Westmore · UDRP DecisionViagraindonesia.com
The Panel ordered transfer of <viagraindonesia.com> to Pfizer Inc. It found the domain confusingly similar to Pfizer's well-known VIAGRA trademark because it incorporated the mark in its entirety and merely added the geographic term “Indonesia.” Pfizer established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. Bad-faith registration and use were found because the Respondent was unlikely to have been unaware of the well-known mark and used the confusingly similar domain for a commercial website selling alleged counterfeit and competing products.
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The decision illustrates a straightforward trademark-plus-geography case involving a well-known pharmaceutical mark. The geographic term did not reduce confusing similarity, while the domain's use for commercially offered products serving the same purpose as the trademark owner's product supported both knowledge at registration and commercial bad-faith use. The Respondent's default did not relieve Pfizer of its burden, but it left the prima facie case and website allegations unrebutted.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pfizer Inc. v. Calvin Andrew Case No. D2014-2202 1. The Parties The Complainant is Pfizer Inc. of New York, New York, United States of America, represented by Kaye Scholer, LLP, United States of America. The Respondent is Calvin Andrew of Bandung, Indonesia. 2. The Domain Name and Registrar The disputed domain name <viagraindonesia.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2014. On December 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2015. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on January 30, 2015. 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 world’s largest pharmaceutical manufacturers with operations in more than 150 countries. The Complainant owns the trademark VIAGRA, which was first registered in the United States of America on June 2, 1998 and has since been registered in numerous countries. The mark VIAGRA is used as the name of the Complainant’s medication for erectile dysfunction. The disputed domain name was registered on August 28, 2012. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the mark VIAGRA, to which the Complainant has rights, because it merely combines the Complainant’s mark with the geographic descriptor “Indonesia”. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated in any way with the Complainant and has not been authorized by the Complainant to register or use the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because it is used to promote competing products. The Respondent has registered and is using the disputed domain name in bad faith. The trademark VIAGRA is a world famous trademark. The Respondent is using the disputed domain name to attract and mislead Internet users searching for information about the Complainant and its VIAGRA product. The Respondent was undoubtedly aware of the Complainant’s mark when registering the disputed domain name and the disputed domain name is used to divert Internet users to a for-profit website offering counterfeits of the Complainant’s products as well as competing products. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark. The Complainant has shown that it has registered the trademark VIAGRA in a number of jurisdictions, including Indonesia, where the Respondent is domiciled. The Panel also accepts that VIAGRA is a well-known trademark. The Complainant has therefore established that it has rights to the trademark VIAGRA. In terms of confusing similarity, the disputed domain name incorporates the Complainant’s trademark in its entirety. The trademark is combined with the geographical term “Indonesia” in the disputed domain name. The Panel finds that a domain name is confusingly similar to a mark where it merely adds a country name after a well-known mark, see Pfizer Inc. v. Premium Registration Service / Mooney James , WIPO Case No. D2013-1771 and Pfizer Inc. v. Bharat Gohil , WIPO Case No. D2005-1290 . The Panel therefore finds that the first element of the Policy is established. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests to the disputed domain name. The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. See, e.g. , Document Technologies, Inc. v. International Electronic Communications Inc ., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Complainant has submitted that it is not affiliated with the Respondent, it has not authorized the Respondent to use the trademark VIAGRA or the disputed domain name, and that the Respondent is not commonly known by the disputed domain name. The Respondent has not rebutted these arguments. The Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.” Given that the Complainant’s trademark VIAGRA is a well-known trademark, which has also been established by previous UDRP panels, it is unlikely that the Respondent would not have been aware of the Complainant’s mark when registering the disputed domain name. This is supported by the fact that the disputed domain resolves to a website containing products for the same purposes as the Complainant’s product. The Panel therefore finds that the disputed domain name was registered in bad faith. The Complainant has alleged, and the Respondent has not contested, that the disputed domain name resolves to a website where counterfeits of and products competing with the Complainant’s products are sold. The Panel finds that the confusingly similar disputed domain name is used to attract Internet users to the Respondent’s website for commercial gain. The Panel therefore finds that the disputed domain name is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <viagraindonesia.com> be transferred to the Complainant. Tuukka Airaksinen Sole Panelist Date: February 12, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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