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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. jg a/k/a Josh Green

Case No. D2004-0784

 

1. The Parties

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

The Respondent is jg, a/k/a Josh Green of New York, New York, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <pfizerforwoman.com> and <wwwpfizerforwomen.com> are registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2004. On September 30, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On September 30, 2004, Intercosmos Media Group d/b/a directNIC.com 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 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 October 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2004.

The Center appointed Terrell C. Birch as the sole panelist in this matter on November 22, 2004. 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, Pfizer, Inc, hereinafter “PFIZER,” in paragraphs V.1 -7 of the Complaint has set forth its large corporate status, its reputation throughout the international community and has established that its PFIZER trademark is famous and universally recognized and relied upon as identifying the Complainant as the sole source of its pharmaceuticals, consumer health care products, animal health products, and informational services, distinguishing the Complainant from other companies and the Complainant’s products from the goods and services of others. PFIZER’s registrations go back as early as August 1948, and in 2001, PFIZER began using the mark PFIZER FOR WOMEN as well as the <pfizerforwomen.com> domain name since at least September 2001.

The Panel accepts the factual representations of paragraph 6 of the Complaint spelling out how the marks PFIZER, PFIZER FOR WOMEN, and PFIZERFORWOMEN.COM are trademarks used in conjunction with health related educational and informational services for women.

 

5. Parties’ Contentions

A. Complainant

1. PFIZER contends it owns exclusive rights to the trademarks PFIZER, PFIZER FOR WOMEN, and PFIZERFORWOMEN.COM.

2. PFIZER contends that Respondent’s domain names are identical or confusingly similar to PFIZER’s trademarks.

3. PFIZER contends that Respondent has no rights or legitimate interests in the trademarks.

4. PFIZER contends that Respondent has registered and is using the domain names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Panel finds that PFIZER owns exclusive rights to the trademarks PFIZER, PFIZER FOR WOMEN, and PFIZERFORWOMEN.COM based upon the factual presentations and allegations of paragraphs 1-6 of the Complaint, which the Panel adopts as factual findings herein.

A. Identical or Confusingly Similar

The Panel finds that Respondent’s domain names are substantially identical and confusingly similar to the PFIZER trademarks for at least the following reasons:

Respondent’s <wwwpfizerforwomen.com> and <pfizerforwoman.com> domain names incorporate wholesale the PFIZER mark and take advantage of a common Internet typing error (i.e., omitting the “.” after the “www”) and the plural/singular variation (i.e., “woman” instead of “women”) of PFIZER’s trademark and domain name PFIZERFORWOMEN.COM. Thus, Respondent’s <wwwpfizerforwomen.com> domain name is identical to PFIZER’s PFIZER FOR WOMEN and PFIZERFORWOMEN.COM trademarks, except for the absence of a period between “www” and “pfizerforwomen” (and, in the case of the PFIZER FOR WOMEN mark, the addition of the ‘.com’ extension, which is generic and of no trademark significance). Respondent’s <pfizerforwoman.com> domain name is identical to PFIZER’s PFIZERFORWOMEN mark, except it uses the singular, “woman,” rather than the plural, “women.”

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the domain names for the following reasons:

PFIZER has no information about Respondent and has never authorized Respondent to register or use the domain names at issue or the PFIZER or PFIZER FOR WOMEN marks. Respondent has no rights or legitimate interests in the subject domain names. Upon information and belief, Respondent is not commonly known by the name PFIZER or PFIZER FOR WOMEN, or any variation thereof. “UDRP panels have made it quite clear that it takes more than domain name registration to obtain rights in the domain name.” 2 Gilson at § 7A.06[2][b][iii] at page 7A-82 & n.236 (citing panel decisions).

PFIZER’s adoption of the marks PFIZER, PFIZER FOR WOMEN, and PFIZERFORWOMEN.COM precedes Respondent’s registration of the domain names at issue in August and November 2002. Moreover, given the use of Respondent’s domain names to divert users to a site selling pharmaceuticals – the very market area with which consumers have long and overwhelmingly associated PFIZER’s trademarks – it is indisputable that Respondent had knowledge of PFIZER’s famous marks prior to registration of the disputed domain names.

