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Дела по доменам общего пользования
Дела по национальным доменам
and Mediation Center
Pfizer Inc. v. jg a/k/a Josh Green
Case No. D2004-0784
1. The Parties
The Complainant is Pfizer Inc. of New York, New York, United States of America, represented by Kaye Scholer, LLP of New York, New York, United States of America.
The Respondent is jg, a/k/a Josh Green of New York, New York, United States
2. The Domain Names and Registrar
The disputed domain names <pfizerforwoman.com> and <wwwpfizerforwomen.com>
are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2004. On September 30, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On September 30, 2004, Intercosmos Media Group d/b/a directNIC.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 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 October 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2004.
The Center appointed Terrell C. Birch as the sole
panelist in this matter on November 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, Pfizer, Inc, hereinafter “PFIZER,” in paragraphs V.1 -7 of the Complaint has set forth its large corporate status, its reputation throughout the international community and has established that its PFIZER trademark is famous and universally recognized and relied upon as identifying the Complainant as the sole source of its pharmaceuticals, consumer health care products, animal health products, and informational services, distinguishing the Complainant from other companies and the Complainant’s products from the goods and services of others. PFIZER’s registrations go back as early as August 1948, and in 2001, PFIZER began using the mark PFIZER FOR WOMEN as well as the <pfizerforwomen.com> domain name since at least September 2001.
The Panel accepts the factual representations of paragraph
6 of the Complaint spelling out how the marks PFIZER, PFIZER FOR WOMEN, and
PFIZERFORWOMEN.COM are trademarks used in conjunction with health related educational
and informational services for women.
5. Parties’ Contentions
1. PFIZER contends it owns exclusive rights to the trademarks PFIZER, PFIZER FOR WOMEN, and PFIZERFORWOMEN.COM.
2. PFIZER contends that Respondent’s domain names are identical or confusingly similar to PFIZER’s trademarks.
3. PFIZER contends that Respondent has no rights or legitimate interests in the trademarks.
4. PFIZER contends that Respondent has registered and is using the domain names in bad faith.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
The Panel finds that PFIZER owns exclusive rights to the trademarks PFIZER, PFIZER FOR WOMEN, and PFIZERFORWOMEN.COM based upon the factual presentations and allegations of paragraphs 1-6 of the Complaint, which the Panel adopts as factual findings herein.
A. Identical or Confusingly Similar
The Panel finds that Respondent’s domain names are substantially identical and confusingly similar to the PFIZER trademarks for at least the following reasons:
Respondent’s <wwwpfizerforwomen.com> and <pfizerforwoman.com> domain names incorporate wholesale the PFIZER mark and take advantage of a common Internet typing error (i.e., omitting the “.” after the “www”) and the plural/singular variation (i.e., “woman” instead of “women”) of PFIZER’s trademark and domain name PFIZERFORWOMEN.COM. Thus, Respondent’s <wwwpfizerforwomen.com> domain name is identical to PFIZER’s PFIZER FOR WOMEN and PFIZERFORWOMEN.COM trademarks, except for the absence of a period between “www” and “pfizerforwomen” (and, in the case of the PFIZER FOR WOMEN mark, the addition of the ‘.com’ extension, which is generic and of no trademark significance). Respondent’s <pfizerforwoman.com> domain name is identical to PFIZER’s PFIZERFORWOMEN mark, except it uses the singular, “woman,” rather than the plural, “women.”
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the domain names for the following reasons:
PFIZER has no information about Respondent and has never authorized Respondent to register or use the domain names at issue or the PFIZER or PFIZER FOR WOMEN marks. Respondent has no rights or legitimate interests in the subject domain names. Upon information and belief, Respondent is not commonly known by the name PFIZER or PFIZER FOR WOMEN, or any variation thereof. “UDRP panels have made it quite clear that it takes more than domain name registration to obtain rights in the domain name.” 2 Gilson at § 7A.06[b][iii] at page 7A-82 & n.236 (citing panel decisions).
