. First use in commerce April 6, 1998.
In addition, Complainant and its affiliates own trademark registrations for the VIAGRA mark in numerous countries worldwide, including in the UK, Respondent's country of residence. In particular, Pfizer Products Inc. (an affiliate to Complainant) owns a trademark registration in the United Kingdom for VIAGRA, Registration No. 2048286, Registration Date August 16, 1996, filed on December 11, 1995, renewed on December 11, 2005, covering pharmaceutical and veterinary preparations and substances in International Class 5.
The disputed domain name was registered on October 31, 2000.
The disputed domain names , , , , , , , , and were registered on February 28, 2015.
The disputed domain name was registered on March 15, 2015.
Currently, the disputed domain name resolves to a website, on which under the title, "Buy This Domain", the following "Sponsored Listings" are displayed: "Buy Viagra online", "Viagra 100 mg, "Viagra SIDE Effects", "Purchase Viagra online", "Viagra", "Direct to", and "Buy Viagra Online". These links re-direct to websites offering third-party products and services, such as a free course of English, a treatment of sexual ailments, a fishing expedition in Brazil, etcetera. The disputed domain names , , , , , , , , and resolve to a website showing a tombstone, stating, "Website coming soon! Please check back soon to see if the site is available." A browser's search for the disputed domain name delivers the following error message: "Not Found HTTP Error 404. The requested resource is not found". 5. Parties' Contentions A. Complainant
Complainant contends as follows:
Complainant's VIAGRA trademark is a coined and fanciful mark having no denotative meaning. This trademark is universally recognized as identifying Pfizer as the sole source of the drug, and as distinguishing Pfizer'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.
The disputed domain names are identical or confusingly similar to Complainant's VIAGRA trademark. Each of the disputed domain names, (1) consists solely of the famous and well-known VIAGRA mark, combined with the generic term "direct," either in English or in a foreign language and a Top-Level Domain, (2) is confusingly similar to Complainant's own domain name , at which Complainant operates a website, and (3) is so clearly similar to Complainant's VIAGRA marks that it is likely to cause confusion among Complainant's customers and the consuming public. Since the disputed domain names consist solely of the famous VIAGRA mark, combined with generic terms, it cannot be disputed that the domain names are identical and confusingly similar to Complainant's mark.
Respondent has no rights or legitimate interests. Complainant is not affiliated in any way with Respondent and has never authorized Respondent to register or use the disputed domain names or the VIAGRA mark. Respondent has no right or legitimate interest in the VIAGRA mark (or any variant spelling) or in the disputed domain names. Upon information and belief, Respondent is not commonly known by the name "viagra," "viagradirect", or any variation thereof.
Complainant's adoption and registration of the mark VIAGRA in the United States and throughout the world precedes Respondent's registration of the disputed domain names. Given the widespread publicity and fame of the VIAGRA mark and given Respondent's incorporation of Complainant's VIAGRA mark in the disputed domain names (and in numerous other domain names registered by Respondent), it is indisputable that Respondent had knowledge of Complainant's famous VIAGRA mark prior to the registration of the disputed domain names. See below and in Annex 8 to the Complaint references to VIAGRA medicine on Respondent's website at "www.m".
Respondent's use of the disputed domain names confirms that it is not making a legitimate noncommercial or fair use of the domain names without intent for commercial gain. Rather, Respondent has intentionally registered the disputed domain names explicitly for the purpose of making illegitimate or unfair use of Pfizer's mark, as evidenced by using the disputed domain name for "Sponsored Listings" to commercial websites (including websites that sell generic sildenafil), by offering the domain name for sale and by preventing Complainant from registering the domain name itself.
Respondent cannot disavow responsibility for the "Sponsored Listings" on his website, offering for sale, inter alia, products competing with Pfizer's genuine VIAGRA product. Moreover, Respondent is warehousing most of the disputed domain names, by holding them and using them for holding pages. UDRP panels have repeatedly held that even the passive holding or warehousing of a domain name that is confusingly similar to a well-known mark is not a legitimate or noncommercial fair use.
Respondent has registered and is using the disputed domain names in bad faith. Respondent's lack of rights or legitimate interest in the use of the disputed domain name renders the issue of bad faith registration unnecessary to even be considered. Moreover, Respondent's bad faith use of a domain name is determined, not by whether Respondent is making a positive action in bad faith, but instead whether all of the other circumstances of the case indicate bad faith by Respondent. See Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Respondent's bad faith is confirmed by the following facts: (a) Respondent registered at least one of the disputed domain names for the purpose of selling it for a substantial profit; (b) Respondent has used one of the disputed domain names to display "Sponsored Listings" that direct visitors to third-party sites, some of which sell non-Pfizer products and even products that compete with VIAGRA medicine; (c) Respondent registered the disputed domain names with at least constructive knowledge of Pfizer's more than 150 registrations of the mark VIAGRA; (d) Respondent is warehousing seven of the disputed domain names; and (d) Respondent is a serial cybersquatter who has engaged in a pattern of registering and using domain names that contain the famous VIAGRA mark. Respondent – who has never used any of the disputed domain names in connection with the bona fide offering of goods or services – offers the domain name for sale (Annex 7 "Buy this domain"). See EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036 (posting the notice "DOMAIN FOR SALE" without a fixed asking price constituted satisfactory evidence, when combined with respondent's lack of legitimate rights or interests in the domain name, that Respondent's primary purpose in registering the domain was to sell it in contravention of the policy).
