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Arbitration and Mediation Center
Pfizer Inc v. The Magic Islands
Case No. D2003-0870
1. The Parties
The Complainant is Pfizer Inc, New York, New York, United States of America, represented by Hale and Dorr LLP, United States of America.
The Respondent is The Magic Islands, Attica, Greece.
2. The Domain Name and Registrar
The disputed domain name <viagraconfidential.com> is registered with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2003. On November 4, 2003, the Center transmitted by email to Go Daddy Software, Inc a request for registrar verification in connection with the domain name at issue. On November 4, 2003, Go Daddy Software, Inc 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 November 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2003.
The Center appointed Dr. David J.A. Cairns as the sole panelist in this matter on December 18, 2003. 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 a multinational corporation engaged, inter alia, in the discovery, development, manufacturing and marketing of prescription medicines. Its products include sildenafil citrate, an oral medication for the treatment of erectile dysfunction, marketed in the United States and elsewhere exclusively under the trademark VIAGRA.
The Complainant is the owner of the United States Trademark Registration Nє. 2,162,548 for the trademark VIAGRA. The first use in commerce was April 6, 1998, and the trademark was registered on June 2, 1998. The Complainant and its wholly-owned subsidiaries have registered or applied for registration of the VIAGRA trademark and other related trademarks worldwide.
The Complainant also owns and operates a website at <www.viagra.com>.
The Respondent registered the <viagraconfidential.com> domain name on July 27, 2002. The home page of this domain refers to "Europe’s most Discreet and Reliable Discount Chemists for the supply of both ‘Viagra’ and ‘Kamagra’" and states that the business is "Based in the U.K.". The site offers two products for sale; firstly VIAGRA, and secondly a product called ‘Kamagra’ which is described as a ‘generic brand of Viagra’ and as having "exactly the same chemical composition as Viagra. It is even the same colour and the same diamond shaped tablet."
In addition to the home page the site contains pages entitled ‘Viagra’, ‘Kamagra’, ‘Prices’, ‘How to Order’, ‘Affiliates Programme’ and ‘About Us’. The ‘How to Order’ page includes the statement that "Viagra Confidential is a Division of Meddicare.Com. In the U.K. ‘Viagra Confidential’ is represented by European Health Care Services Ltd., In America and Central Europe ‘Viagra Confidential’ is represented by Gifts n Presents Inc." It provides United Kingdom telephone and fax numbers for ordering and for its ‘Helpline’. The ‘Viagra’ page includes the photograph of a packet of the medicine, showing both the trademark VIAGRA and the Complainant’s name ‘Pfizer’.
The ‘About Us’ page includes a heading ‘How Do We Do It?’ where the following statement appears:
"All the 15 countries that comprise the E.U. seem to have different policies regarding pricing and taxation of pharmaceutical products, which in turn means that prices vary dramatically from one country to another for exactly the same product. In certain countries a prescription is necessary, whilst in others the same drug can be purchased ‘over the counter’. A good example of this is Viagra, manufactured by Pfizer and only available in the U.K on Prescription and virtually impossible to get on the NHS because it is on ‘restricted issue’ and only available after a patient undergoes special counseling. Viagra is however, available in 4 other European countries without a Prescription over the counter and at half the U.K. price. The same is true for literally hundreds of other drugs.
Meddicare works exclusively with European Health Care Services Ltd who are responsible for negotiating the best possible bulk purhase [sic] prices for us in Europe. This enables us to offer the lowest possible prices to our clients. Our prices are considerably lower ( in many instances up to 50% cheaper ) than you will find in your local Chemists".
The Respondent is not and never has been a representative of the Complainant or licensed to use the VIAGRA trademark.
5. Parties’ Contentions
The Complainant states that it has expended millions of dollars and extensive resources on research, development and marketing of VIAGRA brand sildenafil citrate. VIAGRA brand sildenafil citrate has been the subject of intense media attention and scrutiny. The VIAGRA trademark is now famous throughout the world generally and especially in the United States.
VIAGRA is a coined and fanciful term having no denotative meaning. The VIAGRA trademark is universally recognized as identifying the Complainant as the sole source of the drug, and distinguishing the Complainant’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.
The Complainant states that the Respondent’s domain name is clearly similar to the VIAGRA trademark and tradename, and that it is likely to cause confusion among the Complainant’s customers and the consuming public. The addition of a common term such as ‘confidential’ following the Complainant’s famous and distinctive VIAGRA trademark does not create a new or different trademark in which the Respondent has rights, and therefore is not sufficient to avoid customer confusion. The Complainant contends that its customers will be confused over the sponsorship or origin of the <viagraconfidential.com> domain name.
The Complainant also contends that the Respondent has no rights or legitimate interest in <viagraconfidential.com>. It claims that the Respondent clearly had knowledge of the famous VIAGRA trademark before registration of the disputed domain name. It states that the unauthorized use of a registered trademark for commercial use indicates a lack of legitimate interest, and that offering to sell the Complainant’s own product together with a competing product (i.e., Kamagra) through the use of the disputed domain name does not constitute a legitimate interest in the domain name or use of the domain name in connection with a bona fide offering of goods or services.
The Complainant also states that the Respondent has registered and uses <viagraconfidential.com> in bad faith. It states that the Respondent was well aware of the vast and valuable goodwill associated with the VIAGRA trademark, and registered the disputed domain name with the bad faith intent to profit from such registration and blatantly use in commerce a domain name fully incorporating the VIAGRA trademark. The Complainant refers to a number of factors confirming this bad faith intention. It also contends that the Respondent uses the domain name in bad faith to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation, or endorsement of the <viagraconfidential.com> website or of the products offered for sale on the website, and refers to a number of factors in support of this contention.
