WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Domain Admin, Sergey Mishin / Sergey Nikolaev

Case No. D2012-0658

1. The Parties

1.1 The Complainant is Pfizer Inc. of New York, New York, United States of America, represented by Kaye Scholer, LLP, United States.

1.2 The Respondent is Domain Admin of Queensland, Australia, Sergey Mishin of Moscow, Russian Federation / Sergey Nikolaev of Moscow, Russian Federation.

2. The Domain Name and Registrar

2.1 The disputed domain name <viagrabuy.org> (the “Domain Name”) was registered with 0101 Internet, Inc. (the “Initial Registrar”) as at the time the Complaint was initially filed with the WIPO Arbitration and Mediation Center (the “Center”). At the date of this decision it is registered with Paknik (Private) Limited (the “Second Registrar”).

3. Procedural History

3.1 The Complaint was filed with the Center on March 28, 2012. The publically available WhoIs record for the Domain Name as at the date of the filing of the Complaint recorded “Domain Admin” of “PrivacyProtect.org” as the registrant of the Domain Name. This would appear not to have been the underlying registrant, but the name of a privacy service.

3.2 On March 29, 2012 the Center sent a verification request by email to the Initial Registrar.

3.3 No response having been received from the Initial Registrar by April 5, 2012 the Center sent a further email on that date asking the Initial Registrar to respond to that request.

3.4 No response having been received from the Initial Registrar by April 12, 2012 the Center sent a further email on that date asking the Initial Registrar to respond to that request.

3.5 No response having been received from the Initial Registrar by April 16, 2012 the Center sent a further email seeking a response as a matter of urgency and informing the Initial Registrar that unless a response was forthcoming by April 17, 2012 the Center would proceed without the Initial Registrar’s response.

3.6 The Initial Registrar finally responded to the verification request by email on April 17, 2012 apologising for the “late reply”. In that response the Initial Registrar identified the underlying registrant of the Domain Name as “Sergey Mishin”, providing a contact address in Moscow.

3.7 In light of this information, on April 17, 2012, the Center sent an email to the Complainant inviting the Complainant (if it so wished) to amend its Complaint so as to identify “Sergey Mishin” as the Respondent. An amendment to the Complaint was filed in response to that invitation on April 24, 2012.

3.8 On April 25, 2012, the Center noticed that notwithstanding the information provided by the Initial Registrar the publically available WhoIs information for the Domain Name now seemed to record “Sergey Nikolaev” as the registrant and the Second Registrar as the registrar. It thus asked for an explanation from the Initial Registrar. No response being forthcoming the Center urgently sought a response the following day on April 26, 2012.

3.9 An email response was forthcoming from the Initial Registrar on April 27, 2012. The email contained the following statement:

“I did locked [sic] the domain previously but seems the locking action didn’t go through due to the system glitch. It will be grateful [sic] if you could follow up this case with the current registrar. I am so sorry for the inconvenience caused.

Also, I will investigate the root cause in our system and prevent the similar problem happen in the future”

No further explanation was provided either in that email or subsequently as to the nature of the “system glitch”.

3.10 On May 1, 2012, the Center sent an email to both the Initial Registrar and the Second Registrar. In that email it noted that there had been a possible violation of both paragraphs 8(a) and 8(b) of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and asked both registrars to confirm whether it was possible to restore the original registrant details for the Domain Name.

3.11 By May 4, 2012 neither registrar had responded to that email and the Center in a further email requested that they give their “urgent attention to this matter”. The Initial Registrar responded on May 7, 2012 stating that it would “restore the registration details for the [Domain Name] once it comes under my registrar”. The Second Registrar responded on May 8, 2012 stating:

“Once we received the domain transfer request back to the previous registrar we will approve the transfer. If [the Domain Name] was under dispute why was in not locked as per ICANN policies[?]”

3.12 In response to a further email from the Center to both registrars as to whether they were prepared to restore the original details for the Domain Name, the Second Registrar sent a further email. It was clear from that email that the Second Registrar was not prepared to co-operate with the Initial Registrar in restoring the original details. Instead the Second Registrar took the position that either there must be a request (presumably from the new registrant) to transfer the domain name back into the control of the Initial Registrar or the Complainant should “initiate a new dispute with the current domain registrant”. That email was copied to ICANN Compliance “for their information and advice”.

