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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. V. Enamecorp.com

Case No. D2001-0791

 

1. The Parties

The Complainant is Pfizer Inc., 235 East 42nd St. New York, NY 1001 USA.

The Respondent is Enamecorp.com 101-1213 Doklimjeilpark, 284 Wolsandong, Namku, Kwangju, Chonnam 503-233, Republic of Korea.

 

2. The Domain Name and Registrar

The Domain Name is <pfizre.com>.

The Registrar is DotRegistrar.com, Inc., 9032 NW 12th Street, Miami, Florida 33172 USA.

 

3. Procedural History

The Complainant e-mailed a complaint to the WIPO Arbitration and Mediation Center (the Center) on June 14, 2001, about the disputed domain name. On June 18, 2001, the Center received and acknowledged the complainant's hard copy submission and fee payment. The Center sought verification of the disputed domain name from DotRegistrar.com, Inc. on June 19, 2001. DotRegistrar.com, Inc. 's response was received on the same day identifying Enamecorp.com as the registrant of the disputed domain name not <esex.org> as shown in the Complainant's initial submission.

On June 20, 2001, the Center informed the Complainant of a deficiency in its submission regarding the registrant of the disputed domain name. The Complainant e-mailed an amended complaint to the Center on June 22, 2001, identifying Enamecorp.com as the registrant of the disputed domain name. The hard copy was received on June 26, 2001. The Complaint's submission as amended complied with the ICANN Rules and Supplementary Rules.

The Center communicated the complaint to the Respondent on June 27, 2001, by hard copy and e-mail and sent copies to the complainant, ICANN and DotRegistrar.com, Inc. The Center's communication informed the Respondent of the administrative procedure and that the last day for a response was July 16, 2001.

The Respondent defaulted by not sending a response by the due date.

Following an invitation from the Center to serve as a panelist, the Panel member submitted his Statement of Acceptance and Declaration of Impartiality and Independence to the Center on July 30, 2001, and was formally appointed on July 31, 2001.

The Panel has not received any additional submissions. The proceedings were conducted in English and the Panel's decision is scheduled to issue on August 14, 2001.

 

4. Factual Background

The Complainant is one of the largest pharmaceutical enterprises in the world with operations in 150 countries. It discovers, develops, manufactures and markets leading prescriptions for humans and animals, as well as, many of the world's best-known consumer products. The Complainant's expenditure on research, development and markets is greater than any other pharmaceutical company. In 2000, the Complainant reported $US 29.6 billion revenue with eight of its pharmaceutical products attaining sales of over $US 1 billion each.

The Complainant has nearly 500 registered trademarks for "Pfizer" which are registered in over 100 countries. Its earliest trademark registered in trademark class 5 in the Unites States was in 1948. The Complainant's trademark is well-known and is relied upon to identify the Complainant as the sole source of its pharmaceuticals, consumer health care products and animal health products and as distinguishing the Complainant and its products from other companies and the goods and services of others. The Pfizer trademark symbolises substantial goodwill and is an extremely valuable commercial asset to the Complainant.

The Respondent, located in Korea, registered the domain name <pfizre.com> on December 14, 2000.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is virtually identical to the "Pfizer" trademark, the only difference being that the last two letters in the word have been transposed.

- The domain name is confusingly similar to the Complainant's own domain name, trademark and trade name and is likely to cause confusion among the Complainant's customers.

- The Respondent has no legitimate justification for having registered the Complainant's trademark and has no apparent use for the domain name other than to profit in bad faith from the goodwill and fame of the Complainant's trademark.

- The Respondent has no legitimate use for a website with the domain name <pfizre.com>.

- The Complainant's adoption and use of the "pfizer" trademark precedes the Respondent's registration of the disputed domain name.

- It is inconceivable that the Respondent did not have knowledge of the Complainant's famous "pfizer" trademark prior to the registration of the disputed domain name.

- The Respondent is not and never has been a representative of the Complainant or licensed to use the "pfizer" trademark.

- The Respondent is intentionally diverting customers of the Complainant through the use of the disputed domain name which contains a common typo and which those customers might therefore enter by mistake.

- There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain.

- The Respondent is misleading and diverting the Complainant's customers to its website thereby creating the impression that it is in some way associated or sponsored by the Complainant.

- The Respondent, recognising the value of the Internet to the Complainant in augmenting its ability to communicate with its customers and potential customers, registered the disputed domain name with the bad faith intent to profit from such registration and blatantly used the term "pfizre" which is virtually identical to the Complainant's trademark.

