WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. David Lavery
Case No. D2004-0581
1. The Parties
Complainant is Pfizer Inc., New York, New York of United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
Respondent is David Lavery, Barrie, Ontario, of Canada.
2. The Domain Name and Registrar
The disputed domain name <1viagra.com> (the “Domain Name”) is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on August 2, 2004. On August 3, 2004, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the Domain Name. On August 5, 2004, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Complainant filed an amendment to the Complaint on August 5, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on August 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August26,2004. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2004.
The Center appointed Anna Carabelli as Sole Panelist in this matter on September8,2004, indicating that, absent exceptional circumstances, the decision would be due by September 22, 2004.
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 multinational pharmaceutical corporation engaged, amongst other, in the development, manufacture and marketing of prescription medicines for humans and animals. Complainant’s products include sildenafil citrate, an oral medication for the treatment of erectile dysfunction, marketed under the trademark “VIAGRA”.
Complainant has provided evidence of trademark registrations for the word “VIAGRA” in the United States (Registration No. 2,162,584 dated June 2, 1998 -see Annex 3) and in many other countries, including Canada (see Annex 4), owned by Complainant or by its wholly owned subsidiaries.
According to the US certificate of registration, the first use of the trademark in commerce was April 6, 1998.
The VIAGRA medication was approved by the United States Food and Drug Administration (FDA) in March 1998.
In June 1997, Complainant registered the domain name <viagra.com> (Annex 5) and maintains an active web site at the URL “www.viagra.com”.
Respondent registered the Domain Name on May 2, 2003 (Annex 1).
As shown by the print out of relevant pages of the web site to which the Domain Name resolves (Annex 6), Respondent advertises and sells, along with information about Complainant’s “VIAGRA” medication, less expensive products used for erectile dysfunction treatments containing the same active ingredient found in Pfizer’s Viagra medication (sildenafil citrate):”Generic Viagra”, “Generic Cialis”, “Veega”, “Caverta”, “Generic Levitra”. Respondent compares “Generic Viagra” to Pfizer’s Viagra medication emphasizing that the only difference “lies in the packaging and, most importantly, the price”, saving up to 50%.
Moreover, Respondent provides a link to an online pharmacy at, “www.generix4u.com” (“Online Drugstore for Generic prescription drugs”), that offers on its web site (Annex 7) not only generic versions of drugs, but also the possibility to join its affiliate program that offers commissions up to 30% on product sales.
5. Parties’ Contentions
Complainant contends that:
- the VIAGRA medication has attracted enormous media attention even prior to FDA approval which was also highly publicized and subject to public scrutiny and commentary;
- by virtue of this extensive publicity and post-approval advertising and promotion, the VIAGRA trademark has become famous worldwide as designating Complainant’s brand of oral therapy for erectile dysfunction and is to be considered as an extremely valuable commercial asset;
- the VIAGRA trademark is a coined and fanciful term having no denotative meaning;
- the Domain Name wholly incorporates Complainant’s trademark with the addition of the number “1”;
- the Domain Name is confusingly similar with Complainant’s trademark since a common term or number preceding or following a trademark does not create a new or different mark in which Respondent has right;
- Respondent has no rights or legitimate interest in the Domain Name;
- in particular, Respondent is not and never has been a representative of Complainant or licensed to use the VIAGRA trademark; further more Respondent is not commonly known by the Domain Name;
- Respondent’s use of the Domain Name to advertise and sell an alleged generic version of VIAGRA does not constitute a use in connection with a bona fide offering of goods and services;
- Respondent registered and has been using the Domain Name in bad faith;
- Respondent clearly had knowledge of Complainant’s famous trademark prior to registration of the Domain Name;
- by taking Complainant’s trademark as his domain name, Respondent is attempting to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant’s trademark as to source, sponsorship, affiliation or endorsement;
- Respondent currently provides a direct link to supplier’s online pharmacy that sells sildenafil citrate products at, “www.generix4u.com”. According to the “Affiliates” page of the “www.generix4u.com” web site, web site owners who direct consumers to “www.generix4u.com” earn up to 30% commission; it therefore follows that Respondent is using the Domain Name for the purpose of directing consumers to the “www.generix4u.com” web site in order to earn such commissions and to disrupt Complainant’s business.
In support of its contentions Complainant refers to a number of factors and to previous Panel decisions.
