Pfizer Inc. v. Igor Shorop
Claim Number: FA0906001266024
PARTIES
Complainant is Pfizer Inc.,
(“Complainant”) represented by Paul C.
Llewellyn, of Kaye Scholer LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viagra.us>,
registered with Namescout.com.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 2, 2009; the Forum received a hard copy of
the Complaint on June 5, 2009.
On June 3, 2009, Namescout.com confirmed by e-mail to the Forum that
the <viagra.us> domain name is registered with Namescout.com and that Respondent is
the current registrant of the name. Namescout.com
has verified that Respondent is bound by the Namescout.com registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On June 8, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 29, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On July 2, 2009 pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink
(Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <viagra.us> domain name is identical to Complainant’s VIAGRA mark.
2.
Respondent does not have any rights or
legitimate interests in the <viagra.us> domain name.
3.
Respondent registered and used the <viagra.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Pfizer Inc., is one of the
largest global pharmaceutical enterprises, operating in over 150
countries. Complainant has utilized its VIAGRA
mark in connection with its pharmaceutical offerings since 1998, and has
registered the mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,162,548 issued June 2, 1998) and numerous other
governmental trademark authorities worldwide, including
Respondent registered the <viagra.us>
domain name on March 16, 2009. The disputed domain name is being used to
resolve to a website featuring sponsored click-through links which further
resolve to websites of Complainant’s competitors, promoting other products
which purport to treat erectile dysfunction.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds that Complainant has
established rights in its VIAGRA mark under Policy ¶ 4(a)(i) based on the registration of its VIAGRA mark with the
USPTO and the
Complainant alleges that Respondent’s <viagra.us> domain name is identical to Complainant’s VIAGRA mark. The disputed domain name contains Complainant’s VIAGRA mark in its entirety with the addition of the country-code top-level domain (“ccTLD”) “.us.” The Panel concludes that the addition of the ccTLD is insignificant, rendering Respondent’s <viagra.us> domain name identical to Complainant’s VIAGRA mark under Policy ¶ 4(a)(i). See Future Steel Holdings Ltd. v. Majercik, FA 224964 (Nat. Arb. Forum Mar. 15, 2004) (“The <steelmaster.us> domain name is identical to the STEEL MASTER mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”).
Complainant has satisfied Policy ¶ 4(a)(i).
Rights
or Legitimate Interests
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Respondent has failed to respond to the allegations against it. Thus, the Panel may presume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). Nevertheless, the Panel will examine the evidence to determine whether Respondent has any rights or legitimate interests in the <viagra.us> domain name under Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any
service marks or trademarks that reflect the <viagra.us> domain
name. Therefore the Panel finds that
Respondent does not have rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum
Aug. 20, 2002) (finding that there was no evidence that Respondent was the
owner or beneficiary of a mark that is identical to the
<persiankitty.com> domain name); see also Pepsico, Inc. v Becky,
FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did
not own any trademarks or service marks reflecting the <pepsicola.us>
domain name, it had no rights or legitimate interests pursuant to Policy ¶
4(c)(i)).
The WHOIS information for the
disputed domain name identifies the registrant as “Igor Shorop.” Moreover,
Complainant contends that Respondent has no authorization or license to use
Complainant’s VIAGRA mark. The Panel
therefore finds that Respondent is not commonly known by the disputed
domain name under Policy ¶ 4(c)(iii). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain
name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in
the record); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The disputed domain name resolves to a website featuring click-through links and advertisements, which divert Internet users to the websites of Complainant’s competitors. The Panel presumes that Respondent is generating revenue from such use and therefore finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv), respectively. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
Complainant has satisfied Policy ¶ 4(a)(ii).
Registration
or Use in Bad Faith
The Panel finds that Respondent’s display of
click-through links that promote Complainant’s competitors on the disputed
domain name’s resolving website likely disrupts Complainant’s business. Therefore, the Panel finds that Respondent
has engaged in bad faith registration and use under Policy ¶
4(b)(iii). See David Hall Rare Coins v.
The Panel further concludes that Respondent’s use of an identical domain name, intentionally attempting to attract Internet users to Respondent’s website while presumably generating revenue, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated UDRP ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <viagra.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 15, 2009
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