3.13 The Center made a further request for restoration of the Domain Name on May 9, 2012, pointing out paragraphs 8(a) and 8(b) of the Policy. That email was also copied to ICANN Compliance. No response was forthcoming from either registrar or ICANN and on May 15, 2012, the Center requested a response to that email by May 17, 2012. On May 18, 2012 the Second Registrar responded in an email making it clear that its position was that separate proceedings should be initiated under the UDRP.

3.14 Later that day the Center responded that it would continue with the proceedings on the basis of the registrant and registrar details currently recorded in the WhoIs database and sent a verification request to the Second Registrar. It also forwarded a copy of the Complaint and associated annexes to the Second Registrar.

3.15 By May 21, 2012 the Second Registrar had not responded to the verification request and the Center sent a chaser by email. A formal response to that request was forthcoming from the Second Registrar later that day identifying “Sergey Nikolaev” of Moscow as the registrant.

3.16 On May 22, 2012 the Center sent an email to the Complainant providing it with an opportunity to amend the Complaint so as to take into account the recent changes in registrant and registrar details. An amendment to the Complaint was forwarded to the Center and copied to the email address of the new registrant on May 30, 2012.

3.17 The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of 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”).

3.18 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 June 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2012.

3.19 The Center appointed Mathew S. Harris as the sole panelist in this matter on June 27, 2012. 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.

3.20 On an initial review of the papers the Panel formed a preliminary view that it was likely in its published decision to make comments critical of the Initial Registrar and to bring the Initial Registrar’s conduct to the attention of ICANN to take such further steps as it considered appropriate. Out of procedural fairness to the Initial Registrar on July 3, 2012 it issued Administrative Panel Procedural Order No. 1 (the “Procedural Order”) setting out the likely nature of those criticism and providing the Initial Registrar with an opportunity to respond in advance to the same. A copy of the Procedural Order is at Annex A to this decision. The Initial Registrar did not file any response or submissions in relation to the same.

4. Factual Background

4.1 The Complainant is one of the world’s largest pharmaceutical manufacturers and sellers with operations in over 150 countries. One of its products is the world famous drug “Viagra”, which is the trade name it uses for sildenafil citrate when used as a medication for the treatment of erectile dysfunction.

4.2 The Complainant is the owner of numerous trade marks around the world that comprise the word “Viagra”. They include:

(i) United States registered trade mark no. 2,162,548 registered on June 2, 1998 in class 5; and

(ii) Community trade mark no. 233890 registered on April 21, 1998 in class 5.

4.3 The Domain Name was initially registered on October 12, 2010. Since the date of registration it has been used in connection with web pages that purport to sell the Complainant’s Viagra products. However, the web pages have also purported to sell other products.

4.4 For example, a print out of the web page operating from the Domain Name on March 27, 2012 shows that on that date as well as various forms of Viagra products the web page also purports to offer for sale Cialis and Levitra products. It is also not possible from that page to determine who it is that is offering these products for sale.

4.5 That web page also incorporated a short “Frequently Asked Questions” segment. One of the questions in that FAQ is “Why is your product so cheap?”. The answer offered to that FAQ was as follows:

“There is [sic] a number of reasons for that. We do not send anything on marketing, there are no taxes to be paid as the product comes into the country unregistered, the manufacturer is located in an offshore zone and the productions costs are way lower. No child labor is used”.

Another question purports to explain what a “generic drug” is, although the term “generic” is not used elsewhere on the page.

4.6 Since the change in registration details referred to in detail in the Procedural History of this decision, no web page appears to have operated from the Domain Name.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant summarises its position in the initial three paragraphs of the Complaint. In short, it contends that the Domain Name is being used to “unfairly trade on the goodwill and reputation of [the Complainant’s] VIAGRA mark.” In particular, it maintains that the Domain Name is being used to divert Internet users to a website that among other things sells counterfeit VIAGRA tablets.

5.2 The rest of the Complaint merely expands upon those contentions. Details are given of the Complainant’s many VIAGRA trade marks around the world, including the two trade marks identified in the Factual Background section of this decision. It details the fame of the mark and refers to numerous previous decisions under the UDRP in which the fame of that mark has been recognised.

5.3 The Complainant maintains that the Domain Name is confusingly similar to its trade mark comprising (apart from the “.org” TLD) that mark and the generic term “buy”.

5.4 The Complainant denies that the Respondent has any right or legitimate interest in the Domain Name, contending that the Domain Name has been chosen and used to sell counterfeit Viagra products and other erectile dysfunction treatments. So far as the allegation of counterfeit products is concerned, the Complainant contends as follows:

“VIAGRA-branded tablets obtained through [the] Respondent’s web site have been tested by [the Complainant] and proved to be counterfeit tablets not manufactured or authorized by [the Complainant].”