PFIZER’s adoption of the marks PFIZER, PFIZER FOR WOMEN, and PFIZERFORWOMEN.COM precedes Respondent’s registration of the domain names at issue in August and November 2002. Moreover, given the use of Respondent’s domain names to divert users to a site selling pharmaceuticals – the very market area with which consumers have long and overwhelmingly associated PFIZER’s trademarks – it is indisputable that Respondent had knowledge of PFIZER’s famous marks prior to registration of the disputed domain names.
Respondent’s use of the domain names at issue to redirect Internet users
to an on-line pharmacy demonstrates Respondent’s lack of a legitimate
interest in the domain names. Thus, several cases have found that a registrant
has no legitimate interest in a domain name that is similar to a pharmaceutical
manufacturer’s mark and that is being used to direct consumers to an on-line
pharmacy. In Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO
Case No. D2001-1199, a case nearly identical to this one, the panel found
that the registrant had no legitimate interest in its domain name where, as
here, the registrant was using its domain name <wwwpfizer.com> to redirect
Internet users to an on-line pharmacy. In AVENTIS Pharma S.A. and Merrell
Pharmaceuticals Inc. v. Rx USA, WIPO
Case No. D2002-0290, the respondent registered another pharmaceutical manufacturer’s
well-known trademark as a domain name and redirected traffic to an on-line pharmacy.
The panel found the respondent had no legitimate interests in the domain name
because selling the complainant’s goods on the respondent’s site
“does not give [respondent] the right to register and use the mark as
a domain name without the consent of the holders of the trademarks.” [Emphasis
theirs] Id. at 5. Therefore, the panel held that the respondent was “prevented
from having prior rights to the legitimate interests in the domain name as against
the Complainant.” Id. (citing Ullfrottй AB v. Bollnas Imports,
WIPO Case No. D2000-1176; Volvo Trademark
Holding AB v. Peter Lambe, WIPO
Case No. D2001-1292)); see also Aventis, Aventis Pharma SA. v. VASHA
Dukes, WIPO Case No. D2004-0276 (finding respondent’s
operation of an on-line pharmacy under complainant’s trademark constituted
no legitimate use); Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical
& More Online Pharmacy, WIPO Case
No. D2003-0793 (finding no legitimate use, where respondent used a domain
name confusingly similar to a trademark of complainant’s pharmaceutical
company, to forward Internet users to respondent’s on-line pharmacy);
Pfizer Inc v. lipidor.com DNS Services, WIPO
Case No. D2002-1099 (domain name similar to Complainant’s mark, which
redirected traffic to an on-line pharmacy website selling Complainant’s
and its competitor’s drugs, constitutes “no legitimate interests
in the Domain Name...”).
Further, Respondent’s typosquatting of PFIZER’s famous mark demonstrates
a lack of legitimate use in its domain name. Clearly, Respondent has purposefully
selected these terms, which contain common typos of PFIZER’s marks, in
order to divert to Respondent’s affiliated on-line pharmacy consumers
who are attempting to locate PFIZER’s websites. The terms used by Respondent
are not used by Respondent to identify either its business or the business of
the resulting website, to which its domains names are linked. Respondent’s
domain names appear to be designed solely to take advantage of mistakes consumers
are likely to make when intending to enter PFIZER’s websites and, as such,
do not constitute a bona fide or legitimate use thereof. Upon information
and belief, the Respondent intends to profit from the ensuing confusion and,
as a result, PFIZER has been and will continue to be deprived of visits by Internet
users. Such use, in the United States for instance, constitutes trademark infringement
and dilution in violation of Sections 32 and 43 of the United States Trademark
Lanham Act, 15 U.S.C. § 1114, §1125. See Chanel, Inc. v. Estco Technology
Group, WIPO Case No. D2000-0413 (“[I]n
order for Respondent’s Internet business to be “legitimate”
under the Policy, it must make non-infringing use of Complainant’s world
famous trademark”). This tactic, which takes advantage of mistakes consumers
may make when attempting to locate the PFIZER-sponsored website, does not constitute
a legitimate use of the disputed domain names.
