The Complainant is Pfizer Inc., New York, New York, United States of America, represented by Kaye Scholer, LLP.
The Respondent is e2eTech LLC, Wilmington, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thankspfizer.com> is registered with Go Daddy
Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2007, naming Domains by Proxy Inc. as the Respondent. On January 29, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On January 29, 2007, Go Daddy Software transmitted by email to the Center its verification response advising that the registrant was not Domains by Proxy Inc., but rather e2eTech LLC, Springfield, Pennsylvania, United States of America, and providing the details for the administrative, and technical contact. In response to an email communication from the Centernotifying the Complainant of registrant and contact details provided by the registrar, the Complainant filed an amendment to the Complaint on February 1, 2007, amending the name and address of the Respondent to that listed for e2eTech LLC. On the same date, the Respondent advised by email that the address details listed were no longer current, and gave an address in Wilmington, Delaware 19807, United States of America. 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 February 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2007.
The Center appointed Angela Fox as the sole panelist
in this matter on March 27, 2007. 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 companies in the world. It is active in more than 150 countries. Its size is reflected by its revenues, which in 2003 alone were reported at $45.2 billion. Many of the Complainant’s medicines are market leaders in their therapeutic categories and the Complainant invests over $100 million per week in research and development. Since 1849, it has traded under the name PFIZER, and the PFIZER name is extensively advertised in connection with the Complainant’s products.
The Complainant owns trademark registrations for PFIZER in countries around the world, including U.S. federal registration nos. 501,762, issued on August 24, 1948 and 626,088 for PFIZER and Design, issued on May 1, 1956. Copies of these U.S. registrations and on-line status printouts were annexed to the Amended Complaint. The Complainant also owns the domain name <pfizer.com>, which it uses to host a website about the company and its pharmaceuticals.
Other UDRP Panels have recognized the Complainant’s
rights in the PFIZER mark and its well-known status, including in Pfizer
Inc. v. Fizer Inc. (WIPO Case No. D2005-0285),
Pfizer Inc. v. Asia Ventures, Inc. (WIPO
Case No. D2005-0256); and Pfizer Inc. v. jg a/k/a Josh Green (WIPO
Case No. D2004-0784).
The disputed domain name was registered in the name of Domains by Proxy on or about December 10, 2006. The Complainant alleges, and the Respondent has not denied, that the registration was made on behalf of the Respondent to whom it appears later to have been transferred. Print-outs annexed to the Amended Complaint show that as recently as December 2006 the disputed domain name was being used to host a website that offered for sale t-shirts, mugs, caps, badges, greeting cards, notebooks, mousemats, posters and other merchandise bearing messages such as, “Thank’s [sic] For Nothing Pfizer” and “Pfizer Friend’s, Best Wishes, You’ll Be Missed.” The site was headed, “Thanks Pfizer 2006 Layoff Gear!” and underneath read, “We offer a number of products, fun for the entire Pfizer Pfamily! Whether your [sic] happy, sad, mad, or glad about the 2006 layoffs…you will feel extremely satisfied when you send some layoff gear to your fellow ex-colleagues! Sending a Kindler’s List ‘You’re Fired’ or a ‘Say Hello To My Little Friend’ mug to your favorite CEO at headquarters, might be a great start to the Christmas Holidays.”
The print-outs state that the Respondent’s e-shop
was enabled by Cafepress.com. In response to a letter from the Complainant’s
attorneys, Cafepress.com apparently disabled the Respondent’s e-shop on
or about January 9, 2007. Subsequently the disputed domain name was re-routed
to a page hosting a generic search engine and sponsored links relating to pharmaceuticals
and pharmaceutical corporate services. A print-out of the new content was also
annexed to the Amended Complaint.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its registered and well-known PFIZER trademark. In particular, it incorporates the whole of the Complainant’s trademark preceded only by the laudatory term “thanks,” which in the Complainant’s view is not only insufficient to avoid confusion, but in fact reinforces the impression that the domain name is associated with the Complainant.
The Complainant further avers that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is not affiliated with the Respondent, nor has it authorized the Respondent to use the PFIZER trademark. The Respondent is not commonly known by a name corresponding to the disputed domain name. The Respondent’s use of the domain name in connection with a website selling unauthorised merchandise bearing the PFIZER trademark was an infringing use and was not therefore use in connection with a bona fide offering of goods or services within the meaning of Paragraph 4 (c) (i) of the Policy. Nor, the Complainant contends, is the current use in respect of a generic search engine and sponsored links to pharmaceutical-related websites, which generate profit for the Respondent, use in connection with a bona fide offering of goods or services. Moreover, even if the Respondent’s original e-shop was intended in part as a commentary or criticism site, it was clearly being used for commercial purposes and was not, therefore, a legitimate or non-commercial fair use within the meaning of Paragraph 4 (c) (iii) of the Policy. Moreover, such use could not be fair in any event since the disputed domain name did not make it clear on its face that it linked to a criticism site.
Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The content of the original e-shop made it clear that the Respondent was well aware of the Complainant and its PFIZER trademark. The Respondent’s registration and use of the disputed domain name was calculated to mislead and to profit from Internet users searching for information on the Complainant. The Respondent therefore registered and used the domain name to intentionally attract Internet users to the Respondent’s 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 Respondent’s site under Paragraph 4 (b) (iv) of the Policy. The Complainant alleges that the Respondent’s bad faith is further demonstrated by its having registered the disputed domain name through a proxy service to conceal the Respondent’s identity.
B. Respondent
The Respondent did not reply to the case against it
and is in default. No exceptional circumstances explaining the default have
been put forward. Therefore, in accordance with Paras. 14 (a) and (b) of the
Rules, the Panel will decide the Complaint and shall draw such inferences as
it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under Paragraph 4 (a) of the Policy, a Complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights in or legitimate interests to the domain name;
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Respondent’s domain name consists of the Complainant’s registered trademark PFIZER preceded by the laudatory term, “thanks.”
In the Panel’s view, the presence of the term
“thanks” is not enough to avoid confusing similarity arising from
the use of PFIZER, and may even reinforce the perception among some users that
the domain name is linked to the Complainant. Mere descriptive or generic additions
to a trademark are not normally sufficient to avoid confusing similarity between
a trademark and a domain name, as held in, inter alia,Time Warner
Entertainment Company L.P. v. HarperStephens (WIPO
Case No. D2000-1254). Furthermore the Panel notes that the word “thanks”
preceding PFIZER functions as an apparent generic expression of gratitude toward
the Complainant. Taken at face value, it communicates that the content of any
site linked to the disputed domain name is likely to consist of positive feedback
from the Complainant’s customers, in the form of testimonials or success
stories resulting from the use of the Complainant’s products. Accordingly,
the average Internet user may reasonably infer that the Complainant was behind
the disputed domain name.
The Panel recognizes that a sarcastic tone may in some circumstances alter the perceived meaning of a term like “thanks Pfizer”.However, on its face there is nothing in the disputed domain name to point to a sarcastic, as opposed to a literal, interpretation, and in the Panel’s view domain names per se are not in any case inherently apt to communicate tone.
The fact that visitors to the Respondent’s site
might deduce from its content that the Complainant was not behind it is irrelevant;
the confusing similarity of the disputed domain name will already have led some
to the Respondent’s site who were in fact seeking the Complainant (see
inter aliaArthur Guinness Son & Co. (Dublin) Limited v. Dejan
Macesic, WIPO Case No. D2000-1698,
where the Panel held that, “the use to which the site is put has no bearing
upon the issue whether the domain name is confusingly similar to the trademark,
because by the time Internet users arrive at the Website, they have already
been confused by the similarity between the domain name and the Complainant’s
mark into thinking they are on their way to the Complainant’s Website.”).
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has offered no evidence that it holds a right or legitimate interest in the disputed domain name. The Panel may nonetheless find that the Respondent has such a right or interest, however, if based on its evaluation of the evidence either of the following under Paragraph 4 (c) (i) and (iii) of the Policy apply:
(i) before any notice to the Respondent of the dispute, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or(iii) the Respondent 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.
It is apparent from the materials annexed to the Amended Complaint that the Respondent has used the disputed domain name in respect of a website offering a range of merchandise for sale. However, the Panel does not regard the Respondent’s activities as a bona fide offering of goods or services within the meaning of Paragraph 4 (c) (i) of the Policy.
It is well-established that not all use of a domain
name prior to notice of a dispute is bona fide, and that an enquiry into
the Respondent’s good faith or otherwise is central to that issue (see
Advance Magazine Publishers, Inc. v. Lisa Whaley, WIPO
Case No. D2001-0248 and World Wrestling Federation Entertainment, Inc.
v. Rift, WIPO Case No. D2000-1499).
Other panels have held that use of a domain name that trades on the fame of
another’s trademark cannot constitute a bona fide offering of goods
or services under Paragraph 4 (c) (i) of the Policy (see inter aliaMadonna
Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com,”WIPO
Case No. D2000-0847, where the panel stated that the domain name had been
“selected and used by Respondent with the intent to attract for commercial
gain Internet users to Respondent’s web site by trading on the fame of
Complainant’s mark. We see no other plausible explanation for Respondent’s
conduct and conclude that use which intentionally trades on the fame of another
can not constitute a bona fide offering of goods or services.”).
A number of other factors have been regarded as relevant
by other panellists when considering whether a respondent’s use was bona
fide (see inter aliaGerd Petrik v. Johnny Carpela, WIPO
Case No. D2004-1043 and Oki Data Americas Inc. v. ASD, Inc., WIPO
Case No. D2001-0903). These include:
- whether the complainant has acquiesced in the respondent’s activities
(see Draw-Tite, Inc. v. Plattsburgh Spring Inc.,WIPO
Case No. D2000-0017; DaimlerChrysler A.G. v. Donald Drummonds,WIPO
Case No. D2001-0160);
- whether the goods offered through the respondent’s website were genuine
“after-market goods,” (see e.g., DaimlerChrysler, supra,
and Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent,WIPO
Case No. D2004-0481);
- whether the respondent has attempted to “corner the market” in domain names incorporating the complainant’s trademark and thus to deprive the complainant of the opportunity to reflect its mark in a suitable domain name (see Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent, supra, and Oki Data, supra);
- whether the respondent’s website displays a prominent disclaimer so
that visitors to the site are aware of his relationship, or lack of it, with
the complainant (see Philip Morris Incorporated v. Alex Tsypkin,WIPO
Case No. D2002-0946); and
- whether only the complainant’s goods are being offered through the site (see Oki Data Americas Inc. supra).