Respondent's use of the domain name to host "Sponsored Links" also demonstrates bad faith. As used by Pfizer, 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 Pfizer and its erectile dysfunction medication from the goods and services of others. Respondent is not, nor ever has been, a representative of Pfizer or licensed to use the VIAGRA mark. Respondent is well aware of the goodwill and reputation represented and symbolized by the VIAGRA trademark. Respondent, recognizing the world famous renown of the VIAGRA mark, registered and uses the domain name, which wholly incorporates Pfizer's VIAGRA mark, so as to attract and mislead web users who are searching for information about Pfizer and its VIAGRA product. Given the lack of a legitimate basis for such use of Pfizer's mark as a domain name, the only reasonable inference is that Respondent has acted with a bad faith intent to profit from Pfizer's name and reputation.
As set forth above, Respondent has registered and is using the domain name intentionally to misdirect and divert customers looking for information about Pfizer and its VIAGRA product to various for-profit websites, including a site that sells generic sildenafil as well as sites that promote other third-party products (e.g.,DirectTV). This creates a likelihood of confusion with Pfizer'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-Pfizer products sold on those sites.
Moreover, even Respondent's mere warehousing of the disputed domain names constitutes bad faith. In particular, Respondent has registered at least 17 other domain names that wholly incorporate the famous VIAGRA trademark. B. Respondent
On December 19, 2016, the same day that Respondent received the Center's Notice of Respondent Default, Respondent sent an email to the Center with copy to Complainant, stating the following:
"Dear Paul, Sorry I have not replied until now …I am currently away in the Maldives and do not get back to the UK until the 2nd January. I am about to point a lawyer to act on my behalf but I have been away, is it OK if I respond properly on the 3rd January 2017? Thanks. Graeme Purdy. Mob: +44 [xxxxxxxxxxxxxxxx]".
This was the only communication from Respondent in this proceeding. 6. Discussion and Findings A. Respondent's Request for Time Extension.
As seen above, on December 19, 2016, one day after the expiration of the deadline to respond to the Complaint, Respondent sent an email to the Center with copy to Complainant, asking whether it would be acceptable to properly respond to the Complaint on January 3, 2017. For its part, Complainant stated that it does not consent to an extension of time for the filing of the response since Respondent was notified of the Complaint on November 28, 2016, and provided no explanation for its failure even to request an extension. In addition, says Complainant, Respondent fails to demonstrate that any exceptional circumstances exist that warrant an extension under paragraph 5(e) of the Rules.
The Panel notes that with its request Respondent did not even attempt to mention any argument in support of an extension, apart from mentioning that he was in the Maldives.
The Panel reminds that these proceedings are of an expeditious nature. In the opinion of the Panel, the present situation differs from those cases where panels occasionally have accepted a late submission from respondent, where such submission was received after the deadline but before the appointment of the panel, and after concluding that such submission would not cause any relevant delay or any undue detriment to complainant. In the present case, however, granting Respondent's request would entail a significant delay in issuing the decision on the merits. Accordingly, under its general powers pursuant to Rules paragraph 10(a), and to ensure that the administrative proceeding takes place with due expedition, this being no exceptional case (Rules, paragraph 10(c)), the Panel denies Respondent's request for a time extension. C. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the trademark VIAGRA. See section 4 above.
