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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Jason Haft

Case No. D2003-0133

 

1. The Parties

The complainant in this proceeding is Pfizer Inc. ("Complainant"), a Delaware corporation of New York, New York, USA.

The respondent is Jason Haft, the registrant of the domain names in issue ("Respondent"), of Langhorne, Pennsylvania, USA.

 

2. The Domain Names and Registrar

The domain names in issue are <fem-viagra.com>, <fem-viagra.net>, <viagra-fem.com> and <viagra-fem.net> ("Domain Names").

The registrar of the Domain Names is Go Daddy Software, Inc. ("Registrar")

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2003. On February 24, 2003, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On February 24, 2003, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant for all of the Domain Names and providing the contact details for the administrative, billing, and technical contacts for the Domain Names. The Center verified that 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 the Respondent of the Complaint and the proceedings commenced on February 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for receiving a response from the Respondent was March 19, 2003. The Respondent failed to submit a response with respect to this proceeding by the March 19 deadline. On March 20, 2003, the Center sent a "Notification of Respondent Default" to the parties with respect to this default.

On March 25, 2003, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. The Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center, as required, to ensure compliance with the Rules, paragraph 7. The Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties on March 26, 2003.

Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Center’s finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the Panel was properly constituted and appointed. The Panelist also finds that the Center has fully discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint. The Panelist shall therefore draw inferences from the Respondent’s default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant bases the Complaint on U.S. Registration No. 2,162,548 (first use and first use in commerce 4/6/1998; issued 6/2/1998) for the mark VIAGRA used in connection with a compound for treating erectile dysfunction as well as worldwide registrations and applications for the mark VIAGRA and variations thereof (hereinafter collectively the "Marks"). The Complainant provided a copy of the U.S. registration information for the mark VIAGRA as Annex 4 to the Complaint and provided a list of the worldwide trademark registrations and applications for many of its Marks as Annex 5 to the Complaint.

The Domain Names in issue were registered on February 5, 2003, to the Respondent and there are currently no web pages accessible at any of the Domain Names. A copy of the whois information for the domain name <viagra-fem.com> was attached as Annex 1 to the Complaint. A search of the Registrar’s whois database confirmed the whois information for the domain names <fem-viagra.com>, <fem-viagra.net> and <viagra-fem.net>as being registered to the Respondent.

 

5. Parties’ Contentions

Complainant

The Complainant asserts that it is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. The Complainant asserts that it discovers, develops, manufactures and markets leading prescription medicines for humans and animals as well as many of the world’s best-known consumer products. The Complainant asserts that it has expended millions of dollars and extensive resources on research, development and marketing of VIAGRA® brand sildenafil citrate, which is the first approved oral medication for the treatment of erectile dysfunction. The Complainant further asserts that it owns and operates a web site at <www.viagra.com> which is visited by a vast number of U.S. consumers and has attached a copy of the print-out of the whois information for this domain name showing such ownership.

The Complainant asserts that it has used the mark VIAGRA on or in connection with sildenafil citrate products in the United States since April 6, 1998, and is the owner of U.S. Trademark Registration No. 2,162,548 for the trademark VIAGRA with such registration being valid, unrevoked and uncancelled. The Complainant asserts that the mark VIAGRA is a coined and fanciful term with no denotative meaning, and that the mark is universally recognized and relied upon as identifying the Complainant as the sole source of the drug and as distinguishing the Complainant’s product from the goods and services of others. The Complainant asserts that the mark has acquired substantial goodwill and is an extremely valuable commercial asset. The Complainant further asserts that the mark has become famous throughout the world and in the United States as a result of extensive publicity and the Complainant’s own post-approval advertising and promotion.

The Complainant asserts that it is also the owner of two pending U.S. intent-to-use trademark applications for the mark VIAGRA-FEM (Serial No. 78/147,133) and the mark FEM-VIAGRA (Serial No. 78/179,982).

