|Beklagter||Order Viagra Online|
|Entscheider||Michaelson, Peter L.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Order Viagra Online
Case No. D2002-0366
1. The Parties
The Complainant is Pfizer Inc, a corporation of the State of Delaware, United States of America, having a principal place of business at 150 East 42nd Street, New York, New York 10017, United States of America.
The Respondent is Order Viagra Online located at 160 C. Donahue Street, #122 Sausalito, California 94965, United States of America.
2. The Domain Name and Registrar
The Contested Domain Name is <tryviagra.com>.
The Registrar is Dotster, Inc. ("Dotster") located at 11807 Northeast 99th Street, Suite 1100, Vancouver, Washington 98682, United States of America.
3. Procedural History
The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy"), which was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved on October 24, 1999 and in accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") as approved on October 24, 1999 and by the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 ("the Supplemental Rules").
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") in e-mail form on April 18, 2002, and in hard-copy form on April 24, 2002 along with Annexes 1-14 and the appropriate payment.
The Complainant's attorney stated that, on April 18, 2002, he served a copy of the Complaint itself together with a copy of the cover sheet, on the Respondent and the Registrar by first class mail, and on the Registrar, presumably without the annexes, by email.
Pursuant to paragraph 4(d) of the Policy, the Complainant selected the Center as the ICANN approved administrative dispute resolution service provider to administer this proceeding. Through the Complaint, the Complainant requested a single person panel.
After receiving the original Complaint, the Center, in accordance with paragraph 5 of the Supplemental Rules, determined whether the Complaint fully complied with the formal requirements of the Rules and the Supplemental Rules. In that regard, on April 24, 2002, the Center requested confirmation from the Registrar of information set forth in the Complaint relative to the contested domain name; specifically, contact and registrant information for that domain name, as well as whether the Registrar received a copy of the Complaint from the Complainant. The Center also requested the Registrar to specify: (a) whether the ICANN Policy applies to the contested domain name, (b) the current status of that domain name, and (c) whether the registrant has submitted, in its registration agreement, to the jurisdiction at the location of the principal office of the registrar for court adjudication of disputes concerning or arising from the use of the domain name.
Subsequently, on April 25, 2002, the Registrar provided its response to the Center through which the Registrar provided contact information pertinent to the contested domain name from its WHOIS database, confirmed that Dotster is the registrar of that name, stated that the language of the registration agreement is English, and stated that the domain name was then in an "active" status. The Registrar also informed the Center that the Respondent, through its registration agreement, submitted to the jurisdiction at the location of the principal office of the Registrar and also at location of the residence of the domain name holder for court adjudication of disputes concerning or arising from the use of the domain name.
On April 29, 2002, the Center notified the Respondent of the filing of the Complaint, including an indication that the Center was forwarding a complete copy of the Complaint, both in email and hard-copy form, to the Respondent (with the latter method forwarding a copy of all the annexes as well). The Complaint, and its accompanying documents, and all subsequent communications associated therewith were provided in the preferred manners and to the addresses as mandated by paragraphs 2(a), 2(b) and 4(a) of the Rules.
Hence, the notification to the Respondent having occurred on April 29, 2002, under paragraph 4(c) of the ICANN Policy, this administrative proceeding is deemed to have commenced on that date.
Having reviewed the Complaint and succeeding correspondence between the Center and the Registrar, in detail, the Panel agrees with the determination of the Center that the Complaint and its handling met the requirements of the Rules and the Supplemental Rules.
The Respondent was then provided with a 20 calendar day period, expiring on May 19, 2002 to file its Response with the Center and serve a copy of the Response on the Complainant.
As of May 19, 2002, the Center had not received a substantive response to the Complaint from the Respondent; hence, the Center, in an email letter dated May 22, 2002, notified the Complainant and the Respondent of the Respondent's default.
Accordingly, pursuant to the Rules and Supplemental Rules, by email letter dated July 2, 2002, the Center contacted the undersigned, Mr. Peter L. Michaelson, Esq., requesting his service as a sole panelist for this dispute. Subsequently, on July 3, 2002, Mr. Michaelson accepted and returned, by facsimile to the Center, a fully executed Statement of Acceptance and Declaration of Impartiality and Independence. The Center, through an email letter dated July 4, 2002, notified the parties of the appointment of Mr. Michaelson as sole panelist.
Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel to the Center on or before July 18, 2002.
This dispute concerns one domain name, specifically: <tryviagra.com>.
The language of this proceeding is English.