The Panel notes that each of the disputed domain names incorporates the VIAGRA trademark in its entirety, just adding a generic and common term, plus a generic Top-Level Domain, and/or the country code Top-Level Domain ".co". The added generic term is "direct" or a variation or translation thereof ("diretta", "diretto" "directe" "directo", "direto"). It is well established that the addition of a generic term to a mark is inapt to distinguish the resulting domain name from the mark. In this case, such addition does not diminish the impression that the relevant element in each of the disputed domain names is the VIAGRA mark. Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant's mark. D. Rights or Legitimate Interests
Complainant contends that it is not affiliated in any way with Respondent and has never authorized Respondent to register or use the disputed domain names or the VIAGRA mark. In addition, Respondent is not commonly known by the name "viagra," "viagradirect", or any variation thereof. Given the widespread publicity and fame of the VIAGRA mark and Respondent's incorporation of Complainant's VIAGRA mark in the disputed domain names, it is indisputable that Respondent had knowledge of Complainant's famous VIAGRA mark prior to the registration of the disputed domain names. Respondent's use of the disputed domain names confirms that it is not making a legitimate noncommercial or fair use of the domain names without intent for commercial gain. Rather, Respondent has intentionally registered the disputed domain names explicitly for the purpose of making illegitimate or unfair use of Pfizer's mark, as evidenced by using the domain name for "Sponsored Listings" to commercial websites (including websites that sell generic sildenafil), by offering the domain name for sale and by preventing Complainant from registering the domain name itself. Respondent cannot disavow responsibility for the "Sponsored Listings" on his website, offering for sale, inter alia, products competing with Pfizer's genuine VIAGRA product. Moreover, Respondent is warehousing most of the disputed domain names, by holding them and using them for holding pages. UDRP panels have repeatedly held that even the passive holding or warehousing of a domain name that is confusingly similar to a well-known mark is not a legitimate or noncommercial fair use.
The Panel believes that the available evidence confirms Complainant's contentions. The disputed domain name resolves to a website where third-party services are being offered without any relationship to Complainant or Complainant's VIAGRA product. In fact, Respondent appears to be using Complainant's VIAGRA mark to lure Internet users to third-party websites offering services in competition with Complainant. This clearly is not a bona fide use of the domain name under Policy paragraph 4(c)(i) or a fair noncommercial use without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue under Policy paragraph 4(c)(iii). As to the rest of the disputed domain names, they are not being used at all: the website to which they resolve is nothing but a "coming soon" tombstone. In the case of the disputed domain name, there is not even a website. This discards the application of both Policy paragraphs 4(c)(i) and 4(c)(iii). Lastly, according to the corresponding WhoIs database, the name of Respondent is Graeme Purdy, and there is no evidence that Respondent is known by any of the disputed domain names, commonly or otherwise. This also discards the application of Policy paragraph 4(c)(ii).
In the opinion of the Panel, this suffices for Complainant to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. It is the consensus view of UDRP panels that once a complainant makes a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). In light of the above reasons, and since Respondent has not submitted any comments or evidence whatsoever in its own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain names. D. Registered and Used in Bad Faith
The Panel notes that Complainant's registration of the VIAGRA mark predates the registration of the disputed domain names by several years. See section 4 above. In addition, the Panel agrees with prior panels that Complainant's VIAGRA trademark is well-known worldwide. Further, the only website to which the disputed domain name resolves, shows "sponsored listing" clearly suggesting a relationship to Complainant's famous VIAGRA pharmaceutical product. As to the rest of the disputed domain names, they are variations of the domain name.
The Panel concludes that Respondent knew of, and targeted, Complainant's VIAGRA mark and products at the time of registering the disputed domain names. In the circumstances of this case, this means that the registration of the disputed domain names was in bad faith.
As to the use of the disputed domain names, the Panel notes that the disputed domain name presently resolves to a website displaying, under the title "Buy This Domain", the following "sponsored listings": "Buy Viagra online", "Viagra 100 mg", "Viagra SIDE Effects", "Purchase Viagra online", "Viagra", and "Direct To". These links redirect to websites offering various third-party products and services, such as a free course of English, a treatment for erectile problems, a fishing expedition in Brazil, etcetera. In the opinion of the Panel, this demonstrates that Complainant's mark VIAGRA is being used to generate click-through income from Internet users presumably looking for Complainants VIAGRA product. Thus, Respondent, by using the domain name as shown, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent`s website or location. This is evidence of registration and use in bad faith under Policy paragraph 4(b)(iv). In addition, the title of the website reads "Buy This Domain", which suggests that Respondent also registered the disputed domain name presumably to profit from its transfer to Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name, which is a circumstance of registration in bad faith pursuant to Policy paragraph 4(b)(i).
The Panel notes that the disputed domain names , , , , , , , , and resolve to a website merely showing a tombstone, stating, "Website coming soon! Please check back soon to see if the site is available." A search for the website to which the disputed domain name resolves delivered the following error message: "Not Found HTTP Error 404. The requested resource is not found".1 Given Respondent's use of the disputed domain name as shown above and the lack of any explanation from Respondent, the Panel believes that Respondent is unlikely to use the rest of the disputed domain names, also incorporating Complainant 's famous VIAGRA mark, other than in opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (" "VEUVECLICQUOT.ORG" is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.")
The Panel concludes that the disputed domain names were registered and are 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 names;
, be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: January 3, 2017
1 Results obtained on January 3, 2017 by the Panel during an independent browser's search for the websites at the disputed domain names.
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