There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain. The Respondent is instead misleading and diverting PFIZER’s customers to its affiliated pharmaceutical sales site, most of the products offered on which are sold by PFIZER’s direct competitors, thereby creating the impression that Respondent’s domain names, the affiliated on-line pharmacy and the products thereon are in some way affiliated with, or approved or sponsored by, PFIZER.
C. Registered and Used in Bad Faith
Respondent has registered and used the Complainant’s marks in bad faith.
1. The Panel finds that the Respondent has registered its two domain names in bad faith for at least the following reasons:
The Respondent, in common with the public, is well aware of the vast and valuable goodwill and reputation represented and symbolized by the PFIZER and PFIZER FOR WOMEN trademarks. As used by PFIZER, these marks are recognized and relied upon by medical professionals and the public throughout the world as the sole means to identify and distinguish PFIZER and its goods and services from the goods and services of others. PFIZER also currently has registered and utilizes the Internet sites <pfizer.com> and <pfizerforwomen.com>. The Respondent, recognizing the value of the Internet to PFIZER in enhancing its ability to communicate with customers and potential customers, registered the domain names <pfizerforwoman.com> and <wwwpfizerforwomen.com> with the bad faith intent to profit from such registration and blatantly registered terms which look and sound virtually identical to PFIZER’s mark, to do so.
This bad faith registration is exemplified by the following:
a. Respondent, aware of the fame and goodwill associated with the PFIZER and
PFIZER FOR WOMEN marks deliberately registered domain names with only minor
spelling and punctuation variations to the PFIZER and PFIZER FOR WOMEN marks,
in order to confuse consumers and to profit from such confusion. See Google,
Inc. v. Namerental.com and Leonard Bensonoff, WIPO
Case No. D2001-0060 (a minor spelling variation to a well-known mark, standing
alone, creates a prima facie inference of bad faith).
b. Respondent’s domain names were intended to be and are substantially confusingly similar to PFIZER’s marks, both visually and aurally.
c. Respondent’s deliberate use of common typos for both domain names
indicates that the Respondent knew or should have known of PFIZER’s registration
and use of PFIZER’s well-known marks prior to registering the domain names.
See America Online, Inc. v. Anson Chan, WIPO
Case No. D2001-0004 (Respondent’s knowledge of the Complainant’s
mark before he registered the disputed domain name constitutes bad faith). Respondent’s
use of the domains names to refer to an on-line pharmacy selling PFIZER’s
and others’ products confirms Respondent’s awareness of PFIZER’s
d. Further, Respondent’s registration of two copycat domains names evinces
a pattern of copying PFIZER’s marks. Panels have found that such a pattern
of registering multiple domain names that are identical or confusingly similar
to famous trademarks is proof of bad faith. See Stella D’oro Biscuit
Co., Inc. v. The Patron Group, Inc., WIPO
Case No. D2000-0012; Nabisco Brands Company v. The Patron Group,
Inc., WIPO Case No. D2000-0032; Seiko
Epson Corporation et al v. JIT Consulting, National Arbitration Forum Case
e. The fourth of the identified “bad faith” factors enumerated in UDRP Rule 4(b)(iii) applies with particular force here. The rule states that it is bad faith to register and use a domain name to intentionally attract Internet users to the respondent’s sites for commercial gain “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” on respondent’s sites or “of a product or service” on respondent’s sites. In the Telstra decision, for example, the panel found that the replication of the complainant’s trademark in respondent’s domain name, together with the broad reputation of the complainant’s trademark for certain goods and products, left no other possible interpretation than that of bad faith:
“It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name “telstra.org.” 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.”
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003. See also Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009 (talk-city.com
used in bad faith because it captured Internet users looking for <talkcity.com>);
Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country
Walk, WIPO Case No. D2002-0582 (<poterybarn.com>
used in bad faith because it aimed at customers of <potterybarn.com>);
Oxygen Media, LLC v. Primary Source, WIPO
Case No. D2000-0362 (<0xygen.com> used in bad faith because it aimed
at customers of <oxygen.com>); Nintendo of America Inc. v. Max Maximus,
WIPO Case No. D2000-0588 (<gameb0y.com>
used in bad faith because it aimed at customers of <gameboy.com>); Yahoo!