4. Factual Background
A copy of the WHOIS registration record for the contested domain name appears in Annex 1 to the Complaint. As indicated on this record, the Respondent registered this name with Dotster on September 4, 2001.
A. "Viagra" Marks
The Complainant owns a single United States registration and various foreign trademark registrations and applications for the mark "VIAGRA" (collectively the "Viagra" Marks) on which this dispute is based. The Complainant has provided, in Annex 3 to the Complaint, a copy of its United States registration and, in Annex 4, a listing of all its "Viagra" Marks, both in the United States and overseas. Salient details of the United States registration are as follows:
a) VIAGRA (block letters)
US registration 2,162,548; registered June 2, 1998
This mark was registered for use in connection with: "Compound for treating erectile dysfunction" in international class 5. This mark claims first use and first use in inter-state commerce of April 6, 1988.
B. The Complainant's activities
The Complainant is a global, research-based company that discovers, develops, manufactures and markets leading prescription medicines for humans and animals and many of the worlds best-known consumer products. The Complainant has expended millions of dollars and extensive resources on the 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 availability of the Complainant's VIAGRA® (sildenafil citrate) represents a major medical breakthrough for treating this condition.
The Complainant's VIAGRA® (sildenafil citrate) for erectile dysfunction was approved by the United States Food and Drug Administration ("FDA") on March 27, 1998. The Complainant has used its "VIAGRA" mark on or in connection with the sildenafil citrate product in the United States since April 6, 1998.
Sildenafil citrate is marketed in the United States and around the world exclusively under the Complainant's VIAGRA Marks. 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 FDA 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. By virtue of this extensive publicity, and the Complainant's own post-approval advertising and promotion, the Complainant's VIAGRA mark has become famous throughout the world generally, and especially in the United States, as designating the Complainant's brand of oral medication for erectile dysfunction.
The Complainant's VIAGRA mark is a coined and fanciful term having no denotative meaning. The VIAGRA mark is universally recognized and relied upon as identifying the Complainant as the sole source of its product and as distinguishing the Complainant's product from the goods and services of others. As a result, the VIAGRA Marks have acquired substantial goodwill and are extremely valuable commercial assets to the Complainant.
C. The Respondent's activities
The Respondent has made no use of the contested domain name since the date of its registration.
5. Parties Contentions
The Complainant contends that the contested domain name is identical or confusingly similar to the Complainant's mark "VIAGRA".
Specifically, the Complainant contends that the contested domain name <tryviagra.com>: wholly incorporates the Complainant's VIAGRA mark; is identical to the VIAGRA mark but for the additional common word try; and is confusingly similar to the Complainant's use of its VIAGRA mark.
In that regard, the Complainant takes the position that the addition, in the contested domain name, of a common term, here being "try", preceding its VIAGRA mark does not either create a new or different mark in which the Respondent has rights or is sufficient to avoid confusion. Hence, the Complainant contends that use of the contested domain name will likely lead to consumer confusion over sponsorship or origin of any web site to which the contested domain name might resolve.
Therefore, the Complainant concludes that it has met the confusing similarity/identicality requirement in paragraph 4(a)(i) of the Policy.
The Complainant contends that, for several reasons, the Respondent has no rights or legitimate interests in the contested domain name pursuant to paragraph 4(a)(ii) of the Policy.
First, the Complainant states the Respondent is not and never has been affiliated with, approved by, or sponsored by Complainant, nor is the Respondent licensed to use the VIAGRA mark. Upon information and belief, neither the Respondent nor Respondents business is commonly known by the name "tryviagra." Accordingly, the Complainant contends that the Respondent has no legitimate justification for having registered Complainant's trademark as a domain name, and has no apparent use for the domain name other than to profit in bad faith from the goodwill and fame of Complainants VIAGRA mark.
Second, the Complainant believes that Respondent passively holds the contested domain name and currently offers neither goods nor services through a web site. The Complainant contends that the Respondents passive holding of the domain name does not constitute a legitimate or fair use of the domain name.
Third, the Complainant contends that any use which the Respondent might make of the contested domain name containing the Complainant's VIAGRA mark would likely be to divert consumers to the Respondents web site and, by doing so, create an impression that the Respondent offers products or services associated with or sponsored by the Complainant. The Complainant contends that such a use would be illegitimate.
Lastly, the Complainant contends that there is no evidence of record that the Respondent is making a legitimate noncommercial or fair use of the contested domain name without intent for commercial gain.
