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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Myviagra / Wilbert Smith
Case No. D2002-0463
1. The Parties
The Complainant is Pfizer Inc. ("Complainant"). Complainant is incorporated in the State of Delaware, United States of America, and has its principal place of business in New York, New York, United States of America.
The Respondent is myviagra / Wilbert Smith ("Respondent"), with an address in Alabama, United States of America.
2. The Domain Names and Registrar
The Domain Name at issue is <myviagra.com> (the "Domain Name"), which is registered with eNom, Inc. of Redmond, Washington (the "Registrar").
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
A Complaint was submitted electronically to the Center on May 15, 2002. A hardcopy of the complaint along with the referenced exhibits was received on May 22, 2002. The Center acknowledged receipt of the Complaint on May 16, 2002. Registration details were sought from the Registrar on May 18, 2002, via e-mail. On May 22, 2002, by return e-mail, the Registrar verified that the Domain Name is registered to the Respondent, that the Domain Name is subject to the Policy, and that the Domain Name is currently active. On May 28, 2002, the Center conducted its review and verified that the complaint satisfies the formal requirements set out in the Policy, the Rules and the Supplemental Rules. On that same day, the Center informed Respondent that an administrative proceeding had been commenced against it and set the date for reply as June 17, 2002. The Respondent did not submit a response. On June 19, 2002, a Notification of Default was sent to the Respondent to the e-mail address provided by the Registrar. On July 11, 2002, having received a copy of the Mr. Arif Hyder Ali’s Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted a copy of the case file to Mr. Ali. The date of response was set for July 25, 2002.
4. Factual Background
Complainant is a pharmaceutical company with a focus on researching and developing new health care products. Complainant has a validly registered U.S. trademark for the term VIAGRA (the "Mark") used in connection with a medication for treating erectile dysfunction. The trademark registration (No. 2,162,548) was issued on June 2, 1998, by the United States Patent and Trademark Office. Complainant has highly publicized its product under the VIAGRA® trademark.
Respondent is apparently an organization named "myviagra." Respondent registered <myviagra.com> providing an individual named "Wilbert Smith" as the contact person, an e-mail address of "email@example.com", no telephone number, no facsimile number, and an address of "AL, 44444." Respondent registered <myviagra.com> on November 27, 2001. Currently, the Domain Name does not resolve to any active web-site.
5. Parties’ Contentions
A. The Complainant
Complainant states that Complainant is a "global research-based company that discovers, develops, manufactures and markets leading prescription medications or medicines for humans and animals and many of the world’s best known consumer products." Complainant describes that Complainant "has expended millions of dollars in extensive resources on the research, development and marketing of Viagra® brand sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction." Complainant asserts that VIAGRA® has been and continues to be highly publicized and that the Viagra trademark is famous throughout the world, especially in the United States. Further, Complainant states that the Viagra trademark has acquired substantial good will and is an extremely valuable commercial asset.
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s Mark. Complainant argues that the addition of the word "my" to the word "Viagra" does nothing to avoid confusion "over the sponsorship or origin of the web-site."
Complainant also contends that Respondent has no rights or legitimate interest in respect of the Domain Name because Respondent has no rights in the Domain Name by virtue of the Complainant, and Respondent’s only use of <myviagra.com> is passively holding it, which cannot be construed as a legitimate use.
Complainant last contends that Respondent registered and is using the name in bad faith because of, among other reasons, Respondent’s passive holding of the Domain Name and the notoriety of Complainant’s Mark.
Respondent did not submit a response.
6. Discussions and Findings
As a preliminary matter, the Panel finds that the Center’s formalities complaints review was performed correctly and that the Complaint and Notification of Respondent Default were properly notified to Respondent. The Panel finds that Respondent had proper notice of this administrative proceeding.
Paragraph 15(a) of the Rules provides the following instructions: "A Panel shall decide a complaint based on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any Rules in principle of law that are deemed applicable." As the Respondent did not submit a response, the Panel will render its decision based on prior WIPO decisions and the Complaint.
The Panel further notes the guidance provided in Paragraph 14(b) of the Rules: "If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
Paragraph 4(a) of the Policy directs that the burden is on the Complainant to establish each of the following elements:
(i) Respondent’s 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 interest in respect to the Domain Name; and
(iii) Respondent’s Domain Name has been registered and being used in bad faith.
Each of these elements is discussed below.
A. Similarities Between Complainant’s Trademarks and Respondent’s Domain Name
The Domain Name at issue is <myviagra.com>. Complainant has rights in the mark VIAGRA® as is evidenced by the United States Patent and Trademark Office registration for that mark issued on June 2, 1998. It is well established that an additional word – in this case "my" – is to be ignored in comparing the mark in which a complainant has rights and the domain name that is the subject of the dispute. See, for example, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (March 20, 2001); National Hockey League And Lemieux Group LP v. Domain For Sale, WIPO Case No. D2001-1185 (December 6, 2001). In light of this rule, it is clear that the Domain Name is confusingly similar to the Mark in which Complainant has rights.
