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Pfizer Inc. v. Bharat Gohil
Case No. D2005-1290
1. The Parties
Complainant is Pfizer Inc., New York, New York, United States of America, represented by Kaye Scholer LLP, New York, New York, United States of America.
Respondent is Bharat Gohil, Langhorne, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <viagraindia.com> is registered with OnlineNic,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2005. On December 14, 2005, the Center transmitted by e-mail to OnlineNic, Inc., a request for registrar verification in connection with the domain name at issue. On December 16, 2005, OnlineNic, Inc., transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 10, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2006.
The Center appointed Douglas M. Isenberg as the sole
panelist in this matter on January 18, 2006. 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 -- one of the world’s largest pharmaceutical manufacturers and sellers, with operations in more than 150 countries -- owns the trademark VIAGRA, including United States Reg. No. 2,162,548, which was issued on June 2, 1998, as well as numerous other registrations throughout the world. Complainant states that it has expended millions of dollars and extensive resources on research, development and marketing of VIAGRA brand sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction. Pfizer’s VIAGRA medication has received worldwide media recognition.
The domain name at issue in this proceeding, <viagraindia.com>
(the “Domain Name”), was registered on February 19, 2000, and is
currently registered by Respondent. According to the Complaint, the Domain Name
was not being used in connection with a website as of the date the Complaint
was filed, and the Panel independently observed that the Domain Name is not
being used with an active website at either “http://viagraindia.com”
or at “http://www.viagraindia.com” as of February 1, 2006.
5. Parties’ Contentions
Complainant contends that its VIAGRA medication was approved by the United States Food and Drug Administration (“FDA”) on March 27, 1998, and the mark has been used on or in connection with the sildenafil citrate product in the United States since April 6, 1998. Complainant contends that it and its affiliates own trademark registrations for the VIAGRA mark around the world, and Complainant provided a seven-page list of trademark registrations for VIAGRA that it states are “valid, unrevoked and uncancelled.”
Complainant contends that the FDA’s approval of the VIAGRA medication in 1998, was highly publicized, including a front-page article in The New York Times the following day. Complainant contends that the medication “has been the subject of intense media attention, public scrutiny and commentary throughout the world.”
Complainant contends that numerous UDRP decisions
have recognized its trademark rights in VIAGRA, citing Pfizer Inc v. CheapViagraStore,
WIPO Case No. D2005-0159; Pfizer Inc. v. Carlos
Rosario, WIPO Case No. D2005-0067; Pfizer
Inc v. Phillip Pizzurro, WIPO Case No.
D2004-0600; Pfizer Inc v. Generic Viagra Pills, WIPO
Case No. D2004-0592; Pfizer Inc v. Kent Gormat aka kgormat, WIPO
Case No. D2004-0591; Pfizer Inc v. RegisterFly.com, WIPO
Case No. D2004-0586; Pfizer Inc. v Order Viagra Online, WIPO
Case No. D2002-0366; Pfizer, Inc. v. Martin Marketing, WIPO
Case No. D2002-0793; Pfizer Inc. v. Myviagra / Wilbert Smith, WIPO
Case No. D2002-0463.
Complainant contends that Respondent registered the Domain Name “seeking to capitalize on the fame of the Complainant’s VIAGRA trademark, and recognizing the importance of the Internet as a means of communication between the Complainant and the public.” Complainant contends that the Domain Name apparently has never been used in connection with an active website, citing “no matches” for “http://www.viagraindia.com” in the Internet Archive’s Wayback Machine, a reputable source for tracking the history of some content on the Internet.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, Paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the registrations cited by Complainant (and the certificate for United States Reg. No. 2,162,548 provided as an exhibit), the Panel is convinced that Complainant has rights in the mark VIAGRA.
As to whether the Domain Name is identical or confusingly similar to Complainant’s VIAGRA trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “viagraindia”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).
The Domain Name is not identical to a trademark in which Complainant has rights,
given the presence of the word “india” in the Domain Name. However,
Complainant need prove only that the Domain Name is “confusingly similar”
to a mark in which Complainant has rights. In many cases under the Policy, the
addition of a geographic name to a well-known trademark, as here, “is
insufficient to avoid confusing similarity,” as one panel wrote in a decision
involving the same trademark at issue in this case and the domain name <europeanviagra.com>.
Pfizer Inc. v. Carlos Rosario, WIPO Case No.
D2005-0067. The Panel in the instant case agrees with the panel in the <europeanviagra.com>
case, which said: “The term VIAGRA remains the dominant, distinctive component
of the Domain Name. When the term ‘European’ is used, something
more is required to indicate what is suggested. The combined expression, EuropeanViagra,
will almost certainly be taken as suggesting a website or other URL which is
a European source for Viagra.”
Therefore, Complainant has proven that the Domain Name is confusingly similar to Complainant’s VIAGRA mark, and Complainant has proven the first of the three elements required by the Policy.
B. Rights or Legitimate Interests
In accordance with prior decisions under the Policy, “a complainant is
required to make out an initial prima facie case that the respondent
lacks rights or legitimate interests. Once such prima facie case is made,
respondent carries the burden of demonstrating rights or legitimate interests
in the domain name. If the respondent fails to do so, a complainant is deemed
to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO
Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph
(visited February 1, 2006).
Accordingly, as a result of Complainant’s supported allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for the purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Although Complainant does not state with specificity which, if any, of the
four factors listed above exists and is evidence of bad faith here, this list
is not exhaustive, and the Panel agrees with a prior decision under the Policy
finding bad faith and also involving the VIAGRA trademark that “[i]t is
absolutely inconceivable to this Panel that, when the Respondent chose and registered
the contested domain name… it had not been fully aware of the Complainant’s
mark ‘VIAGRA’ and particularly the widespread reputation which that
mark had attained as a result of the Complainant’s widespread marketing
efforts for its sildenafil citrate product and the extensive resulting publicity.”
Pfizer Inc. v. Order Viagra Online, WIPO
Case No. D2002-0366.
The Panel in the instance case also agrees with the statement from a previous decision under the Policy, cited by Complainant that “[r]egistration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights is tantamount to bad faith registration and use pursuant to Policy 4(a)(iii).” Diners Club International Ltd. v. Cameron Jackson, National Arbitration Forum Case No. FA502782 (August 4, 2005).
Therefore, the Panel is convinced of the existence of bad faith, and Complainant
has proven the third of the three elements required by the Policy.
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 <viagraindia.com> be transferred to Complainant.
Douglas M. Isenberg
Dated: February 1, 2006