5.5 Numerous UDRP cases are then cited in support of the proposition that the sale of counterfeit products does not provide a legitimate interest in a domain name that incorporates the mark of the product being counterfeited. Other cases are cited in support of the proposition that the sale of competing products to those of the trade mark owner also does not provide a legitimate interest.

5.6 The Complainant contends that the Respondent’s lack of rights or legitimate interests “renders the issue of bad faith registration unnecessary to even be considered” but contends that there is bad faith registration and use in any event. It contends that the distinctive and invented nature of the Complainant’s trade mark means that the Respondent must have known about it at the time of registration and that the clear intent was to trade off that reputation by using the trade mark to attract and mislead Internet users into visiting the website operating from the Domain Name. The Complainant also contends that the Respondent has constructive knowledge of the Complainant’s rights in the VIAGRA trade mark at the time the Domain Name was registered. Further, it repeats once again its allegation that the Domain Name has been used to sell counterfeit products and cites a number of UDRP decisions that are said to have held such use to be in bad faith. Reference is also made to cases in which the offering of competing goods to those sold under a trade mark from a domain name that incorporates that mark, has been held to be use in bad faith.

B. Respondent

5.7 No Response was filed in reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.

6.2 Notwithstanding the failure to lodge a Response, it remains incumbent on the Complainant to make out its case in all respects under the Rules as set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

6.4 Before addressing these issues in this decision it is convenient first to deal with the issue of the Initial Registrar’s conduct.

A. Registrar conduct

6.5 There are a number of troubling aspects of the Initial Registrar’s conduct in this case. First, there is the fact that it took the Initial Registrar nearly three weeks to respond to the Center’s verification request.

6.6 This is far from a trivial matter. For example, in Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited& Others,WIPO Case No. D2008-1675 the repeated failure by the registrar in that case to respond reasonably quickly to Center’s verification requests was one of the factors that lead to the panel inviting the Center to bring the registrar’s conduct to the attention of ICANN with a view to ICANN taking such further steps as it considered necessary. In that case the panel also took notice of ICANN's “Draft Advisory Concerning Registrar Best Practices to Protect Registrants upon Initiation of a Uniform Domain Name Dispute Resolution” published in December 2008. This states that registrars “should cooperate, in a timely fashion, with Provider requests” and suggests a deadline for responding of 2 business days from the making of the request. That deadline takes into account the timing obligations placed upon dispute resolution providers (such as the Center) under the relevant rules.

6.7 Although the 2 business day deadline is only to be found in a draft document, it is clear that a three week delay in responding to a verification request is wholly unacceptable. Such a failure to respond results in delay in proceedings that unfairly disadvantages those bringing complaints under the Policy. It also provides an opportunity for “cyberflight” by those who seek to circumvent or at least delay the operation of the Policy.

6.8 This is not the first time that the Initial Registrar has responded unacceptably late to verification requests. In F. Hoffmann-La Roche AG v. PrivacyProtect.org / Sergey Mishin, WIPO Case No. D2011-1096 the Initial Registrar took over 9 days to respond to the Center’s request. In F. Hoffmann-La Roche AG v. Ivan Pleshko,WIPO Case No. D2011-1652 the Initial Registrar took over 11 days to respond to the request.

6.9 Second, there is the fact that the Initial Registrar would appear to have failed to properly lock the Domain Name and as a result the Domain Name was transferred to another registrar and into the name of another registrant. That transfer was contrary to both paragraphs 8(a) and 8(b) of the Policy. The Initial Registrar has offered its apologies for this and has said the unspecified “system glitch” that caused this is being addressed. However, the fact remains that this “glitch” should not have happened.

6.10 Further, the combined effect of both the initial delay in responding to the verification request and the failure to lock the Domain Name is that the total time between the filling of a complaint in this matter and the issuing of a decision by this Panel has amounted to approximately three and half months.

6.11 In the circumstances, the Panel considers it appropriate (in accordance with the practice that has been followed by previous panels including this Panel in cases where a registrar’s actions have been a matter of concern¹) to invite the Center to bring the Initial Registrar’s conduct (i.e. the conduct of 0101 Internet, Inc.) to the attention of ICANN for ICANN to make such further investigation and to take such further steps in relation to that conduct as it considers appropriate.