Respondent’s use of the domain names at issue to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the domain names. Thus, several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy. In Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199, a case nearly identical to this one, the panel found that the registrant had no legitimate interest in its domain name where, as here, the registrant was using its domain name <wwwpfizer.com> to redirect Internet users to an on-line pharmacy. In AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, the respondent registered another pharmaceutical manufacturer’s well-known trademark as a domain name and redirected traffic to an on-line pharmacy. The panel found the respondent had no legitimate interests in the domain name because selling the complainant’s goods on the respondent’s site “does not give [respondent] the right to register and use the mark as a domain name without the consent of the holders of the trademarks.” [Emphasis theirs] Id. at 5. Therefore, the panel held that the respondent was “prevented from having prior rights to the legitimate interests in the domain name as against the Complainant.” Id. (citing Ullfrottй AB v. Bollnas Imports, WIPO Case No. D2000-1176; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292)); see also Aventis, Aventis Pharma SA. v. VASHA Dukes, WIPO Case No. D2004-0276 (finding respondent’s operation of an on-line pharmacy under complainant’s trademark constituted no legitimate use); Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 (finding no legitimate use, where respondent used a domain name confusingly similar to a trademark of complainant’s pharmaceutical company, to forward Internet users to respondent’s on-line pharmacy); Pfizer Inc v. lipidor.com DNS Services, WIPO Case No. D2002-1099 (domain name similar to Complainant’s mark, which redirected traffic to an on-line pharmacy website selling Complainant’s and its competitor’s drugs, constitutes “no legitimate interests in the Domain Name...”).

Further, Respondent’s typosquatting of PFIZER’s famous mark demonstrates a lack of legitimate use in its domain name. Clearly, Respondent has purposefully selected these terms, which contain common typos of PFIZER’s marks, in order to divert to Respondent’s affiliated on-line pharmacy consumers who are attempting to locate PFIZER’s websites. The terms used by Respondent are not used by Respondent to identify either its business or the business of the resulting website, to which its domains names are linked. Respondent’s domain names appear to be designed solely to take advantage of mistakes consumers are likely to make when intending to enter PFIZER’s websites and, as such, do not constitute a bona fide or legitimate use thereof. Upon information and belief, the Respondent intends to profit from the ensuing confusion and, as a result, PFIZER has been and will continue to be deprived of visits by Internet users. Such use, in the United States for instance, constitutes trademark infringement and dilution in violation of Sections 32 and 43 of the United States Trademark Lanham Act, 15 U.S.C. § 1114, §1125. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (“[I]n order for Respondent’s Internet business to be “legitimate” under the Policy, it must make non-infringing use of Complainant’s world famous trademark”). This tactic, which takes advantage of mistakes consumers may make when attempting to locate the PFIZER-sponsored website, does not constitute a legitimate use of the disputed domain names.

There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain. The Respondent is instead misleading and diverting PFIZER’s customers to its affiliated pharmaceutical sales site, most of the products offered on which are sold by PFIZER’s direct competitors, thereby creating the impression that Respondent’s domain names, the affiliated on-line pharmacy and the products thereon are in some way affiliated with, or approved or sponsored by, PFIZER.

C. Registered and Used in Bad Faith

Respondent has registered and used the Complainant’s marks in bad faith.

1. The Panel finds that the Respondent has registered its two domain names in bad faith for at least the following reasons:

The Respondent, in common with the public, is well aware of the vast and valuable goodwill and reputation represented and symbolized by the PFIZER and PFIZER FOR WOMEN trademarks. As used by PFIZER, these marks are recognized and relied upon by medical professionals and the public throughout the world as the sole means to identify and distinguish PFIZER and its goods and services from the goods and services of others. PFIZER also currently has registered and utilizes the Internet sites <pfizer.com> and <pfizerforwomen.com>. The Respondent, recognizing the value of the Internet to PFIZER in enhancing its ability to communicate with customers and potential customers, registered the domain names <pfizerforwoman.com> and <wwwpfizerforwomen.com> with the bad faith intent to profit from such registration and blatantly registered terms which look and sound virtually identical to PFIZER’s mark, to do so.

This bad faith registration is exemplified by the following:

a. Respondent, aware of the fame and goodwill associated with the PFIZER and PFIZER FOR WOMEN marks deliberately registered domain names with only minor spelling and punctuation variations to the PFIZER and PFIZER FOR WOMEN marks, in order to confuse consumers and to profit from such confusion. See Google, Inc. v. Namerental.com and Leonard Bensonoff, WIPO Case No. D2001-0060 (a minor spelling variation to a well-known mark, standing alone, creates a prima facie inference of bad faith).

b. Respondent’s domain names were intended to be and are substantially confusingly similar to PFIZER’s marks, both visually and aurally.

c. Respondent’s deliberate use of common typos for both domain names indicates that the Respondent knew or should have known of PFIZER’s registration and use of PFIZER’s well-known marks prior to registering the domain names. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (Respondent’s knowledge of the Complainant’s mark before he registered the disputed domain name constitutes bad faith). Respondent’s use of the domains names to refer to an on-line pharmacy selling PFIZER’s and others’ products confirms Respondent’s awareness of PFIZER’s well-known marks.