In this case, the Respondent relied on the Complainant’s international reputation in its PFIZER trademark to lure potential customers to its e-shop by using a domain name that was calculated to mislead them into assuming a positive connection with the Complainant and its well-known brand. Once there, visitors were offered the opportunity to purchase goods that bore unauthorised and disparaging use of the Complainant’s trademark. They were not the Complainant’s goods nor were they licensed or approved by the Complainant, who brought this complaint promptly. It is not within the Panel’s remit under the Policy to assess whether the Respondent’s activities amounted to an actionable trademark infringement. However, it is clear that the Respondent’s activities were potentially damaging to the Complainant and the use of a domain name that conveyed positive connotations about the Complainant to make available a website containing negative content does not, in the Panel’s view, evince good faith commercial use. That the Respondent does not appear to have registered other domain names incorporating PFIZER, or that visitors to the Respondent’s site may have surmised that the Complainant was not involved with it cannot, in the Panel’s view, confer good faith on conduct that manifestly lacks it in other respects.
The Respondent’s subsequent use of the disputed
domain name to host a generic search engine and sponsored links to pharmaceutical-related
companies and topics appears intended further to divert Internet users seeking
information on the Complainant or its products. Such use is misleading to Internet
users and amounts to a form of “bait and switch” selling (as in
Robert Bosch GmbH v. Asia Ventures, Inc., WIPO
Case No. D2005-0946), whereby Internet users seeking the Complainant are
instead offered or directed to goods or services from other pharmaceutical or
pharmaceutical-related companies.
It follows that the Panel declines to find that the Respondent has a right or legitimate interest in the disputed domain name based on bona fide commercial use.
As regards Paragraph 4 (c) (iii) of the Policy, the
Panel notes that the Respondent may have been making what it regarded as genuine
criticisms of the Complainant by displaying on its website goods bearing messages
such as “Thank’s [sic] For Nothing Pfizer”, However, the site
was clearly offering goods for commercial gain, which precludes a finding that
the domain name was in use for the purposes of a genuine, non-commercial criticism
site (see inter alia Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto
Rico, WIPO Case No. D2000-0477, where
the panel held that “Respondent’s intention for registering ‘wal-martcanadasucks.com’,
‘wal-martcanadasucks.com’, ‘walmartuksucks.com’, ‘walmartpuertorico.com’
and ‘walmartpuertoricosucks.com’ is commercial, and not within the
scope of fair use or legitimate noncommercial use permitted by paragraph 4(c)(iii)
of the Policy.”).
In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Under Paragraph 4 (a) (iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4 (b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia Paras. 4 (b) (iii) and (iv):
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of its website or of a product on that site.
It is clear from the Amended Complaint that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to its website. In the Panel’s view, the Respondent aimed to achieve this by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s site.
A visitor to the Respondent’s e-shop may well have deduced from its content
that it was not affiliated with the Complainant. However, until the site was
accessed, an Internet user might reasonably assume that the domain name linked
to a site containing positive reviews or customer testimonials about the Complainant’s
products, operated or sponsored by the Complainant. Once the Internet user has
been diverted to the Respondent’s site, confusion has already occurred
(see inter aliaArthur Guinness Son & Co. (Dublin) Limited v.
Dejan Macesic, WIPO Case No. D2000-1698).
The Respondent appears to have relied on that likelihood of confusion and the
misleading impression created by the disputed domain name to draw potential
customers to its site.
The Respondent’s efforts to attract Internet users by creating a likelihood
of confusion with the Complainant for commercial gain are further reflected
by its subsequent use to host click-through advertisements for pharmaceutical-related
websites. In using the Complainant’s trademark to draw Internet users
to a site offering competing or related goods and services, the Respondent has
attempted to divert custom from the Complainant and thus to disrupt the Complainant’s
business under Paragraph 4 (b) (iii) of the Policy. Such conduct has supported
a finding of bad faith in other cases (Six Continents Hotels Inc. v Ramada
Inn, WIPO Case No. D2003-0658, and
Royal Bank of Canada v. Henry Chan,WIPO
Case No. D2003-0031). The Respondent has offered no satisfactory alternative
explanation for its conduct. The Panel finds that such disruption was a primary
purpose behind the Respondent’s registration of the disputed domain name
in this case.
In the Panel’s view, the evidence is sufficient to support the claim
that the disputed domain name was registered and used in bad faith. The Panel
so finds.
7. Decision
For all the foregoing reasons, in accordance with Paras. 4 (i) of the Policy and 15 of the Rules, the Panel orders that the domain name <thankspfizer.com> be transferred to the Complainant.
Angela Fox
Sole Panelist
Date: April 6, 2007
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