B. Identical or Confusingly Similar

6.12 The Panel has no difficulty in finding that the Domain Name is confusingly similar to a mark in which the Complainant has rights. It accepts that the only sensible reading of the Domain Name is as a combination of the term “Viagra” with the generic English word “buy” and the “.org” TLD. In the circumstances, the Panel finds that the Complainant has easily made out the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests and Registered and Used in Bad Faith

6.13 This is a case where it is both possible and convenient to deal with the issues of rights or legitimate interests and registration and use in bad faith together. The reason for this is that the Complainant’s complaint is primarily that the Domain Name was registered and used for the purpose of selling counterfeit versions of the Complainant’s products and there is no suggestion that the registrant is the owner of any independent right in the term “Viagra”. If this is so, the Panel accepts that the registrant of the Domain Name would have no rights or legitimate interests in the Domain Name and that such registration and use would be in bad faith. The Complainant has cited numerous cases that are authority for those propositions. This Panel made similar comments in the recent decision of Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou, Fujian Anfu,WIPO Case No. D2012-0888.

6.14 The Complainant’s case in this respect is unequivocal. It states that it has tested the products and determined them to be counterfeit. There is no counter argument from the Respondent. In the circumstances, the Panel accepts the Complainant’s claims and finds that the Complainant has made out the requirements of paragraph 4(a)(ii) and 4(a)(iii) of the Policy.

6.15 It is worth recording that in coming to that conclusion the Panel does not accept the Complainant’s contention that it is not necessary to reach a finding on bad faith given a finding of no rights and legitimate interests. The Panel does not accept that this is how the Policy operates. Both 4(a)(ii) and 4(a)(iii) of the Policy must be, and have been, satisfied in this case. Further, the Panel rejects the Complainant’s contention that any concept of constructive notice is relevant in this case. However, this does not matter as the Complainant has adequately shown actual notice and knowledge on the part of the Respondent.

6.16 Another point worth recording is that in coming to its conclusions, the Panel has taken no notice of the fact that following the filing of the Complaint the Domain Name was transferred into the name of some other registrant. Given the operation of paragraphs 8(a) and 8(b) of the Policy the Panel considers it legitimate to proceed on the basis that questions of rights or legitimate interests and bad faith can be judged from the perspective of the registrant of the Domain Name as at the date the Complaint was filed.

6.17 However, even if the Panel is wrong in its assessment of the impact of paragraphs 8(a) and 8(b) of the Policy, it is doubtful whether this would make any difference to the outcome of this case. The reason is that the nature of the Domain Name is such is that it is difficult to conceive of circumstances in which the new registrant of the Domain Name could show either a right or legitimate interest or that the registration or use was not in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as elaborated upon in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management, WIPO Case No. D2008-0455 and La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica,WIPO Case No. D2008-1377). In this respect, the reasoning of the Panel at paragraphs 6.18 and 6.19 of the Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 is likely also to be relevant. However, it is not necessary on this occasion to explore those issues further.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <viagrabuy.org> be transferred to the Complainant.

Mathew S. Harris
Sole Panelist
Dated: July 11, 2012

Annex A

ADMINISTRATIVE PANEL PROCEDURAL ORDER NO. 1

WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy” or “UDRP”) or the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), notes as follows:

(i) The domain name in issue in these proceedings is <viagrabuy.org> (the “Domain Name”).

(ii) The registrar for the Domain Name as at the date that the Complaint in these proceedings was initially filed with the World Intellectual Property Organization (the “Center”) was 0101 Internet, Inc. (the “Initial Registrar”).

(iii) The publically available WhoIs record for the Domain Name as at the date of the filing of the Complaint herein recorded “Domain Admin” of “PrivacyProtect.org” as the registrant of the Domain Name. This would appear not to have been the underlying registrant, but the name of a privacy service.

(iv) On March 29, 2012 the Center sent a verification request by email to the Initial Registrar.

(v) No response having been received from the Initial Registrar by April 5, 2012 the Center sent a further email on that date asking the Initial Registrar to respond to that request.

(vi) No response having been received from the Initial Registrar by April 12, 2012 the Center sent a further email on that date asking the Initial Registrar to respond to that request.

(vii) No response having been received from the Initial Registrar by April 16, 2012 the Center sent a further email seeking a response as a matter of urgency and informing the Initial Registrar that unless a response was forthcoming by April 17, 2012 the Center would proceed without the Initial Registrar’s response.

(viii) The Initial Registrar finally responded to the verification request on April 17, 2012 apologising for the “late reply”. In that response the Initial Registrar identified the underlying registrant of the Domain Name as “Sergey Mishin”, providing a contact address in Moscow.

