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and Mediation Center
Pfizer Inc v. LTD.
Case No. D2005-0157
1. The Parties
The Complainant is Pfizer Inc, of New York, New York, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is LTD., of Carlita, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <bioviagra.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2005. On February 11, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On February 11, 2005, Dotster, Inc. transmitted by email to the Center its verification response confirming that:
(a) it was the Registrar for <bioviagra.com>;
(b) the Respondent is listed as the current registrant;
(c) the Respondent’s address and administrative and technical contacts are as set out in the Complaint;
(d) the UDRP applies to the domain; and
(e) the language of the registration agreement is English.
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 23, 2005. In addition to notification to the Respondent’s contact details as confirmed by Dotster Inc., the Center also forward notification to the several email addresses listed on the website to which the domain name <bioviagra.com> resolved. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2005.
The Center appointed Warwick A. Rothnie as the Sole Panelist in this matter on April 11, 2005. 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.
On April 14, 2005, the Center received an email from email@example.com which stated:
“THE WEBSITE www.bioviagra.com will be taken
off line within the next 24 - 48 hours…..”
4. Factual Background
The Complainant asserts the following facts which have not been disputed. Accordingly, consistent with the Panel’s obligation under the Rules (see paragraph 15(a)), the Panel treats these facts as sufficiently proved for the purposes of this Complaint.
The Complainant, Pfizer Inc., is one of the largest pharmaceutical enterprises in the world, operating in more than 150 countries. It claims to have spent millions of dollars on research, development and marketing of VIAGRA brand sildenafil citrate which was the first oral medication approved for the treatment of erectile dysfunction, a condition that is claimed to afflict 20 million men in the USA and 100 million men around the world.
The Complainant obtained marketing approval for its VIAGRA medication in the USA from the FDA on March 27, 1998, and it went on sale there on April 6, 1998.
VIAGRA has been registered as a trademark in the USA, No. 2,162,548, since June 2, 1998, in respect of a compound for treating erectile dysfunction. Annex 4 to the Complaint lists more than 6 pages of trademark registrations for VIAGRA in other countries including Trademark No. 1976 registered in Antigua with effect from July 2, 1998.
The Respondent registered the <bioviagra.com> on February 23, 2003.
Annexes 6 and 7 to the Complaint are print outs from the website to which <bioviagra.com> resolved, made on February 2, 2005, by the Complainant’s lawyers. The website to which <bioviagra.com> resolved proclaims that it is the “Home of the $1Viagra” (original emphasis).
It offered free worldwide shipping and stated “BioViagra.com is the largest referrer of WHOLESALE Viagra in the world. We have relationships with some of the worlds largest suppliers and can bring you genuine Sildenafil Citrate (the actual drug name of Viagra) from as little $1 per dosage”. (sic) (original emphasis)
As noted above, the Respondent did not submit a reply
to the Complaint and, following appointment of the Panel, disabled the website.
5. Discussion and Findings
As the Center has communicated the Complaint to the contact details which the Registrar for the Domain Name has confirmed are the current contact details for the Respondent, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention. The Panel is reinforced in that view by the email from firstname.lastname@example.org, one of the email addresses posted on the website which <bioviagra.com> resolved to when the Complaint was filed, announcing the intention to disable the website.
There being no Response, rules 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as rule 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The 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.
The Panel considers each of these in turn below.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights.
At the least, the Complainant has demonstrated ownership of the registered trademarks referred to in section 4 above. As noted, these cover both Antigua, which is the location of the Respondent, and the USA which, from the FAQ materials included in Annex 7 to the Complaint, clearly appears to be a target market for the website <bioviagra.com>.
The question of resemblance for the purposes of the Policy requires a comparison
of the Domain Name to the trademark rights which have been proved. This is a
different test to that involved in trademark law where questions of the goods
or services covered by the trademark rights can be relevant to the likelihood
of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini,
Cupcake City and Cupcake Patrol, WIPO
Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,
WIPO Case No. D2002-0420. The question
of the scope of the Complainant’s trademark rights may of course be relevant
to the issues under paragraphs 4(b) and 4(c).
Ultimately, this is a matter of impression. <bioviagra.com> incorporates the whole of the Complainant’s registered trademark “VIAGRA”. It differs only in the addition of the descriptive term “bio” and the addition of the gTLD, “.com”. The impression conveyed by <bioviagra.com> as a whole is that consumers are likely to associate it with trademark “VIAGRA”. The distinctive component of <bioviagra.com> is the Complainant’s registered trademark, “VIAGRA”, the other elements of the disputed Domain Name do not add anything distinctive to that. The essential component, the memorable part, is the term “Viagra”, a coined or invented term.
Accordingly, the Panel finds that <bioviagra.com> is confusingly similar to the Complainant’s registered trademark rights.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
(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 noncommercial 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.
The instances are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
Here, the Complainant claims that “VIAGRA” is an invented or fancy word. It is very well-known throughout the world. It is registered for the very products that the Respondent is offering for sale from, or via, its website. The Complainant also denies that it has ever authorised the Respondent to use the trademark, “VIAGRA”.