d. Further, Respondent’s registration of two copycat domains names evinces a pattern of copying PFIZER’s marks. Panels have found that such a pattern of registering multiple domain names that are identical or confusingly similar to famous trademarks is proof of bad faith. See Stella D’oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012; Nabisco Brands Company v. The Patron Group, Inc., WIPO Case No. D2000-0032; Seiko Epson Corporation et al v. JIT Consulting, National Arbitration Forum Case No. FA8000095476.

e. The fourth of the identified “bad faith” factors enumerated in UDRP Rule 4(b)(iii) applies with particular force here. The rule states that it is bad faith to register and use a domain name to intentionally attract Internet users to the respondent’s sites for commercial gain “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” on respondent’s sites or “of a product or service” on respondent’s sites. In the Telstra decision, for example, the panel found that the replication of the complainant’s trademark in respondent’s domain name, together with the broad reputation of the complainant’s trademark for certain goods and products, left no other possible interpretation than that of bad faith:

“It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name “telstra.org.” It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.”

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (talk-city.com used in bad faith because it captured Internet users looking for <talkcity.com>); Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 (<poterybarn.com> used in bad faith because it aimed at customers of <potterybarn.com>); Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (<0xygen.com> used in bad faith because it aimed at customers of <oxygen.com>); Nintendo of America Inc. v. Max Maximus, WIPO Case No. D2000-0588 (<gameb0y.com> used in bad faith because it aimed at customers of <gameboy.com>); Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273 (37 typographical variants used in bad faith to capture visitors to <yahoo.com>).

f. Here, the Respondent has, by using PFIZER’s trademark in its domain names, diverted Internet users to an on-line pharmacy selling PFIZER’s and other’s products, and intentionally created a likelihood of confusion with PFIZER’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s affiliated on-line pharmacy website.

g. Respondent is not, nor has it ever been, a representative of PFIZER or licensed to use the PFIZER mark. Respondent’s domain names were registered intentionally to misdirect customers looking for PFIZER’s sites. The domain names are intended to deceive PFIZER’s customers, and the sale of PFIZER products on the resulting website reinforces the deception. This conduct is bad faith and violates the UDRP.

2. The Panel finds that Respondent has used the domain names, in bad faith, for at least the following reasons:

Bad faith use is exemplified here by the following:

a. PFIZER and PFIZER FOR WOMEN are famous marks that are recognized worldwide by consumers and professionals.

b. Respondent, by using slight variations of PFIZER’s marks to divert Internet users to an on-line pharmacy selling PFIZER’s and its competitors’ products, for financial gain, is deliberately causing confusion as to source, sponsorship, affiliation or endorsement of the resulting website. See Williams-Sonoma, supra, WIPO Case No. D2002-0582 (<poterybarn.com> use in bad faith because it aimed at customers of <potterybarn.com>).

c. The deliberate diversion of Internet users who intend to access PFIZER’s website constitutes bad faith, by creating initial interest confusion that takes advantage of PFIZER’s goodwill. It is well-established in UDRP decisions that “initial interest confusion” and the resultant misdirection of Internet traffic to respondent is independently sufficient to establish bad faith. See Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128 (finding deliberate initial interest confusion is “sufficient to establish bad faith”).

d. Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy.

e. Respondent’s selling of pharmaceuticals without requiring proof of a physical examination by a physician, in connection with the unauthorized use of Pfizer’s trademarks or slight variations thereof, is tantamount to bad faith. See Aventis, Aventis Pharma SA. v. VASHA Dukes, WIPO Case No. D2004-0276 (ruling Respondent’s sale of Complainant’s pharmaceuticals without a prescription using Complainant’s trademark as their domain name “may lessen the reputation associated with Complainants’ trademark” and weighs in favor of finding bad faith).

f. Respondent’s use of the domain names to promote the sale of products in competition with PFIZER’s products constitutes bad faith. See Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240 (finding webforwarding Internet users to a competitor of Complainant constitutes bad faith use); Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400 (use of domain name to sell goods of Complainant’s competitors constitutes bad faith); Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088 (same).

g. As a direct consequence of the Respondent’s actions, the public will be misled as to the accuracy of the information provided or the origin, sponsorship, or association of the products or services offered or sold via the resulting websites. The Respondent’s use of domain names that are confusingly similar to the PFIZER and PFIZER FOR WOMEN marks may also prevent or hinder Internet users from accessing PFIZER’s informational and educational services on PFIZER’s own websites by confusing and/or frustrating prospective users. Once confused or frustrated, Internet users may stop searching for PFIZER’s websites altogether. The Respondent’s purposefully deceptive domain names anticipate, rely on and profit from this consumer confusion or mistake and constitute bad faith use of the domain names.

 

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 names, <pfizerforwoman.com> and <wwwpfizerforwomen.com>, be transferred to the Complainant.


Terrell C. Birch
Sole Panelist

Dated: December 6, 2004

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0784.html

 

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