Thus, the Complainant concludes that the Respondent has no rights or legitimate interests in the contested domain name pursuant to paragraph 4(a)(ii) of the Policy.
iii. Bad Faith
The Complainant contends that, also for various reasons, the Respondent has registered and is now using the contested domain name in bad faith.
As to bad faith registration, the Complainant contends that, given the notoriety of the VIAGRA mark and the fact that the Complainant's adoption, use and federal registration of that mark preceded the September 4, 2001 registration of the contested domain name by the Respondent, the Respondent, in common with the public, was well aware of the vast and valuable goodwill and reputation represented and symbolized by that mark.
Hence, the Complainant asserts that it is "inconceivable that Respondent is not aware that the VIAGRA mark, as used by Complainant, is recognized and relied upon by medical professionals and patients and the public throughout the United States and the world as identifying and distinguishing Complainant's product from the products of others."
The Complainant currently has registered and utilizes the domain name <viagra.com> as an address of its own web site. Recognizing both the fanciful and distinctive quality of the term "VIAGRA" and the value of the Internet to the Complainant in augmenting its ability to communicate with its customers and potential customers, the Complainant contends that the Respondent registered the contested domain name simply with the intent to profit from that registration and to blatantly use the term "tryviagra", which fully incorporates the Complainant's VIAGRA mark, to do so.
Moreover, the Complainant contends that the Respondent's bad faith registration is exemplified by the following:
(i) Complainants VIAGRA mark is an invented and coined mark that has a strong worldwide reputation;
(ii) although the Respondent clearly knew or should have known of the Complainant's registration and use of the VIAGRA mark prior to registering the contested domain name, the Respondent wholly incorporated that mark as a predominant and recognizable portion of the contested domain name <tryviagra.com> which was intended to and does mirror the Complainant's VIAGRA mark, but for the addition of a common term ("try");
(iii) the contested domain name <tryviagra.com> deliberately and misleadingly includes the Complainant's VIAGRA mark, which is legitimately used to identify the Complainant as the sole source of and to distinguish the Complainant's sildenafil citrate product from the goods and services of others; and is confusingly similar to the Complainant's VIAGRA mark;
(iv) because the Respondent has no rights or legitimate interests in the use of the contested domain name, and no product by that name is actually sold on the web site, it only follows that the Respondent registered the contested domain name for the illegitimate purpose of selling, renting, or otherwise transferring it to the Complainant, or to one of its competitors, for valuable consideration in excess of the domain name registrants out-of-pocket costs directly related to the domain name; and
(v) because the Respondent has no rights or legitimate interests in the use of contested domain name, it can be concluded that this name was registered to facilitate dilution, cybersquatting or infringement of the Complainant's VIAGRA mark throughout the United States and the world.
As to bad faith use, the Complainant contends that the Respondent, by passively maintaining the contested domain name <tryviagra.com>, has acted and continues to act intentionally, willfully and in bad faith with the intent to capitalize upon the Complainant's property rights and diminish the value of the VIAGRA mark and the Complainant's goodwill.
Further, the Complainant asserts that the Respondents actions are intentional, willful and in bad faith, and were committed with full knowledge of the ownership by the Complainant of the VIAGRA mark and the Complainant's exclusive rights to use and license that mark. As a direct consequence of the Respondents actions, the public will be misled as to the origin, sponsorship, or association of any products or services offered or sold, if any, on a web site accessible through the contested domain name.
Therefore, the Complainant concludes that the Respondent' conduct constitutes bad faith registration and use under paragraph 4(a)(iii) of the Policy.
The Respondent has not filed any response to the allegations raised in the Complaint.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant's undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.
The Panel finds that confusion would unquestionably and inevitably arise -- and in fact is so intended -- whenever the Respondent were to begin using the contested domain name as an address of a web site. Further, the Panel can conceive of no situation where confusion would not likely arise when and if any third-party not affiliated with the Complainant, to which the Respondent were to transfer the contested domain name, were to use that name with a web site offering a pharmaceutical drug identical and/or similar to that provided by the Complainant under its VIAGRA mark.
There can be no doubt that the Respondent in appending the word "try" to the mark VIAGRA to form the contested domain name did so with an intent to cause and opportunistically exploit inevitable user confusion. There can be no question that this is the Respondent's goal. Otherwise, why would the Respondent have chosen a domain name that verbatim incorporates the Complainant's VIAGRA mark -- which itself is a coined word.
