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 RegisterFly.com - Ref# 12400771, Whois Protection Service-ProtectFly.com,
New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <freegenericviagra.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2005. On February 10, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On February 11, 2005, eNom 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 10, 2005. The Center verified that the Complaint, together with the amendment to 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 March 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2005.
The Center appointed Jeffrey M. Samuels as the Sole
Panelist in this matter on April 18, 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.
4. Factual Background
Complainant Pfizer Inc. developed and markets VIAGRA® brand sildenafil citrate, the first approved oral medication for the treatment of erectile dysfunction. Pfizer owns a U.S. trademark registration (No. 2,162,548) for the VIAGRA mark. See Exhibit 3 to Complaint. The mark is also the subject of numerous registrations in other countries. See Exhibit 4 to Complaint.
First marketed in 1998, VIAGRA has enjoyed great commercial success and has been the subject of countless articles and other forms of publicity. Pfizer owns and operates a website at “www.viagra.com”, which is visited by a large number of consumers.
The domain name in dispute, <freegenericviagra.com>,
was registered by Respondent on or about July 25, 2004. At such site, consumers
are offered “FREE” generic viagra. According to the site, consumers
need only pay a “small” shipping fee for the generic viagra.
5. Parties’ Contentions
A. Complainant
Pfizer contends that the domain name wholly incorporates the VIAGRA mark and is identical to such mark but for the addition of the common terms “free” and “generic”.
Complainant argues that Respondent has no rights or legitimate interests in the domain name. It notes that Complainant’s adoption and use of the VIAGRA mark precedes the Respondent’s registration of <freegenericviagra.com> and contends that Respondent clearly had knowledge of the VIAGRA mark prior to registration of the domain name. Respondent, Complainant asserts, is not and never has been a representative of Complainant or licensed to use the VIAGRA mark.
Pfizer indicates that Respondent also uses the <freegenericviagra.com> name in an attempt to earn commissions on sales of “Generic Viagra”. According to the “Affiliate” page of the “www.freegenericviagra.com” website, “www.freegenericviagra.com” is affiliated with GENBUCKS, which proclaims, “Not only do you make 30% of the total order value, including shipping, plus all that customers future purchases but you also make 10% of any referral earnings, from advertisers who have joined under you!!” See Exhibit 8 to Complaint.
Pfizer maintains that such use of the VIAGRA mark 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.
With respect to the requirement of “bad faith” registration and use, Pfizer contends that: (1) the VIAGRA mark is strong and has a worldwide reputation; (2) although Respondent clearly knew of Pfizer’s registration and use of the VIAGRA mark prior to registering the disputed domain name, Respondent, nevertheless, wholly incorporated the mark as the predominant and recognizable portion of its domain name; (3) that, as result of Respondent’s use of the VIAGRA mark in the domain name, internet users would be attracted to Respondent’s website in the belief that it has some connection with Complainant’s trademark as to source, affiliation or endorsement; (4) Respondent advertises sildenafil citrate as “Generic Viagra” in an attempt to compete with the genuine VIAGRA® product; (5) because Respondent has no rights or legitimate interests in the use of <freegenericviagra.com>, it can be concluded that the domain name was registered to facilitate dilution, cybersquatting, or infringement of Pfizer’s VIAGRA mark; and (6) upon information and belief, by registering the domain name, Respondent intends to attract for financial gain internet users to its website by creating a likelihood of confusion..
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name, <freegenericviagra.com>,
is confusingly similar to the VIAGRA mark. The domain name incorporates in full
the well-known VIAGRA mark. The addition of the generic or descriptive terms
“free” and “generic”, as well as the inclusion of the
top level domain designation “.com” does not avoid a determination
of confusing similarity. See, e.g., Pfizer Inc. v. Ian Herman, WIPO
Case No. D2004-0597, (“It is an established principle that the mere
addition of a generic term does not create a different trademark in which the
respondent has rights and cannot be considered sufficient to avoid confusion
between the domain name and the complainant’s trademark” (<shopgenericviagra.com>
held confusingly similar to VIAGRA)).
The Panel further determines that Complainant, as a result of its use of and registrations covering the VIAGRA mark, has rights in such mark.
B. Rights or Legitimate Interests
The Panel concludes that the evidence does not establish that Respondent has
any rights or legitimate interests in the disputed domain name. None of the
circumstances set forth in paragraph 4(c) of the Policy has been established.
Under the facts of this case, Respondent may not be found to have used the domain
name in connection with a bona fide offering of goods and services. See,
e.g., Pfizer Inc. v. Juan Gonzales, WIPO
Case No. D2004-0589, (respondent had no rights or legitimate interests in
<generic-viagra-online.com>); Pfizer Inc. v. The Magic Islands, WIPOCase No. D2003-0870 (respondent did not have rights or legitimate interests
in using <viagraconfidential.com> to sell alleged generic version of VIAGRA);
Nikon, Inc. v. Technilab, Inc., WIPO
Case No. D2000-1774, (holding that respondent’s use of trademark owner’s
mark to promote and sell competitive goods does not constitute legitimate use).
C. Registered and Used in Bad Faith
Finally, the Panel determines that the disputed domain name was registered
and is being used in “bad faith”. By using the domain name <freegenericviagra.com>,
Respondent is intentionally attempting to attract for commercial gain internet
users to its site by creating a likelihood of confusion as to the source or
sponsorship of such site and/or of the products offered for sale at such site,
within the meaning of paragraph 4(b)(iv) of the Policy. Further, given Respondent’s
sale at its site of a generic version of VIAGRA, the Panel finds that Respondent
registered the domain name primarily for the purpose of disrupting the business
of a competitor, within the meaning of paragraph 4(b)(iii) of the Policy.
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 <freegenericviagra.com> be transferred to the Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: May 2, 2005
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