(ix) In light of this information the Center sent an email to the Complainant inviting the Complainant (if it so wished) to amend its Complaint so as to identify “Sergey Mishin” as the Respondent. An amended Complaint was filed in response to that invitation on April 25, 2011.

(x) On April 25, 2011 the Center noticed that notwithstanding the information provided by the Initial Registrar the publically available WhoIs information for the Domain Name now seemed to record “Sergey Nikolaev” as the registrant and “Paknic (Private) Limited” (the “Second Registrar”) as the registrar. It asked for an explanation form the Initial Registrar. No response being forthcoming the Center urgently sought a response the following day on April 26, 2012.

(xi) An email response was forthcoming from the Initial Registrar on April 27, 2012. The email contained the following statement:

“I did locked [sic] the domain previous but seems the locking action didn’t go through due to system glitch. It will be grateful [sic] if you could follow up this case with the current registrar. I am so sorry for the inconvenience cause.

Also, I will investigate the root cause in our system and prevent the similar problem happen in the future”

No further explanation was provided either in that email or subsequently as to the nature of the “system glitch”.

(xii) There then followed further email correspondence between the Initial Registrar and the Second Registrar that it is not necessary to record in this order.

(xiii) ICANN’s “Draft Advisory Concerning Registrar Best Practices to Protect Registrants upon Initiation of a Uniform Domain Name Dispute Resolution” published in December 2008 states that registrars “should cooperate, in a timely fashion, with Provider requests” and suggests a deadline for responding of 2 business days from the making of the request. Failure by registrars to respond promptly to verification requests have led panels to bring that failure to the attention of ICANN with a view to ICANN taking such further steps as it considered necessary (see, for example, Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited & Others, WIPO Case No. D2008-1675).

(xiv) This is not the first occasion that the Initial Registrar has failed to respond promptly to the Center’s verification requests. In F. Hoffmann-La Roche AG v. PrivacyProtect.org/ Sergey Mishin, WIPO Case No. D2011-1096 the Initial Registrar took over 9 days to respond to the Center’s request. In F. Hoffmann-La Roche AG v. Ivan PleshkoWIPO Case No. D2011-1652WIPO Case No. D2011-1652 the Initial Registrar took over 14 days to respond to the request.

(xv) Further, the Initial Registrar appears to have failed to properly lock the Domain Name thereby permitting the transfer of the Domain Name to another registrant and another registrar in breach of paragraphs 8(a) and 8(b) of the Policy.

(xvi) Accordingly as matters stand the Panel may make comments critical of the Initial Registrar in its decision. Further, the Panel may also invite the Center to bring this decision to the attention of ICANN for such further investigation or action in relation to the Initial Registrar’s activities and business practices as ICANN considers appropriate.

(xvii) In light of this, the Panel is of the opinion that as a matter of fairness the Initial Registrar should first be given an opportunity to respond to the issues set out in this Order.

(xviii) Whilst the Initial Registrar is not obliged to file a submission as provided for in this Order, it should be aware that any failure to do so may result in adverse inferences being drawn against it.

The Panel, pursuant to paragraph 10 of the Rules for Uniform Domain Name Dispute Resolution Policy, HEREBY MAKES THE FOLLOWING ORDER:

(1) The Initial Registrar shall, if it so wishes, by no later than 9:00 am GMT on Monday, July 9, 2012 file a submission in these proceedings together with supporting documents or evidence addressing the issues identified in the recitals to this Order.

(2) Any submission filed pursuant to paragraph (1) of this Order should:

(i) be forwarded to the Center by email in accordance with paragraph 3(a) of the WIPO Supplemental Rules.

(ii) include a declaration signed by a named individual as follows:

“I certify that the information contained in this submission is to the best of the 0101 Internet, Inc’s knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under the Policy and the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”

(iii) explain the relationship to the Initial Registrar of the named individual giving the declaration in accordance with sub-paragraph (ii) above and explain how it is that he or she has knowledge of the matters set out in the submission.

(iv) either be in a form that is text searchable (for example, a .doc Word document or a text searchable PDF document) or be accompanied by a copy that is text searchable.

Matthew S. Harris
Sole Panelist
Dated: July 3, 2012

¹ See, for example, paragraph 6.20 of the decision in the LEGO Juris A/S v. Whois Privacy Protection Service, Inc. / Domains Secured, LLC, WIPO Case No. D2011-1857, which identifies a number of recent decisions in which the UDRP panels have followed this course.