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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Blue Viagra

Case No. D2004-0732

1. The Parties

The Complainant is Pfizer Inc., New York, New York, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.

The Respondent is Blue Viagra, Singapore, Singapore.

2. The Domain Name and Registrar

The disputed domain name <blue-viagra.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2004. On September 10, 2004, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On September 23, 2004, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 September 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2004.

The Center appointed Kamen Troller as the sole panelist in this matter on October 25, 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

4.1. The Complainant alleges the following:

The Complainant is a multinational corporation engaged in the discovery, development, manufacturing and marketing of prescription medicines for humans and animals. In particular, the Complainant has developed the VIAGRA brand sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction.

The Complainant has used VIAGRA in connection with the sildenafil citrate product since April 6, 1998, and obtained its first United States registration for the VIAGRA mark on June 2, 1998 (Complainant’s Annex 3). The Complainant, directly or through its wholly owned subsidiaries, also owns trademark registrations for the VIAGRA mark around the world (Complainant’s Annex 4).

The Complainant also owns and operates a website at “www.viagra.com” which is visited by a vast number of U.S. consumers (Complainant’s Annex 5).

As a result of an extensive publicity, the Complainant’s VIAGRA trademark has become famous throughout the world, and especially in the United States as designating the Complaint’s brand of oral therapy for erectile dysfunction.

The Respondent has registered on September 9, 2002, without authorization, the domain name <blue-viagra.com>. Currently, the Respondent offers neither goods nor services through the domain name <blue-viagra.com> and this domain name does not resolve to a website or other on- line presence (Complainant’s Annex 6).

The Respondent did not contest the Complainant’s presentation of facts - therefore, the Panel will accept that presentation.

4.2. In addition to Complainant’s allegations, and in order to make sure that Respondent’s rights (if any) be respected, the Panel has tried to obtain more information about Respondent and has found the following:

The Center sent the notifications of the Complainant to the Respondent’s email address provided in the Whois web page and to postmaster@blue-viagra.com. The latter was not received - the address showed permanent fatal errors. A search on Google shows eight business entities on the Respondent’s street address in Singapore, but no Blue Viagra.

A search for “0tomillions.com” on Google shows some references in connection with a website “www.0tomillions.com” - there appears to be some relation with Online Network Marketing services, furthermore some links to pages with rather pornographic content, but the website “www.0tomillions” cannot be opened.

Therefore, the question arises as to the true identity of Respondent. Respondent Blue Viagra appears to be just a designation, its legal status cannot be established; Respondent has not informed the Registrar or the Center whether it is a person, or whether it is registered or incorporated as a legal entity.

For registration purposes, Respondent indicated itself as administrative contact (which does not help, since there is no evidence of its existence) and as technical contact an e-mail address. Again, there is no indication who (if anyone) is the entity or person behind this address.

4.3. Therefore, the Panel concludes that it cannot ascertain that Respondent exists and that it cannot establish who is the hidden true registrant of the domain name <blue-viagra.com>.

The Panel furthermore finds that, to its best knowledge, the Respondent did not register “blue-viagra” or “blue-viagra.com” as a trademark in any jurisdiction.

5. Parties’ Contentions

5.1. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, it alleges that:

(i) the domain name <blue-viagra.com> wholly incorporates the VIAGRA trademark, is identical to the VIAGRA mark but for the additional common and descriptive word “blue”, and is so clearly similar to Complainant’s VIAGRA mark and tradename that it is likely to cause confusion among Complainant’s customers and the consuming public. The Complainant contends that it is well-established that a common term preceding or following a trademark does not create a new or different mark in which the Respondent has rights; in the present case, the common term “Blue” is descriptive of the VIAGRA Pills, which are of that colour.

(ii) the Respondent has no rights or legitimate interests in the domain name; and

(iii) the domain has been registered and is used in bad faith:

- for the illegitimate purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the registrant’s out-of-pocket costs directly related to the domain name; and

- in order to attract for financial gain Internet users to a website by creating likelihood of confusion; and

- to capitalize upon the Complainant’s property rights and diminish the value of the VIAGRA trademark and the Complainant’s goodwill.

For all of these reasons, the Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.

