Pfizer Inc. and Pfizer
Claim Number: FA0905001260790
Complainant is Pfizer Inc. and Pfizer Ireland Pharmaceuticals, (“Complainant”)
represented by Martin Schwimmer, of Moses & Singer LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lipitor.us>, registered with Dynadot LLC.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 1, 2009; the Forum received a hard copy of the Complaint on May 5, 2009.
On May 5, 2009, Dynadot LLC confirmed by e-mail to the Forum that the <lipitor.us> domain name is registered with Dynadot LLC and that Respondent is the current registrant of the name. Dynadot LLC has verified that Respondent is bound by the Dynadot LLC 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 May 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 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 June 5, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <lipitor.us> domain name is identical to Complainant’s LIPITOR mark.
2. Respondent does not have any rights or legitimate interests in the <lipitor.us> domain name.
3. Respondent registered and used the <lipitor.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pfizer Inc. and Pfizer Ireland Pharmaceuticals (“Complainant”), comprises one of the largest global pharmaceutical enterprises, operating in over 150 countries. Complainant has utilized its LIPITOR mark in connection with its pharmaceutical offerings since 1997, and has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,074,561 issued June 24, 1997) and numerous other governmental trademark authorities worldwide.
Respondent registered the <lipitor.us> domain name on March 17, 2009. The disputed domain name resolves to a website that displays a medical encyclopedia entry and click-through links for various third parties, including some of Complainant’s competitors.
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
Complainant has evidenced its registrations of the LIPITOR mark with the USPTO and other governmental trademark authorities worldwide. The Panel finds that this sufficient evidence of Complainant’s rights in the LIPITOR mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant argues that <lipitor.us> domain name is identical to its LIPITOR mark. The Panel finds that the addition of the country-code top-level domain (“ccTLD”) “.us” is irrelevant under Policy ¶ 4(a)(i), and that the disputed domain name is identical to the 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.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the disputed domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests 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 describes Respondent as “Joseph Sicker.” Moreover, Complainant contends that Respondent has no authorization or license to use Complainant’s mark. The Panel therefore finds that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(iii), since Respondent is not commonly known by the disputed domain name. 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 that displays a medical encyclopedia entry as well as click-through advertising for Complainant’s competitors and other third parties. Complainant contends that Respondent does not own the copyright information for the medical encyclopedia entry. While this is more likely than not, the Panel finds that in either regard Respondent is still displaying click-through advertising, by which Respondent is presumed to materially benefit. The addition of an encyclopedia article, which may likely belong by copyright to a third party, does not dispel Respondent’s likely ultimate goal of referral fee accrual. Therefore, the Panel finds that Respondent has failed in creating a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration or Use in Bad Faith
The Panel finds that Respondent’s display of
click-through links for Complainant’s competitors on the resolving website is
the main intended use of the disputed domain name, regardless of the other
minimal posted medical content. As such,
the Panel finds that Respondent harbored the primary intent to disrupt
Complainant’s business, which evidences Respondent’s bad faith registration and
use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v.
Haecke, FA 726010 (Nat.
Arb. Forum July 24, 2006) (finding that the respondent
engaged in bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); see also
Complainant is commercially benefiting from this referral scheme through the receipt
of click-through fees. It is certain,
under this Panel’s view, that Respondent intentionally created a likelihood of
confusion as to Complainant’s sponsorship or endorsement of the identical
disputed domain name and resolving website.
Therefore, Respondent is found to have engaged in bad faith registration
and use under Policy ¶ 4(b)(iv). See
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <lipitor.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 18, 2009
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