Inc. v. Eitan Zviely, et al., WIPO Case
No. D2000-0273 (37 typographical variants used in bad faith to capture visitors
f. Here, the Respondent has, by using PFIZER’s trademark in its domain names, diverted Internet users to an on-line pharmacy selling PFIZER’s and other’s products, and intentionally created a likelihood of confusion with PFIZER’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s affiliated on-line pharmacy website.
g. Respondent is not, nor has it ever been, a representative of PFIZER or licensed to use the PFIZER mark. Respondent’s domain names were registered intentionally to misdirect customers looking for PFIZER’s sites. The domain names are intended to deceive PFIZER’s customers, and the sale of PFIZER products on the resulting website reinforces the deception. This conduct is bad faith and violates the UDRP.
2. The Panel finds that Respondent has used the domain names, in bad faith, for at least the following reasons:
Bad faith use is exemplified here by the following:
a. PFIZER and PFIZER FOR WOMEN are famous marks that are recognized worldwide by consumers and professionals.
b. Respondent, by using slight variations of PFIZER’s marks to divert
Internet users to an on-line pharmacy selling PFIZER’s and its competitors’
products, for financial gain, is deliberately causing confusion as to source,
sponsorship, affiliation or endorsement of the resulting website. See Williams-Sonoma,
supra, WIPO Case No. D2002-0582 (<poterybarn.com>
use in bad faith because it aimed at customers of <potterybarn.com>).
c. The deliberate diversion of Internet users who intend to access PFIZER’s
website constitutes bad faith, by creating initial interest confusion that takes
advantage of PFIZER’s goodwill. It is well-established in UDRP decisions
that “initial interest confusion” and the resultant misdirection
of Internet traffic to respondent is independently sufficient to establish bad
faith. See Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget
LM Ericsson, Sony Corporation v. Party Night Inc., WIPO
Case No. D2002-1128 (finding deliberate initial interest confusion is “sufficient
to establish bad faith”).
d. Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy.
e. Respondent’s selling of pharmaceuticals without requiring proof of
a physical examination by a physician, in connection with the unauthorized use
of Pfizer’s trademarks or slight variations thereof, is tantamount to
bad faith. See Aventis, Aventis Pharma SA. v. VASHA Dukes, WIPO
Case No. D2004-0276 (ruling Respondent’s sale of Complainant’s
pharmaceuticals without a prescription using Complainant’s trademark as
their domain name “may lessen the reputation associated with Complainants’
trademark” and weighs in favor of finding bad faith).
f. Respondent’s use of the domain names to promote the sale of products
in competition with PFIZER’s products constitutes bad faith. See Google,
Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO
Case No. D2000-1240 (finding webforwarding Internet users to a competitor
of Complainant constitutes bad faith use); Casio Keisanki Kabushiki
(Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO
Case No. D2003-0400 (use of domain name to sell goods of Complainant’s
competitors constitutes bad faith); Downstream Technologies, LLC v. Bartels
System GmbH, WIPO Case No. D2003-0088
g. 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 or services offered or sold via the resulting
websites. The Respondent’s use of domain names that are confusingly similar
to the PFIZER and PFIZER FOR WOMEN marks may also prevent or hinder Internet
users from accessing PFIZER’s informational and educational services on
PFIZER’s own websites by confusing and/or frustrating prospective users.
Once confused or frustrated, Internet users may stop searching for PFIZER’s
websites altogether. The Respondent’s purposefully deceptive domain names
anticipate, rely on and profit from this consumer confusion or mistake and constitute
bad faith use of the domain names.
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 names, <pfizerforwoman.com> and <wwwpfizerforwomen.com>, be transferred to the Complainant.
Terrell C. Birch
Dated: December 6, 2004