5.2. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural matters

For cases where the respondent did not submit a response, paragraph 5(e) of the Rules states that in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.

No such exceptional circumstances exist in the present case. The rule mentioned above shall thus be applied.

6.2. Substantive matters

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements are present:

(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark 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 domain name has been registered and is being used in bad faith.

6.3. Identical or confusingly similar

6.3.1. The Complainant alleges that the domain name <blue-viagra.com> is clearly similar to Complainant’s VIAGRA mark and tradename and that it is likely to cause confusion among Complainant’s customers and the consuming public. The addition of a common term such as “blue” preceding Complainant’s famous and distinctive VIAGRA mark does not create a new or different mark in which the Respondent has rights, and therefore is not sufficient to avoid consumer confusion.

6.3.2. The Panel finds that the domain name and the trademark are confusingly similar, based upon the following factors:

- the Complainant has established rights in the VIAGRA mark through its registration and use in the United States and elsewhere. At a minimum, that mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047,

- the Complainant’s trademark and trade name VIAGRA is embodied in the disputed domain name and forms the distinctive part of that name,

- it is well settled that the addition of a generic term to a trademark does not per se eliminate a likelihood of confusion. Indeed, there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms. Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727. See, e.g., Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>). See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates complainant’s mark).

6.3.3. Considering these circumstances, the Panel concludes that the domain name is confusingly similar to the Complainant’s VIAGRA trademark.

6.4. Rights or legitimate interests

6.4.1. Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate “rights to and legitimate interests in the domain name”, the Respondent only being required to demonstrate one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interests in the domain name:

(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 other organization) 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.

By restraining from submitting a response to the present complaint, the Respondent has not demonstrated the existence of any of the above three circumstances.

6.4.2. To the contrary, the Panel notes that the Complainant has not licensed or otherwise authorized the Respondent to use the VIAGRA mark. The Complainant’s adoption, use and registration of the VIAGRA mark, and the registration of the domain name <viagra.com>, both precede the Respondent’s September 9, 2002 registration of the disputed domain name. Furthermore, the Respondent currently offers neither goods nor services through the domain name <blue-viagra.com> and this domain name does not resolve to a website or other on-line presence (Complaint Annex 6). There is no indication available to the Panel that the Respondent has been commonly known by the disputed domain name or that the Respondent is attempting to make any legitimate non-commercial use of the domain name.

6.4.3. Based on these considerations, the Respondent has failed to satisfy the conditions of paragraph 4(c) of the Policy. The Panel thus concludes that the Respondent has no rights or legitimate interests in the domain name.

6.5. Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.

6.5.1. Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances each of which shall be evidence that the registration and use of a domain name is in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

6.5.2. The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith for the following reasons:

- the Respondent was well aware of the vast and valuable goodwill and reputation represented and symbolized by the VIAGRA trademark.

- recognizing both the fanciful and distinctive quality of the term VIAGRA and the value of the Internet to Complainant in increasing its ability to communicate with customers and potential customers, Respondent registered the domain name <blue-viagra.com> with bad faith to profit from such registration and blatantly used the term “blue- viagra”, which fully incorporates Complainant’s VIAGRA trademark, to do so.

- because the Respondent has no rights or legitimate interest in the use of <blue-viagra.com>, and the domain name does not resolve to an active website, it only follows that this domain name was registered to facilitate dilution, cybersquatting or infringement and to sell or otherwise transfer the domain name to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name. See Arthur Guinness Son & Co. (dublin) Ltd. v. Steel Vertigogo, WIPO Case No.D2001-0020.

6.5.3. The present case is distinct from the some thirty other “Viagra” cases decided up to now insofar as it concerns a totally inactive registration, without any website or any other apparent use.

The domain name <blue-viagra.com> does not resolve to a website or other on-line presence. There is no evidence that a website or other on-line presence using that domain name is in the process of being established. There is no evidence of advertising or other display to the public of the domain name. Finally, Respondent has not offered to sell, rent or otherwise transfer the domain name to the Complainant. There appears to be no positive action undertaken by the Respondent in relation to the domain name.

