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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Jeff Ferris

Case No. D2006-1242

 

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 Jeff Ferris, Pensacola, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <viagraring.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2006. On September 29, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On September 29, 2006, Register.com transmitted by email 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 October 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2006. The Response was filed with the Center on October 24, 2006.

The Center appointed John R. Keys, Jr. as the Sole Panelist in this matter on November 7, 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 Pfizer, Inc. is a large pharmaceutical enterprise operating in more than 150 countries around the world. Among other products, Pfizer developed, produces and distributes sildenafil citrate, a medication used to treat erectile dysfunction, under the brand name VIAGRA. The United States Food and Drug Administration approved Pfizer’s sildenafil citrate on March 27, 1998. Pfizer has used the VIAGRA mark in connection with its sildenafil citrate product in the United States of America since April 6, 1998.

On June 2, 1998, the United States Patent and Trademark Office registered VIAGRA as a trademark on the Principal Register of the United States, Reg. No. 2,162,548, in the name of Pfizer, Inc. Pfizer, or a wholly-owned subsidiary, also owns trademark registrations for the VIAGRA mark in numerous countries around the world. In addition, Pfizer owns and operates a website at “www.viagra.com”.

Pfizer’s VIAGRA brand sildenafil citrate product has received substantial publicity and is well known in the United States and around the world. By reason of this publicity and Pfizer’s own efforts to promote its product, the VIAGRA trademark has become famous in the United States of America and throughout the world as designating Pfizer’s product for treating erectile dysfunction.

On October 26, 2005, Respondent Jeff Ferris registered the domain name <viagraring.com>. Respondent uses the domain name in connection with a website on which he offers for sale a line of rings which feature a compartment in which a VIAGRA pill, or any other type of pill, could be stored. The site contains the text “These rings have a secret compartment with enough space to store lots of different things . . . What’s your poison?” below which is a button which can link the user to another site, called ViaMedic, which offers for sale VIAGRA, Cialis and Levitra, all medications for erectile dysfunction, as well as other products such as Propecia, a treatment for male pattern hair loss.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent’s domain name is identical or confusingly similar to Complainant’s registered VIAGRA trademark. The domain name incorporates Complainant’s mark in its entirety and adds the generic term “ring”. The addition of the descriptive term does not create a different mark and is not sufficient to avoid consumer confusion with Complainant’s famous and distinctive mark.

Complainant contends that Respondent has no rights or legitimate interests in the name <viagraring.com>. Respondent registered the domain name knowing of Complainant’s mark but without authorization or license from Complainant. Respondent uses the domain name to sell rings intended to be used to store VIAGRA or other products that compete with VIAGRA, and his site links to an online pharmacy which promotes sale of VIAGRA and products that compete with VIAGRA. Respondent earns commissions from the pharmacy by providing the link from his site to that of the pharmacy.

The unauthorized use of a registered trademark to sell unrelated products does not constitute a legitimate interest in the domain name or use of a domain name in connection with a bona fide offering of goods and services.

Complainant further contends that Respondent registered and is using the domain name <viagraring.com> in bad faith citing, first, the fact that Respondent is using the website to promote the sale of VIAGRA and unrelated, competing products.

Respondent had to know that he was using another’s famous trademark in registering the domain name at issue and intended to trade on Complainant’ good will in the VIAGRA mark. There is intent to mislead the public as to a connection between Complainant’s product and Respondent’s product when in fact there is none. Respondent is using his domain name intentionally to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a product or service on Respondent’s website. This evidences bad faith registration and use of the domain name.

Respondent’s use of his domain name and website to advertise for sale products that are unrelated to and compete with Complainant’s products is additional evidence of bad faith registration and use.

Respondent’s lack of rights or legitimate interest in the domain name evidences bad faith registration.

B. Respondent

Respondent filed a response to the Complaint which response is very basic and does not specifically address the elements of the Complaint. Respondent contends that he is selling jewelry on his website, not “an ingestible substance”, and that his product and domain name are not confusingly similar to those of Complainant. His intention is to use the domain name and the website to sell his jewelry, and he has no intention to try to sell the domain name to Complainant.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) Respondent’s 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) Respondent’s Domain Name has been registered and is being used in bad faith.

The Panel considers each element in order.

A. Identical or Confusingly Similar

Complainant clearly possesses established rights in the registered VIAGRA trademark. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072. The mark is both a strong and famous mark in the United States of America and in much of the world. Id. Such famous marks are generally held to be deserving of strong protection. Id.; 2 J. Thomas McCarthy on Trademarks and Unfair Competition, § 11:78 (4th ed. 2005).

Respondent has incorporated Complainant’s mark in his domain name in it entirety. “The intentional registration of a domain name knowing that the second level domain is another company’s valuable trademark weighs in favor of likelihood of confusion”. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9th Cir. 1999).

Respondent adds to Complainant’s mark the common, generic word “ring”. “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 2005). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. The principle that likelihood of confusion cannot be avoided by the addition of descriptive content has been found to include the addition of entire words to a famous trademark. See The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (“Coca Cola” and “cocacoladrinks” held confusingly similar); America Online. Inc. v. Anson Chan, WIPO Case No. D2001-0004, citing Sporty’s Farm LLC. v. Sportsman’s Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo, Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195; America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (“aolcasino” found confusingly similar to AOL mark).