The Panel, thus, finds for the Complainant on element (i).
B. Respondent’s Rights or Legitimate Interest in the Domain Name
The Panel next examines whether the Respondent has any rights or a legitimate interest in the Domain Name, with reference to the guiding criteria set forth in Paragraph 4(c) of the Policy. Those guidelines consider whether:
(i) before any notice to the Respondent, the Respondent was using, or was making 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 has been commonly known by the Domain Name, even if the holder has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate or non-commercial 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.
As the Policy points out, these factors are not exhaustive of all the circumstances that may establish rights or a legitimate interest.
The Domain Name is <myviagra.com.> The registration details for the Domain Name reflect that Respondent is an organization named "myviagra." If "myviagra" is a valid entity, the Respondent arguably would have rights in the Domain Name in as much as it reflects Respondent’s corporate identity. However, the Panel has serious doubts that "myviagra" is the name of any legal entity. Complainant reports that a search for an entity named "myviagra" in Alabama revealed no such organization. The Panel is also highly doubtful that any such entity formally and validly exists under Respondent’s sponsorship. Based on Respondent’s failure to provide complete contact information with the Registrar and Respondent’s failure to respond to the complaint, the Panel is satisfied that there is indeed no such organization.
Respondent does not appear to have any rights to any trade names or trademarks consisting in whole or in part of the mark VIAGRA. There is nothing to show that Respondent is commonly known by the Domain Name. Further, the Panel accepts Complainant’s contention that the Respondent has neither been permitted to use the mark nor has been licensed by the Complainant. The Panel thus concludes that Respondent has no rights in the domain name <myviagra.com>, based on a trademark, service mark or trade name.
The Panel has visited the <myviagra.com> web-site and has found that it does not resolve to a web site. Consequently, Respondent does not appear to be making a bona fide offering of goods or services or a legitimate noncommercial fair use of the name. In addition, there is no evidence to show that Respondent has made any preparations to use the Domain Name.
The Panel is aware that the burden is on the Complainant to establish that Respondent has no rights or legitimate interest in the Domain Name, and emphasizes that Complainant’s failure to find evidence of a legitimate use does not constitute evidence that a respondent does not have a legitimate interest in a disputed domain name. However, the Panel agrees with a prior WIPO decision that it is a "heavy burden that would be placed on complainants if in support of their cases on illegitimacy each of the those complaints 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 respondents that evidences bad faith, it is quite reasonable to shift the burden of proof to each such respondent to adequately show that its use of the contested domain name is legitimate, such as by showing that, in conjunction with the contested name, it is making a bona fide commercial offering of goods or services or preparations for such offerings, or non-commercial fair use." American home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602 (February 19, 2001). This shifting seems especially reasonable in light of other WIPO decisions which state that a respondent need only show a plausible, non-infringing explanation for selecting the disputed domain name. Webvan Group, Inc. v. Stan Atwood, WIPO Case No. D2000-1512 (February 20, 2001). In view of this quite favorable standard (at least from a respondent’s perspective), the failure of a respondent to make even a perfunctory response must inevitably weigh heavily against a finding in favor of that respondent on the issue of rights or a legitimate interest in the disputed domain name.
The Respondent here has foregone the opportunity to provide any evidence to support a finding of legitimate use, and the Panel is unable to identify any reason which allows the Respondent to claim any right or legitimate interest in respect of the Domain Name.
The Panel, therefore, finds in favor of the Complainant on element (ii).
C. Bad Faith Registration
The Panel must also consider whether the Domain Name was registered in "bad faith." In this regard, the Panel considers the following factors surrounding the registration of the Domain Name, <myviagra.com>:
1. VIAGRA® is a well known trademark in which Complainant has unquestionable rights. Complainant’s Mark was issued on June 2, 1998. The Domain Name was registered on November 27, 2001;
2. The word "Viagra" is a fanciful term, that was coined by Complainant to be used in connection with its product;
3. Respondent did not submit a response to the Complaint;
4. Respondent provided incomplete registration information that can only be assumed to be false;
5. Respondent has held the name <myviagra.com> for a period of eight months without making any use of the web-site;
6. Respondent has provided no evidence to demonstrate that it has taken any steps to make any legitimate use of the Domain Name;
7. The Panel cannot, in the absence of any evidence provided by Respondent, conceive of any plausible explanation for Respondent’s registering the domain name, <myviagra.com>.
While none of these factors standing alone would be sufficient to warrant a finding of bad faith registration and use, the totality of the circumstances indicate that Respondent did not register the Domain Name in good faith.
The Panel, therefore, finds that Complainant prevails on element (iii).
In conclusion, the Panel finds that:
1. The Domain Name at issue is confusingly similar, if not identical, to the mark in which Complainant has established rights;
2. Respondent has no rights and no legitimate interest in respect of the Domain Name; and
3. Respondent registered and is using the Domain Name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <myviagra.com> be transferred to Complainant.
Arif Hyder Ali
Date: July 25, 2002