6.5.4. Complainant has noted this special circumstance and has invoked the “Telstra” decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

6.5.5. Can it be said that in the present case, and in view of the existence of a registration of the domain name <blue-viagra.com> which does not resolve to any website or any other use or even any really existing registrant, this domain name “has been registered and is [still] being used in bad faith” ?

6.5.6. An obvious answer to that question is that everyone who registers a designation makes use of that designation for the purpose of registering it - and as long as he maintains the registration in validity, he continues to use the designation for the purpose of keeping it registered. If he has made the registration in bad faith, there is a strong assumption that he is still in bad faith maintaining it - unless he provides evidence to the contrary.

6.5.7. Furthermore, all the considerations presented in the Telstra decision (to which the present Panel adheres totally) are applicable to the present case. As in the Telstra decision (para. 7.7), the Panel finds: Has the Complainant proved that the domain name “has been registered in bad faith” by the Respondent? In light of the facts established under 4. above, the Panel finds that the Respondent does not conduct any legitimate commercial or non-commercial business activity and that the Respondent has taken deliberate steps to ensure that its true identity cannot be determined. Given the Complainant’s numerous trademark registrations for, and its famous reputation in, the word VIAGRA, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <blue-viagra.com>. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding under 6.4. above that the Respondent has no rights or interests in the domain name, lead the Panel to conclude that the domain name <blue-viagra.com> has been registered by the Respondent in bad faith.

6.5.8. As in the Telstra decision (para. 7.12), the Panel further finds:

- the Complainant’s trademark has a strong reputation and is widely known,

- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

- the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

6.5.9. In addition to the considerations in the Telstra decision (para. 7.10 - 7.12) concerning the inadmissibility of totally passive registration of [certain] designations, the Panel wishes to refer to the “Qualiflyer” decision (SAir Group v. Pat Reinhardt, WIPO Case No. D2000-0482), in which this Panelist explains the rationale behind protection of trademarks against unfair use in the form of domain names by third parties.

6.5.10. In the present instance, the litigious domain name is using the famous trademark VIAGRA, whose quickly acquired reputation throughout the world is of public knowledge.

. Famous trademarks deserve an enhanced protection, as results from art. 16 para. 3. of the TRIPS Agreement, under which the 148 signatory states of WTO undertake to grant particular protection to well-known trademarks:

“Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.”

Domain names are a typical example of goods which are not similar to those for which a trademark is registered, but which would indicate a connection with the owner of the trademark. Therefore, each signatory state must exclude from protection domain names which are confusingly similar to well-known trademarks.

6.5.11. Art. 6bis of the Paris Convention applies to the present case also for the following consideration: as a principle, domain names are meant to identify websites - or to serve some activities of their owners - be it for lucrative or non-lucrative purpose.

Trademarks are intangible, they are ubiquitous - the owner of a famous trademark has therefore a worldwide constant exposure, and any abnormal or otherwise strange behaviours may tarnish his reputation. The one who encounters a domain name comprising a famous trademark expects to find behind that name some link to the products or services that mark serves to identify; if there is nothing, the reputation of the owner of the trademark risks to be tarnished in the eyes of that consumer, at least.

6.5.12. The Panel also adopts the reasoning developed by the Panel in the Comerica decision (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615).

“Should Respondent be required to relinquish the disputed domain names in the absence of its explicit use of them ? I think so. The very act of having acquired them raises the probability of Respondent using them in a manner that is contrary to Complainant’s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such disputed names can be put that would not violate Complainant’s rights. See eg. Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. To argue that Complainant should have to wait for some future use of the disputed domain names to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The result would be the likelihood of the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant’s goodwill and business. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent’s bad faith. On the contrary, it raises the specter of continuing bad faith abuse by Respondent of Complainant’s Mark, name and related rights and legitimate business interests.”

6.5.13. In light of all these considerations, the Panel concludes that the fact of registering a third party’s well-known trademark as a domain name and passively holding the domain name constitutes a registration and a continued use in bad faith of that domain name.

7. Decision

7.1. The Panel decides that the domain name <blue-viagra.com> is confusingly similar to the Complainant’s VIAGRA mark, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent has registered and used the domain name in bad faith.

7.2. For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <blue-viagra.com> be transferred to the Complainant.

Kamen Troller
Sole Panelist

Dated: November 3, 2004