The Complainant alleges that the Respondent registered the Domain Names on or about February 5, 2003, seeking to capitalize on the notoriety and fame of the Complainant’s mark VIAGRA. The Complainant asserts that the Domain Names wholly incorporate the Complainant’s mark VIAGRA, are identical to the Complainant’s pending trademark applications, and are confusingly similar to the Complainant’s mark VIAGRA and the Complainant’s web site at <www.viagra.com>. The Complainant further asserts that the Domain Names are so clearly similar to the Complainant’s mark VIAGRA and trade name that they are likely to cause confusion among the Complainant’s customers and the consuming public. The Complainant asserts that the Respondent’s use of "fem" with the Complainant’s mark VIAGRA, separated by only a hyphen, does not create a new or different mark in which the Respondent has rights and is therefore not sufficient to avoid consumer confusion.

The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant asserts that the Respondent clearly had knowledge of the Complainant’s famous mark VIAGRA prior to registration of the disputed Domain Names. The Complainant asserts that the Respondent is not, and has never been, a representative of the Complainant and that the Respondent is not commonly known by the mark VIAGRA. The Complainant further asserts that the Respondent provided false registration information to the Registrar, specifically, the Respondent’s telephone number. The Complainant also asserts that the Respondent offers neither goods nor services through the Domain Names and that the Respondent’s passive use of the Domain Names is not a legitimate use. The Complainant alleges that the Respondent registered the Domain Names explicitly for the purpose of soliciting sales far in excess of the Respondent’s out-of-pocket costs or is making illegitimate or unfair use of the Complainant’s mark.

The Complainant asserts that the Respondent registered and is using the Domain Names in bad faith by registering the Domain Names, which wholly incorporate the Complainant’s mark, with knowledge of the Complainant’s trademark rights and by offering the domain name <viagra-fem.com> for sale by auction on the eBay auction site. The Complainant asserts that the Respondent stated in the auction’s description of goods that "there is a potential opportunity to make money here, BIG MONEY" and that the Respondent noted that if his reserve of $5,000 was not met, the Respondent planned to hold the domain name and predicted that "Pfizer will have to work it out with ME if they want the domain name". The Complainant alleges that the Respondent intends to sell all four domain name registrations for "market price" and that the Respondent’s online auction and subsequent conduct evidence bad faith. The Complainant provided as Annex 3 to the Complaint an Affidavit of its investigator who communicated with the Respondent concerning purchasing the domain name <viagra-fem.com> and further concerning purchasing the domain names <viagra-fem.net>, <fem-viagra.com> and <fem-viagra.net>.

The Complainant asserts that because the Respondent has no rights or legitimate interest in the Domain Names and because the Respondent provided false registration information to the Registrar, it should be concluded that the Domain Names were registered to facilitate dilution, cybersquatting or infringement of the Complainant’s mark. The Complainant further asserts that the Respondent seeks to profit from his illegitimate use, that by passively maintaining the Domain Names, the Respondent has acted and continues to act intentionally, willfully and in bad faith with intent to capitalize upon the Complainant’s property rights and diminish the value of the Complainant’s mark and the Complainant’s goodwill, and that the Respondent intends to attract for financial gain Internet users to a web site by creating a likelihood of confusion.

Respondent

No response was received from the Respondent with respect to this proceeding.

 

6. Discussion and Findings

The Proceeding - Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:

(i) the domain name holder’s domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain names ("Element (ii)"); and

(iii) the domain names of the domain name holder have been registered and are being used in bad faith ("Element (iii)").

The Panelist can only rule in a complainant’s favor only after the complainant has proven that the above-listed elements are present.

Element (i) - Domain Names Identical or Confusingly Similar to the Mark

Under Element (i) of the Policy, the Complainant is required to establish that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panelist finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in the mark VIAGRA.

A review of the Domain Names shows that each domain name fully incorporates the mark VIAGRA and only differs from the mark by the addition of the phrase "fem" and a hyphen preceding or following the mark VIAGRA. Such additions to the mark VIAGRA do not differentiate or distinguish the Domain Names from the mark. Based upon these findings and that the Complainant has provided sufficient evidence to establish its ownership and rights in the mark VIAGRA, the Panelist concludes that the Domain Names are confusingly similar to the Complainant’s mark VIAGRA and that Element (i) has been satisfied.