- The Respondent has deliberately registered a domain name with only a minor spelling variant, known as "typosquatting", to the well-known "pfizer" trademark in order to confuse consumers.

- The Respondent was clearly aware of the "pfizer" trademark prior to the registration of the disputed domain name as is evidenced by the fact that the Respondent allegedly sells Pfizer products, along with products from other pharmaceutical companies, on the disputed website.

- The Respondent's domain name was intended and does mirror the Complainant's famous trademark.

- The Respondent's deliberate use of a common typo, the transposition of two letters in a word, indicates that the Respondent knew or should have known of the Complainant's registration and use of the trademark prior to registering the domain name.

- The disputed domain name is confusingly similar to the Complainant's corporate name, which is commonly used to identify Pfizer as a company as well as a wide variety of pharmaceutical, consumer and animal health care products and is confusingly similar to the Complainant's website.

- As the Respondent has no rights or legitimate interest in the use of the disputed domain name it only follows that it was registered for the illegitimate purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor for valuable consideration in excess of the registrant's out-of-pocket expenses directly related to the domain name.

- As the Respondent has no rights or legitimate interest in the use of the disputed domain name it can be concluded that the disputed domain name was registered to facilitate dilution, cybersquatting or infringement of the Complainant's trademark throughout the US and the world.

- By using the disputed domain name the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's site.

- The Respondent's actions are intentional, wilful and in bad faith, and were committed with the full knowledge of the ownership by the Complainant of the "pfizer" trademark and the Complainant's exclusive rights to use and license such trademark.

- As a direct consequence of the Respondent's actions the public will be misled as to the accuracy of the information provided or the origin, sponsorship, or association of the products offered or sold, if any, on the Respondent's website. The Respondent's purposefully deceptive domain name anticipates, relies upon and profits from this consumer confusion or mistake.

- In maintaining the domain name the Respondent has acted and continues to act intentionally, wilfully and in bad faith with the intent to capitalise upon the Complainant's property rights and diminish the value of the Complainant's trademark and goodwill.

- The Respondent's activities have caused, and will cause, the Complainant significant harm. Unless the disputed domain name is permanently transferred to the Complainant, the Respondent will persist in its unlawful activities thereby causing further harm and damage to the Complainant and the public interest.

B. Respondent

The Respondent failed to provide a response to the complainant's allegations.

 

6. Discussion and Findings

In accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, the Complainant must prove that: (i) the Respondent's domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent's domain name has been registered and is being used in bad faith

(i) the Respondent's domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The disputed domain name is <pfizre.com> and the relevant part differs by misspelling the Complainant's established trademark rights in the word "pfizer" by the transposition of the last two letters.

Disputed domain names with misspelled variations of trademarks have been held to be "confusingly similar" in many WIPO cases. For example, American Online Inc. v. John Zuccarini (WIPO Case No. D2000-1495), The Toronto-Dominion Bank v. Boris Karpachev (WIPO Case No. D2000-1571), Google Inc. v. Namerental.com and Leonard Bensonoff (WIPO Case No. D2001-0060) and Telstra Corporation Limited v. Kandasamy Mahelingam (WIPO Case No. D2000-0999). The American Online case well summarises the position taken on misspellings as "The mere addition of a minor misspelling…does not create a new or different mark in which the Respondent has rights. Instead it results in a domain name that is confusingly similar to the Complainant's mark".

In the Panel's view the word "pfizre" in the disputed domain name sounds the same as the Complainant's trademark. Also, the written word and its visual appearance are likely to cause confusion.

Based on this view and on the previous decisions dealing with misspellings the Panel finds the disputed domain name is confusingly similar to the Complainant's trademark.

(ii) the Respondent has no rights or legitimate interest in respect of the domain name.

Paragraph 4(c) of ICANN's Uniform Domain Name Dispute Resolution Policy sets out how a Respondent can demonstrate rights to and legitimate interest in the disputed domain name. The ways include, but are not limited to:

(i) "before any notice to you of the dispute, your 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) you (as an individual, business, or an organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights: or,

(iii) you are making a legitimate non-commercial 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".

