All these domain names are registered with Key-Systems GmbH, Bexbach, Germany (domaindiscount24.com).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2003. On August 8, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain names at issue. On August 11, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming in particular that the Respondent was listed as the registrant of the domain names at issue and providing the contact details for the administrative, billing, and technical contacts. 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 on August 15, 2003. However, due to a clerical error, the notification of the Complaint did not reach the Respondent. For this reason, the Center formally notified a second time the Respondent of the Complaint, and the proceedings commenced on September 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2003.The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2003.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on October 10, 2003. 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
The Complainant is one of the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. The Complainant discovers, develops, manufactures and markets prescription medicines for humans and animals, as well as many other consumer products. In 2001, the Complainant reported revenues of $32.3 billion, with eight of its pharmaceutical products attaining sales of at least $1 billion each.
The Complainant is the holder of trademarks consisting of the sole word PFIZER or combined with a logo throughout the world. For example, the Complainant owns U.S. Trademark Registration No. 501,762, issued August 24, 1948, for PFIZER and U.S. Trademark Registration No. 626,088, issued May 1, 1956, for PFIZER combined with a logo in international Class 5.
The Complainant also is the holder of the following trademarks:
- PFIZER FOR LIVING, registered on November 5, 2002, (U.S.P.T.O, Reg. No. 2,645,934) for printed publications, namely, newsletters and booklets for use by patients regarding health awareness, health information, and disease prevention and treatment, in international Class 16; this trademark was first used in commerce on November 30, 1997.
- PFIZER FOR LIVING, registered on April 22, 2003, (U.S.P.T.O, Reg. No. 2,709,414) for provision of health care services, namely, providing information to patients regarding health awareness, healthy living, and disease prevention and treatment; provision of an interactive computer database featuring interactive health management tools via a global computer network for self-monitoring by patients of heart rate, body weight, nutrition, exercise and medication, in international Class 44; this trademark was first used in commerce on November 30, 1998.
The Complainant also owns and operates a website under the domain name <pfizer.com> that was registered on April 28, 1992, and another one under the domain name <pfizerforliving.com> that was registered on December 8, 1997.
The Respondent registered the domain names:
- <pfiserforliving.com>, <pfzerforliving.com> and <pfizerliving.com> on March 8, 2003;
- <pfiezer.com>, on September 13, 2002.
5. Parties’ Contentions
A. Complainant
1. Identical of Confusingly Similar
The Complainant contends that the domain names are confusingly similar to its trademarks, as the mere differences between the domain names and its trademarks are the additions of a minor misspelling, which does not exclude the likelihood of confusion.
2. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not and has never been one of its representatives or one of its licensees. The Complainant contends that there is no doubt that the Respondent had knowledge of its trademarks. For these reasons, the Complainant considers that the Respondent has no rights or legitimate interests on the domain names at issue.
3. Registered and Used in Bad Faith
The Complainant considers that the domain names were registered and are being used in bad faith for the following reasons:
- The Complainant’s trademarks have a strong reputation around the world;
- Though the Respondent was aware of the PFIZER and PFIZER FOR LIVING trademarks, it deliberately registered the domain names at issue with only a minor spelling variant in order to confuse the consumers and to profit from such confusion;
- The Respondent uses the domain names as forwarding address to pornographic and gambling websites;
- The domain names were registered to facilitate dilution, cybersquatting or infringement of the Complainant’s trademarks;
- By using the domain names, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademarks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to Policy, paragraph 4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Though not identical, there is no doubt that the domain names at issue are confusingly similar with the Complainant’s trademarks. Each domain name contains one or more misspellings of the Complainant’s trademarks that are predictably likely to be typed by some Internet users. Theses misspellings are the following ones:
- for <pfiezer.com>, the addition of an "e";
- for <pfiserforliving.com>, the addition of an "s" instead of a "z";
- for <pfzerforliving.com>, the omission of an "i";
- for <pfizerliving.com>, the omission of the word "for."
Accordingly, the Panel finds that Policy, paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
According to Policy, paragraph 4(b) (ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.
In WIPO Case No. D2000-0624, the Panel
stated: "Where a complainant has asserted that the respondent has no rights
or legitimate interests in respect of the domain name, it is incumbent upon
the respondent to come forward with concrete evidence rebutting this assertion."
In this case, the Respondent does not bring any evidence that would demonstrate any legitimate interest or right in the domain name as he did not proceed. More specifically, the Respondent does not demonstrate that:
(i) before any notice to him of the dispute, it used or made preparations to use the domain names or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it is commonly known by the domain names, even if it has acquired no trademark or service mark rights; or
(iii) it is 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.
Obviously, the Respondent had knowledge of the Complainant’s trademarks. His
choice for such domain names cannot be explained but as a misappropriation of
the Complainant’s trademarks. As stated in WIPO
Case No. D2000-0847, "use which intentionally trades on the fame of
another cannot constitute a bona fide offering of goods or services […].
To conclude otherwise would mean that a Respondent could rely on intentional
infringement to demonstrate a legitimate interest, an interpretation which is
obviously contrary to the intent of the Policy."
For this reason, the Panel admits the Complainant’s contentions and considers Policy, paragraph 4(a)(ii) to be fulfilled.
C. Registered and Used in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Paragraph 4(b)(iv) of the Policy provides for a finding of bad faith where "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."
The Complainant contends that the domain names at issue re-direct the users to "http://amaturevideo.nl/hanky-panky-party.html" or "http://hanky-panky-college.com," which contain sexually explicit material, or "http://yes-yes-yes.com," which displays MP3 music and a gaming advertisement. Based upon its general power (Rules, paragraph 10(a)), the Panel checked the websites associated with the domain names at issue. None of these websites re-directed the user to the mentioned websites. No websites were actually associated with these domain names. However, considering the fact that the Respondent did not proceed and did not rebut the Complainant’s assertions, the Panel considers based upon Rules, paragraphs 14(b) and 15(a), these assertions to be true, all the more than a subsequent modification to the websites associated with the domain names at issue by the Respondent cannot be excluded.
Considering the fact that the Respondent must have known of the Complainant’s trademarks and reputation when it registered the domain names, and having regard to all the evidence submitted to the Panel, there can be no plausible explanation for Respondent’s activities in establishing the domain names other than to attract Internet users to its locations by relying on their confusion with the famous trademarks of the Complainant, and to take advantage of internet users typing an incorrect address; there is no doubt that the Respondent has done so for commercial gain. The Panel finds registration in bad faith to be proved in the terms of Paragraph 4(a)(iii) of the Policy.
The Panel finds that Policy, paragraph 4(a)(iii), has been satisfied.
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 names <pfiezer.com>, <pfiserforliving.com>, <pfzerforliving.com> and <pfizerliving.com> be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Dated: October 15, 2003
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