Element (ii) - Rights or Legitimate Interests in the Domain Names

No evidence has been presented that the Respondent is commonly known by the Domain Names. Furthermore, no evidence has been presented that at any time has the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use any of the Complainant's Marks, including the mark VIAGRA.

No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services. The uncontested evidence shows that the mark VIAGRA was well-known at the time of the Respondent’s registrations of the Domain Names and that the Respondent registered the Domain Names with knowledge of the mark and for the purpose of confusion created by the Domain Names’ similarity to the mark VIAGRA. Moreover, the Respondent’s listing of the domain name <viagra-fem.com> on the eBay auction site with a reserve price of $5,000 and the Respondent’s corresponding auction description of goods are further evidence that the Respondent has not been using or making demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. Therefore, the Respondent’s use cannot constitute a bona fide offering of goods or services. Nor can the Respondent’s use of the Domain Names constitute a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers.

Thus based upon the Complainant's assertions and uncontested evidence, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Names and that Element (ii) has been satisfied.

Element (iii) - Domain Names Registered and Used in Bad Faith

Based upon the uncontested evidence submitted by the Complainant, the Panelist finds that the Respondent clearly had knowledge of the Complainant’s mark VIAGRA when registering the Domain Names. This finding is supported by the evidence showing that the Domain Names were registered well after the first use in commerce by the Complainant of its mark VIAGRA and that the Respondent was well aware of the Complainant's trademark rights in its mark VIAGRA based on the description used by the Respondent in his eBay auction listing of the domain name <viagra-fem.com>. Moreover, this finding is supported by the Complainant’s uncontested evidence showing that the mark VIAGRA was clearly well-known at the time the Respondent registered the Domain Names. The Panelist therefore finds that the Respondent registered the Domain Names in bad faith.

The Complainant has also asserted and submitted sufficient evidence showing that the Respondent registered the Domain Names primarily for the purpose of selling, renting or otherwise transferring them to the Complainant or the Complainant’s competitors for valuable consideration in excess of the Respondent’s out-of-pocket costs related to the registrations of the Domain Names. Particularly, the Panelist finds the Respondent's actions of registering and attempting to auction the domain name <viagra-fem.com> on the same day with a minimum reserve price of USD5000 constitute compelling evidence that the registration of this domain name was obtained primarily for the purpose of selling the domain name for valuable consideration well in excess of the Respondent’s out-of-pocket expenses related to the domain name <viagra-fem.com>.

Although the other domain names in this proceeding were not auction on the eBay auction site at the same time the domain name <viagra-fem.com> was auctioned, the Complainant has presented evidence showing the Respondent intended to sell these domain names and was soliciting offers. The Complainant also provided evidence that the Respondent intended to sell these other domain names for a "market price" in excess of the Respondent’s out-of-pocket expenses directly related to these domain names. Moreover, the Respondent’s eBay auction for <viagra-fem.com>, together with the description the Respondent provided for this auction, demonstrate the Respondent’s opportunistic intent to profit financially from the confusion created by these domain names with the Complainant’s mark VIAGRA. Therefore, based on the Complainant's assertions and uncontested evidence, the Panelist finds that the Respondent registered and used the Domain Names in bad faith with the intent to sell the Domain Names for valuable consideration in excess of the Respondent’s out-of-pocket expenses. The Panelist thus concludes that Element (iii) has been satisfied.

 

7. Decision

The Panelist concludes that: (i) the Domain Names are confusingly similar to the Complainant’s mark VIAGRA; (ii) the Respondent has no rights or legitimate interests in the Domain Names; and (iii) the Respondent has registered and is using the Domain Names in bad faith. The Panelist therefore requires that the registrations of the domain names <fem-viagra.com>, <fem-viagra.net> <viagra-fem.com> and <viagra-fem.net> be transferred to the Complainant.

 

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Marylee Jenkins
Sole Panelist

Dated: April 10, 2003