Such confusion would undoubtedly cause Internet users intending to access the Complainant's web site, but who reach a web site resolvable through the contested domain name, to think that an affiliation of some sort exists between the Complainant and the Respondent, when, in fact, no such relationship would exist at all. See, e.g., Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 (April 17, 2002); MPL Communications, Limited and MPL Communications, Inc. v. LOVEARTH.net, FA 97086 (Nat. Arb. Forum June 4, 2001); MPL Communications, Limited et al v. 1WebAddress.com, FA 97092 (Nat. Arb. Forum June 4, 2001); American Home Products Corp. v. Malgioglio, WIPO Case No. D2000-1602 (February 19, 2001); Surface Protection Indus., Inc. v. The Webposters, WIPO Case No. D2000-1613 (February 5, 2001); Dollar Financial Group, Inc. v. VQM NET, FA 96101 (Nat. Arb. Forum January 25, 2001); eBAY Inc. v. G L Liadis Computing, Ltd, WIPO Case No. D2000-1463 (January 10, 2001); Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum December 18, 2000); and The Pep Boys Manny, Moe and Jack of California v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000).
In view of the Complainant's substantial and widespread use of its VIAGRA mark in connection with its sildenafil citrate product, that mark has clearly become so distinctive, acquired such secondary meaning and hence fame to the point where a significant proportion of the world's population is likely to recognize that mark as signifying a specific, unique and widely recognized source of that product.
It is utterly inconceivable that, given this recognition, the Respondent was completely unaware of that mark and its reputation when it registered the contested domain name.
Therefore, the Panel finds that the contested domain name <tryviagra.com> sufficiently resembles the Complainant's "VIAGRA" mark as to cause confusion; hence, the Complainant has shown sufficient similarity between its mark and the contested domain name under paragraph 4(a)(i) of the Policy.
Certainly given its United States and foreign trademark registrations, the Complainant has acquired exclusive rights to use its "VIAGRA" Marks in conjunction with the goods which the Complainant has been providing under those marks. Furthermore, by virtue of having registered the "VIAGRA" mark, the US PTO has recognized that this mark has acquired requisite secondary meaning in the marketplace.
The Panel believes that the Respondent has yet to provide any basis that would legitimize any claim it has to the contested domain name. In fact, it is extremely unlikely that the Respondent can even make such a claim.
The simple reason is that the contested domain name contains the Complainant's mark "VIARGA" under which the Complainant provides its goods. Furthermore, the Complainant has never authorized the Respondent to utilize the mark "VIAGRA", or a mark confusingly similar thereto, in conjunction with the specific goods which the Complainant provides under that mark, nor does the Complainant have any relationship or association whatsoever with the Respondent.
Hence, any use to which the Respondent were to put the mark "VIAGRA" or a mark confusingly similar thereto, in connection with the pharmaceutical goods presently provided by the Complainant and set forth in any of the Complainant's registration would directly violate the exclusive trademark rights now residing in the Complainant. See, e.g., the MPL Communications, FA 97086 and FA 97092 decisions, cited supra; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000), and Treeforms, Inc. v. Cayne Ind. Sales Corp., cited supra.
It is eminently clear to this Panel that the Respondent, in choosing a domain name that at its essence completely incorporates the Complainant's "VIAGRA" mark and precedes it with the generic term "try", is intentionally seeking to create a confusingly similar name that opportunistically exploits Internet user confusion by diverting, through re-direction and diversion, Internet users away from the Complainant's site to the Respondent's web site for the latter's own pecuniary benefit. Specifically, those users could purchase the Complainant's products through the Respondent's web site and, by doing so, generate profit to the Respondent from those sales -- probably to the Complainant's ultimate detriment.
Such parasitic use, which at its essence relies on instigating and exacerbating user confusion, can not and does not constitute bona fide commercial or fair use sufficient to legitimize any rights and interests the Respondent might have in the contested domain name. See Peter Frampton v. Frampton Enterprises, Inc., cited supra.
Moreover, the Panel is cognizant of the heavy burden that would be placed on complainants if in support of their cases on illegitimacy each of those complainants were to be impressed with a burden of providing detailed proof of any lack of rights or legitimate interests on behalf of their respondents. The Panel believes that where allegations of illegitimacy are made, particularly as here, when coupled with conduct of a respondent that evidences bad faith, it is quite reasonable to shift the burden of proof to that respondent to adequately show that its use of the contested domain name is legitimate, such as by showing that, in conjunction with the contested domain name, it is making a bona fide commercial offering of goods or services or preparations for such offerings, or non-commercial or fair use. Given the situation now facing the Panel, it is beyond question that the Respondent's conduct here falls far short of meeting this burden -- particularly given that no facts have been proven to support such usage. See American Home Products Corp. v. Malgioglio, cited supra; Surface Protection Industries, Inc. v. The Webposters, cited supra; College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001); MSNBC Cable, LLC v. Tysys.com, WIPO Case No. D2000-1204 (December 8, 2000) and Playboy Enterprises International, Inc., WIPO Case No. D2000-1016 (November 7, 2000).
