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 Managed Networks, Sarasota, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <half-price-viagra.com> is registered with Tucows.
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 Tucows a request for registrar verification in connection with the domain name at issue. On February 11, Tucows 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. 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 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2005.
The Center appointed Andrew Mansfield as the Sole
Panelist in this matter on March 24, 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’s VIAGRA® (sildenafil citrate) medication
for erectile dysfunction was approved by the United States Food and Drug Administration
(the “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 is the owner of United States Trademark Registration
No. 2,162,548 for the trademark VIAGRA. The VIAGRA trademark registration was
issued on June 2, 1998 on the Principal Register maintained by the United States
Patent and Trademark Office. Complainant also has secured trademark rights to
VIAGRA around the world in many national jurisdictions.
5. Parties’ Contentions
A. Complainant
Complainant asserts that VIAGRA is famous worldwide as designating Complainant’s sildenafil citrate medication. The term VIAGRA is a coined term and is a fanciful designation. The VIAGRA trademark is universally recognized and relied upon as identifying Complainant as the sole source of the drug, and as distinguishing Pfizer’s product from the goods and services of others. As a result, the VIAGRA trademark has acquired substantial goodwill and is an extremely valuable commercial asset. Complainant operates a website at “www.viagra.com”.
Complainant asserts that the domain name <half-price-viagra.com> is confusingly similar to VIAGRA. The registration was made on June 29, 2003, without authorization. The Respondent’s domain name (i) wholly incorporates the VIAGRA trademark; (ii) is identical to the VIAGRA mark but for the addition of the common terms “half” and “price”; and (iii) is so clearly similar to Complainant’s VIAGRA mark and tradename that it is likely to cause confusion among Complainant’s customers and the consuming public.
Complainant contends that the Respondent has no legitimate use for a website with the domain name <half-price-viagra.com>. The Complainant’s adoption and use of the VIAGRA mark precedes the Respondent’s registration of the disputed domain name on or about June 29, 2003. The Respondent clearly had knowledge of Complainant’s famous VIAGRA trademark prior to registration of the disputed domain name, as evidenced by the fact that it incorporated the famous mark in its domain name. Furthermore, the Respondent advertises sildenafil citrate as “Generic Viagra” and Cialis as “super viagra” on its website, in addition to genuine Viagra® brand sildenafil citrate.
Complainant concludes that Respondent registered the domain name in bad faith. Registering and using a domain name for the purpose of advertising “generic” sildenafil citrate as “Generic Viagra” demonstrates bad faith because such products, even if they are made from sildenafil citrate, are not genuine Viagra® brand sildenafil citrate since they do not originate from Complainant. Therefore, the Respondent is improperly using Complainant’s trademark to advertise and promote the goods of another.
In addition, under paragraph 4(b)(iv) of the Policy, the Respondent’s bad faith use of the domain name is indicated by its intentional use of the “half-price-viagra.com” website to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complaint’s mark as to the source, sponsorship, affiliation, or endorsement of the “www.half-price-viagra.com” website or of the products advertised on the website.
Complainant seeks transfer of the domain name <half-price-viagra.com> to Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Common terms preceding a trademark do not create a new or different mark in
which the Respondent has rights. See 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”, and 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); Microsoft
Corporation v. J. Holiday, Co., WIPO Case
No. D2000-1493 (regarding <4microsoft2000.com>, the panelist found
that the matter in the domain name other than the mark was non-distinctive and
descriptive). The addition of the terms “half” and “price”
preceding Complainant’s famous and distinctive “VIAGRA” mark
does not create a new or different mark.
For this reason, the Panel finds that the domain name is confusingly similar to the Complainant’s VIAGRA trademark.
B. Rights or Legitimate Interests
Respondent failed to respond to the Complaint. Respondent has no apparent rights or legitimate interests in VIAGRA and has presented none to the Panel due to its failure to respond. Based on the case file, it seems likely that the Respondent has no legitimate interests in the disputed domain name.
The Panel finds that Respondent has no rights or legitimate interests in VIAGRA or <half-price-viagra.com>.
C. Registered and Used in Bad Faith
Complainant presents several indicia of bad faith registration and use by Respondent. Respondent certainly knew of Complainant’s famous mark prior to Respondent’s registration of the domain name. Indeed, Respondent seeks to sell VIAGRA through the website at the domain name.
It is also true that Respondent seeks to sell a “generic” VIAGRA – a product that does not exist. Such consumer deception indicates bad faith.
Finally, Respondent seeks to profit from consumer
confusion by obtaining the web traffic from consumers seeking Complainant’s
VIAGRA. Such an intent to commercially gain from consumer confusion indicates
bad faith in both registration and use.
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 <half-price-viagra.com> be transferred to the Complainant.
Andrew Mansfield
Sole Panelist
Dated: April 6, 2005
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