<bioviagra.com> is not obviously derived from the name of the Respondent, “LTD.”, that precludes factor 4(c)(ii).
The Respondent was using <bioviagra.com> solely for the purpose of securing commercial sales of a medicine: it charged a fee to refer customers to suppliers which would offer cheap prices for drugs, that precludes factor 4(c)(iii).
The FAQ reproduced in Annex 7 to the Complaint under the heading “Are you selling real Viagra/Sildenafil Citrate?” stated:
“The overseas supplier of the drug will always deliver the branded form of Viagra whenever possible. However, during times of high demand or limited availability the supplier reserves the right to substitute branded Viagra for its chemically identical generic form (Sildenafil Citrate) [sic] which may have a different brand name or just be a generic form (but is still Viagra in all but name). The vast majority of the time you will receive the branded Viagra and not a chemically identical generic form. In either case, the drug is exactly the same has the exact same effect on erectile dysfunction.” (emphasis supplied)
The Complainant points to the statement on the homepage (Annex 6) that BioViagra.com “can bring you genuine Sildenafil Citrate (the actual drug name of Viagra) …” and the reservation of a right to supply generic sildenafil citrate for “branded” VIAGRA products as establishing that the Respondent has neither legitimate rights nor is making a bona fide offering of goods and services. The Complainant also states that no form of generic sildenafil citrate has been authorised for sale by the Federal Drug Agency in the USA.
The Respondent has not contested that latter assertion.
There is no way for the Panel to test the assertion that in the “vast
majority of the time” customers will receive genuine VIAGRA branded product.
The Respondent has not sought to defend it. Moreover, in this case, the supplier
has reserved the unilateral right to substitute other brands, or generic product,
for VIAGRA brand product. This factor and the uncontested claim that generic
sildenafil citrate is not licensed for sale in the USA, one of the clear target
markets for the website, distinguish this case from cases like Oki Data Americas
Inc. v. ASD Inc., WIPO Case No. D2001-0903,
Philip Morris Inc. v. Alex Tyspkin, WIPO
Case No. D2002-0946 and, more recently, Dr. Ing. h.c. F. Porsche AG v.
Del Fabbro Laurent, WIPO Case No. D2004-0481.
Those cases established four cumulative requirements that must be satisfied
to found the bona fide offering of goods “defence”:
(1) Respondent must actually be offering the goods or services at issue. E.g.,
World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,
WIPO Case No. D2000-1306.
(2) Respondent must use the site to sell only the trademarked goods; otherwise,
it could be using the trademark to bait Internet users and then switch them
to other goods. Nikon, Inc. v. Technilab, WIPO
Case No. D2000-1774; Kanao v. J.W. Roberts Co., CPR Case No. 0109.
(3) The site must accurately disclose the registrant’s relationship with
the trademark owner; it may not, for example, falsely suggest that it is the
trademark owner, or that the website is the official site, if, in fact, it is
only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weatherman,
Inc., WIPO Case No. D2001-0211; R.T.
Quaife Engineering v. Luton, WIPO Case
No. D2000-1201; Easy Heat, Inc. v. Shelter Prods., WIPO
Case No. D2001-0344.
(4) The Respondent must not try to corner the market in all domain names, thus
depriving the trademark owner of reflecting its own mark in a domain name. Magnum
Piering, Inc. v. Mudjackers, WIPO Case
Rather, like the Respondent in Experian Information Solutions Inc. v Credit
Research Inc., WIPO Case No. D2002-0095,
the website operated at “www.bioviagra.com” fails at least the second
requirement. Also, it may have failed the third requirement as it is less than
frank about the source of the products offered for sale:
they are “manufactured overseas in a country where medicines are not taxed, production prices and labour costs are very low, and the exchange rate between it and the west (i.e. USA, Europe) is very much in your favour”; and
“the manufacturer of these medicines and all of the drugs provided have had to conform to International Pharmacy Manufacturing Regulations and are of the highest quality and chemically identical to what you can buy in the USA or Europe but at a fraction of the price.”
It is far from clear what “all of the drugs provided” refers to or how the manufacturer can be supplying genuine, VIAGRA brand product most of the time but in “times of high demand or limited availability” competing brands or generic sildenafil citrate.
In light of these considerations, therefore, the Panel concludes that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed Domain Name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed Domain Name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
b. Evidence of Registration and Use in Bad Faith.
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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.
These are examples of “bad faith” only and not an exhaustive listing as they are listed “without limitation”.
As already discussed, the Respondent used <bioviagra.com>
to attract customers for sildenafil citrate to the Respondent’s website
where both (apparently) Viagra-brand sildenafil citrate and one or more competing
products were offered for sale. It registered the Domain Name well after the
Complainant acquired its rights and with knowledge of the Complainant’s
well-known “VIAGRA” trademark. Accordingly, in line with the decisions
already referred to in relation to paragraph 4(b) above, the Panel finds that
the Domain Name has been registered and used in bad faith.
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, <bioviagra.com>, be transferred to the Complainant.
Warwick A Rothnie
Dated: April 21, 2005