Further, the Panel finds, based on the record before it, that the Respondent has merely held the contested domain name passively. The Respondent's web site is not operational and the Panel infers that it never has been. Clearly, such passive use does not rise to a level, under paragraph 4(c) of the Policy, to constitute a legitimate non-commercial or fair use without any intent to misleadingly divert consumers or tarnish the trademark or service mark at issue. See American Home Products Corp. v. Malgioglio, cited supra.
In light of the above findings, the Panel is not persuaded that the Respondent has any or, based on current facts provided to the Panel, is likely to acquire any rights or legitimate interests in the contested domain name under any provision of paragraph 4(c) of the Policy.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the contested domain name within paragraph 4(a)(ii) of the Policy.
iii. Bad Faith
The Panel firmly believes that the Respondent's actions constitute bad faith registration and use of the contested domain name.
It is absolutely inconceivable to this Panel that, when the Respondent chose and registered the contested domain name in September 2001, it had not been fully aware of the Complainant's mark "VIAGRA" and particularly the widespread reputation which that mark had attained as a result of the Complainant's widespread marketing efforts for its sildenafil citrate product and the extensive resulting publicity.
Given this and particularly since the Respondent formed the contested domain name by simply prepending the common word "try" to the Complainant's well-known "VIAGRA" mark, the Panel infers, from the lack of any Response, that the Respondent's motivation in doing so was rather simple: to exploit inevitable user confusion as to source, sponsorship, affiliation or endorsement of any "VIAGRA" branded product, obtainable through any web site that the Respondent might eventually establish in conjunction with the contested domain name, as emanating from or associated with the Respondent rather than the Complainant or its authorized dispensing agents. Hence, the Panel views this action as constituting bad faith registration in violation of paragraph 4(b)(iv) of the Policy.
Furthermore, the Respondent has not used the domain name at all since its registration -- now approximately ten months ago -- but continues to retain it.
The lack of any operational web site resolvable through that name constitutes passive holding. Quite a few panels, including this one, have held that, under appropriate circumstances, passive holding evidences bad faith use. Such circumstances, when viewed in their totality, exist here. See, e.g., American Home Products Corporation vs. Malgioglio, cited supra; JVC Americas Corp. v. Damian Macafee, CPR007 (CPR November 10, 2000); Pacific Investment Management Co. LLC v. Alex Szabo FA95614 (Nat. Arb. Forum October 18, 2000); National Australia Bank Limited v. Quality Systems Consulting -- QSC Pty Ltd., WIPO Case No. D2000-0765 (August 31, 2000); Gonvarri Industrial, S.A. v. Gon Varr I An Sexo a Domicilio, WIPO Case No. D2000-0637 (August 28, 2000); Garage Records. Inc. v. Garage Records, FA95071 (Nat. Arb. Forum August 17, 2000); Dollar Financial Group, Inc. v. RXW Management, FA 95108 (Nat. Arb. Forum August 4, 2000); Lusomundo - Sociedada Gestora de Parcipacoes Sociais, S.A. and Lusomundo Audiovisuais, S.A. v. Inmo Soria and Andres Ceballos Moscoso, WIPO Case No. D2000-0523 (August 2, 2000); Valigene Corp. v. MIC, FA94860 (Nat. Arb. Forum August 1, 2000); Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA95095 (Nat. Arb. Forum July 31, 2000); Hewlett-Packard Co. v. High Performance Networks, Inc., FA95083 (Nat. Arb. Forum July 31, 2000); CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400 (July 6, 2000); August Storck KG v. Tony Mohamed, WIPO Case No. D2000-0196 (May 3, 2000); Recordati S.P.A. v. Domain Name Clearing Co., WIPO Case No. D2000-0194 (July 21, 2000); Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172 (April 20, 2000); and Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
Thus, the Panel concludes that the Complainant has provided sufficient proof of its allegations to establish a prima facie case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel now grants the relief sought by the Complainant.
The contested domain name, specifically <tryviagra.com>, is ordered transferred to the Complainant.
Peter L. Michaelson, Esq.
Dated: July 11, 2002