Consequently, Complainant requests the transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by the respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
In the Panel’s view it is beyond dispute that Complainant has trademark rights in the “VIAGRA” name which is an invented word with a high degree of inherent distinctiveness and is well known in respect of a drug addressing erectile dysfunction (Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870; Pfizer Inc. v. Martin Marketing, WIPO Case No. D2003-0793; Pfizer Inc. v. Jason Haft, WIPO Case No. D2003-0133; Pfizer Inc. v. myviagra, WIPO Case No. D2002-0463; Pfizer Inc. v. Order Viagra Online, WIPO Case No. D2002-0366).
The Domain Name entirely incorporates Complainant’s trademark “VIAGRA” with the addition of the number “1”.
It is an established principle that the mere addition of a common term or number does not create a different trademark in which Respondent has rights and cannot be considered sufficient to avoid confusion between the Domain Name and Complainant’s trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464;).
In the light of the above and of the fact that the addition of the gTLD .com has no legal significance when comparing the Domain Name and Complainant’s trademark, the Panel finds that this element has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.
Complainant has provided evidence of its rights in the trademark for the term “VIAGRA” and that the Domain Name was registered by Respondent on or about May 2, 2003. Based on Complainant’s submissions, the Panel considers that at that time Complainant had acquired a considerable reputation throughout the world for the “VIAGRA” mark in respect of a drug addressing erectile dysfunction.
Complainant also contends that Respondent is not and never has been a representative of Complainant or licensed to use the VIAGRA trademark and that he is not commonly known by the Domain Name.
Complainant further contends that Respondent’s use of the Domain Name to advertise and sell an alleged generic version of VIAGRA does not constitute a use in connection with a bona fide offering of goods and services. Respondent’s web site provides links to an online pharmacy at, “www.generix4u.com” (Online Drugstore for Generic prescription drugs) that offers on its web site (Annex 7) both generic versions of drugs and the possibility to join its affiliate program that offers commissions up to 30% on product sales. In line with previous WIPO decisions (Chanel Inc. v.Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774) the Panel considers that no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar with Complainant’s trademark and is used in connection with the promotion and sale of competing products.
In the light of the above, Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many UDRP decisions, in such a case the burden of proof shifts to the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
Because Respondent has failed to submit an answer to the Complaint, and given that the allegations of the Complaint prima facie do not raise substantial doubts, the Sole Panelist accepts as true all allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel is convinced that Respondent registered and has been using the Domain Name in bad faith, to intentionally attract for commercial gain Internet users to his web site by trading on the goodwill associated with the VIAGRA brand and mark and creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site and of the products and services offered on the site (paragraph 4(b)(iv) of the Policy).
As mentioned in paragraph 6(A) above, Complainant’s trademark “VIAGRA” has acquired worldwide reputation, identifying the sildenafil citrate pharmaceutical product developed, manufactured and marketed by Complainant. It is therefore inconceivable that Respondent registered the Domain Name unaware of Complainant’s rights in its VIAGRA mark and with an intent to use it in good faith. Respondent appears rather to have intentionally registered the Domain Name entirely incorporating Complainant’s mark, to take advantage of the goodwill associated with the VIAGRA trademark.
Furthermore, the printout of the relevant pages of Respondent’s web site “www.1viagra.com” (Annex 6) shows that Respondent has been using the Domain Name (i) to promote and sell sildenafil citrate pharmaceutical products for erectile dysfunction treatments, along with information about the genuine VIAGRA-branded sildenafil citrate that originates from Complainant; and (ii) to provide, for commercial gain, a link to his supplier’s online pharmacy that grants its affiliates up to 30% commission on product sales.
This is further evidence of Respondent’s bad faith registration and use of the Domain Name under paragraph 4(b)(iii) of the Policy (Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Liu Xingdong, WIPO Case No. D2003-0408; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; The Body Shop International plc v. A-Team/ Lasse Nygaard, WIPO Case No. DAS2003-0001; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177).
In addition, the fact that Respondent’s web site is affiliated with an online pharmacy, which promises up to 30% commission for each sale made with any Internet user captured through the affiliates’ web sites (Annex 7), shows Respondent’s intent, for commercial gain, to re-direct Internet users, especially potential customers of Complainant, from the latter’s web site to an online drugstore, located at “www.generix4u.com”, which directly competes with Complainant. As the Panel found in NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768, “the registration and use of a domain name to re-direct Internet users to web sites of competing organizations constituted bad faith use and registration” (see also Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037, E.R. Squibb & Sons LLC. v. Roy Duke, WIPO Case No. D2003-0806).
For all the foregoing reasons, the Panel orders, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, that the Domain Name <1viagra.com> be transferred to Complainant.
Dated: September 22, 2004