For these reasons, the Complainant requests that this Administrative Panel issues a decision ordering the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstance which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainants’ Trademarks:
The Administrative Panel accepts that the Complainant owns the VIAGRA trademark in the United States and worldwide.
The disputed domain name is not identical with the Complainant’s trademark, but does entirely incorporate the Complainant’s trademark. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication of but does not ipso facto mean that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin.
In the present case, the Administrative Panel considers that the disputed domain name is confusingly similar to the VIAGRA trademark for the following reasons: (a) VIAGRA is an invented word with a high degree of inherent distinctiveness; (b) ‘confidential’ is an ordinary descriptive word; (c) ‘confidential’ describes a characteristic of the type of service that sufferers of the condition treated by the Complainant’s product are likely to find attractive, and therefore in the absence of evidence that the Respondent has an established reputation for confidentiality is not capable of distinguishing the Respondent’s business from the Complainant’s business; and (d) a customer of the Complainant might well assume from the domain name that the site offers confidential information or sales from the Complainant itself or an authorized distributor.
Therefore the addition of the word ‘confidential’ is not sufficient to avoid a confusing similarity between the VIAGRA trademark and the disputed domain name, and so the first element required by the Policy is satisfied.
B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name:
Article 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the domain name. The first of these circumstances (Article 4(c)(i)) is that "before any notice to you [i.e., the Respondent] of the dispute, your use of, or 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."
The Respondent is using the domain name to offer for sale the Complainant’s own product and also a competing product. On the website, ‘Viagra Confidential’ is also used as a tradename (particularly on the Home page and on the ‘How to Order’ page) although there is not sufficient evidence to conclude that the Respondent is ‘commonly known’ by this name. The Respondent’s business appears to be based on arbitrage and bulk purchase within the European Union, through buying VIAGRA and Kamagra where they are relatively cheap and accessible, and selling them to customers in jurisdictions where these products are more expensive or subject to restricted availability. The Respondent makes no secret of the nature of its business; it refers to the fact that VIAGRA is manufactured by the Complainant, but does not represent that it is a distributor of or otherwise authorized by the Complainant to dispense its product (although at the same time there is no explicit disclaimer of a connection with the Complainant). Kamagra is represented to be a ‘generic’ medicine; that is, of the same chemical composition as VIAGRA but made by a manufacturer other than the Complainant.
The Respondent’s type of business as a parallel importer of goods is well-known to international trademark law. The Administrative Panel concludes that the Respondent is in fact using the domain name for the offering for sale of two products-viz., VIAGRA and Kamagra-and was doing so before it received notice of the dispute.
The Administrative Panel therefore must consider whether this offering of these
products is "bona fide" within the meaning of Article 4(c)(i) of the
Policy. The critical feature of this case is that the Respondent is offering
for sale not only the Complainant’s genuine product, but also a generic competitor.
It is therefore using a domain name confusingly similar to the Complainant’s
trademark to attract customers, who are then offered the choice of the Complainant’s
product, and a competing product at a lower price. The facts that the disputed
domain name is confusingly similar with the Complainant’s trademark and is used
to sell a competing product in this manner deprive the Respondent’s offering
of services of the "bona fide" character required to satisfy Article
4(c)(i) of the Policy. (A number of previous Decisions have reached a similar
conclusion: see, for example, Chanel, Inc. v. Cologne Zone, WIPO
Case No. D2000-1809 (February 22, 2001); National Collegiate
Athletic Association and March Madness Athletic Association, L.L.C. v. Mark
Halpern and Front & Center Entertainment, WIPO
Case No. D2000-0700 (December 10, 2000)).
Article 4(c)(ii) and (iii) of the Policy are not applicable in this case, because it is not established that the Respondent is commonly known by the disputed domain name, and there is clearly a commercial use with the intention of commercial gain of the disputed domain name.
In the absence of any response from the Respondent providing any evidence to support any other possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain name, the Administrative Panel therefore concludes that the Respondent has no legitimate rights or interests in respect of the domain name.
C. Whether the Respondent has Registered and Used the Disputed Domain Name in Bad Faith:
The Administrative Panel is satisfied that the Respondent has registered and used the domain name in bad faith. It refers in particular to two factors. Firstly, the disputed domain name will necessarily result in the attraction of Internet users to the Respondent’s website in the belief that it has some connection with the Complainant’s trademark as to source, affiliation or endorsement, when in fact there is no such connection. Although an intelligent Internet user might realize that this is not a site operated or authorized by the Complainant, the site has no explicit disclaimer of any such connection. In fact, the appearance of a photograph of the medicine on the website clearly showing the Complainant’s name tends to confirm the impression of affiliation or endorsement. For these reasons, the Administrative Panel finds that the Respondent’s intention was to create a likelihood of confusion with the Complainant’s trademark as to source, affiliation or endorsement in order to attract customers for commercial gain (cf. Article 4(b)(iv) of the Policy).
Secondly, as already explained, the Respondent is using the disputed domain name in bad faith by offering for sale a competing product to VIAGRA on a website incorporating the VIAGRA trademark in its domain name.
In the absence of any evidence to the contrary, the Administrative Panel concludes from the use of the disputed domain name in this manner that it was also registered in bad faith.
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 <viagraconfidential.com> be transferred to the Complainant.
David J.A. Cairns
Dated: December 31, 2003.