Based on the information before the Panel none of the above ways of demonstrating rights to or legitimate interest in the disputed domain name could possibly be maintained by the Respondent. The Respondent registered its domain name well after the Complainant obtained rights in its trademark. There is no evidence that the Respondent is commonly known or has acquired rights in the domain name. The Complainant has stated that the Respondent is not a representative of the Complainant or licensed to use the Complainant's trademark. Finally, the Respondent's use of the disputed domain name deliberately diverts those Complainant's customers or those Internet users interested in the company's products who don't know the correct spelling or unintentionally make a typo when typing in the Complainant's mark or name. Consequently, no legitimate non-commercial or fair use of the domain name can be found.

According to the complaint the Respondent uses the disputed domain name to attract Internet users to the KwikMed website which promotes online orders for prescription drugs including the Complainant's well-known Viagra drug. The Complainant's trademark and trade name are both used on the website as well as a hotlink to the Complainant's website for those seeking further information on the Complainant's drug. The Complainant's case has close similarities to the Chanel, Inc. v. Estco Technology Group decision (WIPO Case No. D2000-0413) where the website itself provides information that is in the public domain but uses the Complainant's famous trademark to direct the public to the Respondent's website. What was stated in that case applies here, that is, the Respondent "may not use the Complainant's famous … trademark as a domain name to entice Internet users to its database. This is not fair use but instead infringing use".

Based on the evidence presented it is the Panel's view that the Respondent has no rights or legitimate interests to the disputed domain name.

(iii) the Respondent's domain name has been registered and is being used in bad faith.

For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The circumstances of paragraph 4(b) involve possible bad faith motives of: (1) selling, renting or otherwise transferring the domain name for valuable consideration, (2) preventing the trademark owner from having its trademark as a domain name (provided there is a pattern of such conduct), (3) disrupting the business of a competitor or (4) attracting Internet users to a website for commercial gain by creating confusion with the complainant's trademark.

In this case the last of the above bad faith motives is apparent, that is, attracting Internet users to a website for commercial gain by creating confusion with the complainant's trademark. There can be no doubt that the Respondent was aware of the Complainant's trademark and associated reputation when it registered the misspelling of the well-known trademark as a domain name. This is particularly evident when the website itself makes numerous correctly spelt references to the complainant's trademark, name and logo.

The Respondent's domain name misspelling of the Complainant's trademark is designed to confuse or take advantage of Internet users who do not know the correct spelling of the Complainant's mark or name or who mistype it. In Google Inc. v. Namerental.com and Leonard Bensonoff (WIPO Case No. D2001-0060) the Panelist found that a minor spelling variant to a well-known mark, without any explanation, alone creates a prima facie inference of bad faith. Similarly, in AltaVista Company v. Saeid Yomtobian (WIPO Case No. D2000-0937) the Panelist found "the use of misspellings alone is sufficient too prove bad faith under paragraph 4 (b)(iv) of the [ICANN] policy because the Respondent has used these names intentionally to attract, for commercial gain, Intenet users to his website by making a likelihood of confusion with the Complainant's mark". As in the Google and AltaVista cases no evidence to overcome the bad faith registration and use inference has been submitted to the Panel.

In the Panel's view the distinctiveness and reputation of the Complainant's well-known trademark, the fact that it has no specific meaning and the improbability of the Respondent coming up with the name independently to attract Internet users to a website selling pharmaceutical prescriptions provides no obvious explanation other than the registration and use was made in bad faith with the intent to attract business to its site, disrupt the business of the Complainant and/or profit from the eventual sale of the domain name. Similar conclusions about opportunistic bad faith registration are found in numerous decisions, such as, Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028), Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), Charles Jourdan Holding AG v. AAIM (WIPO Case No. D2000-0403), Nintendo of America Inc v. Pokemon (WIPO Case No. D2000-1230), Neuberger Berman Inc v. Alfred Jacobsen (WIPO Case No. D2000-0323) and Telstra Corporation Limited v. Brett Micallef (WIPO Case No. D2000-0919).

Finally, the lack of a response to this complaint infers that the Respondent could not provide any good faith use of the domain name (see Encyclopaedia Britannica v. John Zuccarini WIPO Case No. D2000-0330 and eBay Inc. v. Sunho Hong WIPO Case No. D2000-1633).

In view of the evidence provided and the precedent found in similar cases the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

 

7. Decision

In accordance with the Policy, Rules and prior authority the Panel has decided that the disputed domain name is confusingly similar to the Complainant's trademark, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent's domain name has been registered and used in bad faith. Accordingly, the Panel requires the Registrar to transfer the disputed domain name from the Respondent to the Complainant.

 


 

Ross Wilson
Sole Panelist

Dated: August 10, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-0791.html

 

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