More specifically, the addition of generic or descriptive terms to Complainant’s VIAGRA trademark in domain names has been held by other WIPO Panels not to create a new or different mark and not to obviate confusion between the name and the trademark. See Pfizer Inc. v. Ian Herman, WIPO Case No. D2004-0597 (finding <shopgenericviagra.com> confusingly similar to VIAGRA); Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870 (finding <viagraconfidential.com> confusingly similar to VIAGRA).

For Internet users familiar with the name VIAGRA who might be searching for information concerning that product, Respondent’s domain name suggests sponsorship by, or a strong association with, Complainant. That suggestion is false and misleading. It is also reasonable to infer that the potential confusion is intentional on the part of Respondent. Respondent is attempting to divert potential customers from Complainant’s website to its own, in order to sell Respondent’s products and to direct users to another website where they might purchase Complainant’s product as well as competing products.

Respondent’s contention that the domain name is not confusingly similar because he is selling jewelry, not “an ingestible substance” misses the critical point. The domain name is confusingly similar to Complainant’s trademark, implying an association, sponsorship, or endorsement of Respondent’s site and product which simply does not exist.

The Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s VIAGRA trademark within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant must establish that Respondent has no rights or legitimate interests in the domain name. Policy, paragraph 4(a)(ii) of the Policy. As a practical matter, this element places some burden of persuasion on the Respondent.

Respondent does not contend that it is commonly known by the domain name, that it was authorized or licensed by Complainant to use its trademark in the domain name or that it is making a legitimate noncommercial or fair use of the domain name. See Policy, paragraphs 4(c)(ii) and (iii) of the Policy. Affording Respondent the benefit of the doubt, the Panel reads his response to assert that he is using the domain name in connection with a bona fide offering of goods or services, namely the sale of jewelry. See Policy, paragraph 4(c)(i) of the Policy.

Respondent clearly knew of the VIAGRA trademark before registering the domain name at issue and consciously chose to use that mark in launching his website and line of VIAGRA rings. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072. Where a mark is famous, as VIAGRA is, it is “not one traders would legitimately choose unless seeking to create the impression of an association” with Complainant. Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, a trader such as Respondent here could have no legitimate interest in the VIAGRA mark. Id. The unlawful use of another’s trademark cannot be considered bona fide, i.e. in good faith, with respect to an offering of goods. Alta Vista Company v. James A. Maggs, NAF Case No. FA0095545 (2000).

Respondent’s claim to a bona fide offering of goods is further undercut by the fact that the rings Respondent offers for sale on his website bear no particular relationship to the VIAGRA product. They are merely large rings with a “secret compartment” which can be used to store a pill or pills. This could be VIAGRA or, as Respondent advertises, it could be Cialis or Levitra, both of which compete with VIAGRA, or any other type of pill for that matter. Respondent is using Complainant’s famous trademark to create a false association between Complainant’s product, which is used to treat a sexual dysfunction, and Respondent’s otherwise generic rings which have essentially nothing to do with VIAGRA as such, or with any other particular pharmaceutical. Pfizer Inc. v. NA, WIPO Case No. D2005-0072. This use of another’s trademark to create interest in one’s product that would otherwise not exist does not, in the Panel’s view, constitute a bona fide offering of goods so as to confer upon Respondent legitimate interest in his VIAGRA-based domain name. See Ferrari S.p.A. v. ASDAQ.com, WIPO Case No. D2004-0342.

Finally, the fact that Respondent’s website also advertises and contains a link to another site, an online pharmacy called <viamedic.com>, which promotes the sale of VIAGRA as well as the competing products Cialis and Levitra, and other pharmaceuticals, further diminishes the bona fides of Respondent’s offering using the VIAGRA trademark. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870.

Based on the evidence, the Panel concludes that Respondent is not using his domain name in connection with a bona fide offering of goods and that he does not have rights to or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Finally, Complainant must show that Respondent both registered and is using the domain name in bad faith. Policy, paragraph 4(a)(iii) of the Policy.

There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). That is the case here. Respondent necessarily knew of Complainant’s famous VIAGRA trademark when he used the mark in registering a domain name he would then use to sell products unrelated to Complainant or Complainant’s product. Respondent clearly registered his domain name, appropriating Complainant’s famous trademark, in order to suggest to the Internet user a connection between Complainant’s product and Respondent’s product line which simply did not exist. This is misleading and supports a finding of bad faith registration. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072.

Respondent is also using the domain name in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith use of a domain name exists where the name is intentionally used to attract Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the products promoted on the website. See Casio Keisanki Kabushiki Kaisha v. Jongchan Kim, WIPO Case No. D2003-0400. Respondent here uses the VIAGARA mark to draw users to his website where he offers for sale products unrelated to Complainant or Complainant’s product and, for additional commercial gain, advertises an online pharmacy which sells a range of pharmaceutical products, including Complainant’s product but also including other competing and non competing products. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088. Respondent clearly is creating and intending to exploit the likely confusion arising from his use of Complainant’s famous trademark to attract Internet users to his website for his own commercial gain.

The Panel thus concludes that Respondent both registered and is using the domain name <viagraring.com> in bad faith and that Complainant thus has established the third and last element of its case.

 

7. Decision

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, <viagraring.com>, be transferred to the Complainant.


John R. Keys, Jr.
Sole Panelist

Dated: November 21, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1242.html

 

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