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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Pfizer Inc v Pfizer-Viagra [2006] DRS 3244 (14 February 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3244.html Cite as: [2006] DRS 3244 |
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Nominet UK Dispute Resolution Service
DRS 03244
Pfizer Inc v Pfizer-Viagra
Decision of Independent Expert
Complainant: Pfizer Inc
Country: US
Respondent: pfizer-viagra
Country: GB
pfizer-viagra.co.uk
("the domain name")
Hard copy of the complaint dated 22 December 2005 was received by Nominet on 28 December. On the same day, Nominet sent the Respondent notice of the complaint, explaining that it had 15 working days to respond. No response was received. Informal mediation not being possible, Nominet gave both parties notice that its file would be closed unless it received the appropriate fees for the matter to be referred for an expert decision. The fees were received on 6 February.
On 9 February I, Mark de Brunner, agreed to serve as an Expert under Nominet's Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.
There are no outstanding formal or procedural issues.
I accept the following as facts.
The Complainant is part of the Pfizer group of companies. Established in 1849, using the 'Pfizer' name, this is the largest pharmaceutical business in the world. Turnover in 2004 exceeded US$ 52 billion. Since 1998, the Complainant has marketed a treatment for what it calls 'erectile dysfunction' under the name 'Viagra'. It has nine Community trademark registrations incorporating 'Pfizer' and three incorporating 'Viagra' – together covering a range of goods and services, including pharmaceutical preparations. The registered marks include
- the name 'Pfizer' in a distinctive typeface, enclosed within an ellipse
- a distinctive, blue, 3-dimensional shape, incorporating the word 'Pfizer' and representing the way in which the Complainant's 'Viagra' products are dispensed in tablet form.
The Complainant's wholly owned subsidiary, Pfizer Products Inc, holds a related set of UK trademark registrations.
Both 'Pfizer' and 'Viagra' are included by the independent organisation Superbrands on its list of Global Brands.
The Complainant registered the domain name pfizer.com in 1992 and viagra.com in 1997.
The Respondent registered the domain name at issue on 31 December 2003.
The webpage to which the domain name resolves carries the 'Pfizer' mark (using the distinctive typeface, enclosed within an ellipse) and contains pictures of pills that - in colour, shape and lettering - look like the 'Viagra' tablets manufactured by the Complainant. These pills are offered for sale.
When this first came to the Complainant's attention, it tried communicating directly with the Respondent to ask it to stop its marketing and selling activity. That did not prompt a reply, so the Complainant contacted the Internet Service Provider hosting the Respondent's website. The ISP took the website down but a short time later the Respondent reactivated the site using an alternative ISP.
Complainant
The Complainant says it has rights in the names 'Pfizer' and 'Viagra'. It says that the Respondent is using its marks without authority and (having carried out a test purchase) that the pills offered for sale through the website at the domain name are counterfeit. The Complainant argues that the domain name is an abusive registration because:
(i) the Respondent acquired the domain name as a blocking registration
(ii) the Respondent acquired the domain name for the purpose of unfairly disrupting the Complainant's business
(iii) the Respondent is using the domain name in a way which has confused people into believing that the domain name is somehow connected to the Complainant
(iv) allowing this kind of use will encourage others to take unfair advantage of the Complainant's rights too, eroding the distinctiveness of its trademarks and decreasing their value.
Respondent
There has been no reply.
General
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
- it has rights in respect of a name or mark which is identical or similar to the domain name; and
- the domain name, in the hands of the Respondent, is an abusive registration.
There has been no reply to date. The Dispute Resolution Service Procedure says that, in the absence of exceptional circumstances
- if a party does not comply with any time period laid down in the DRS Policy or Procedure, the expert will proceed to a decision on the complaint; and that
- if a party does not comply with any provision in the Policy or Procedure, the expert will draw such inferences as he considers appropriate.
I am not aware of any exceptional circumstances here and so propose to proceed to a decision. Within the DRS, the approach to be adopted where there is no reply is well established: if the Complainant can make out a prima facie case that there is an abusive registration, that case demands an answer. In the absence of an answer, the complaint will ordinarily succeed. So the question becomes whether the Complainant has made out a prima facie case.
Complainant's Rights
The complaint is supported by a series of trademark registrations in the names 'Pfizer' and 'Viagra'. Copy from a BBC News website reports sales of 'Viagra' worth £338 million in the 6 months following its release and credits Pfizer with having created a £1.5 billion world-wide market in anti-impotence pills. It is clear that both 'Pfizer' and 'Viagra' are significant global brands.
The Complainant evidently has registered and unregistered rights in the names 'Pfizer' and 'Viagra'. The domain name is pfizer-viagra.co.uk. Taking the two names individually, each one (being included within the domain name) is similar to the domain name.
The Complaint asserts that the marks 'Pfizer' and 'Viagra' are used together as well as separately. The photographs of typical packaging do indeed show them appearing near one another. Arguably, therefore, the Complainant also has rights in the combination 'Pfizer Viagra'. The domain name contains the suffixes .co and .uk but I can ignore these as a generic feature of the Nominet register. It also contains a hyphen. There may be circumstances in which a hyphen is a significant feature, but this is not one of them. On that analysis, the name or mark in which the Complainant has rights is identical to the domain name.
It is clear that each name is similar to the domain name. Arguably, the two names can also be taken together and treated as identical to the domain name. I accept that argument. In summary, to the extent that the name in respect of which the Complainant has rights is
- 'Pfizer', the name is similar to the domain name
- 'Viagra', the name is similar to the domain name
- 'Pfizer Viagra', the name is identical to the domain name.
I conclude that the Complainant has rights in respect of a name or mark which is identical or similar to the domain name.
Abusive Registration
The Dispute Resolution Service rules define an abusive registration as a domain name which either
(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's rights; or
(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.
I can take the Complainant's arguments on this point in turn. The first three of them reflect the list, in the DRS Policy, of factors that may be evidence of an abusive registration.
The first argument is that this is a 'blocking' registration, designed to stop the Complainant registering the domain name itself. As a matter of fact, the registration of the domain name by the Respondent does stop the Complainant registering it. But I read the Policy here as implying some intention to block. No evidence has been offered of the Respondent's motive in registering the domain name. Indeed, in the absence of a response, evidence of motive is likely to be, at best, indirect.
The Complainant seems to me to be on much firmer ground in arguing that either
- the registration was intended unfairly to disrupt the Complainant's business or
- the domain name is being used in a way which has confused people into believing that it and, by extension, the products on offer through the website, are connected with the Complainant.
The Complainant says it bought a sample of the products through the website and has established that they are counterfeit. It is not completely clear whether the Complainant means by this that the products have been manufactured by the Complainant and simply sold without authorisation, or that they have been manufactured by someone else. Either way, however, the domain name is being used to create the inaccurate impression that goods on offer at the website are sold by the Complainant or with its authority – to the Respondent's commercial advantage. That can only represent unfair disruption of the Complainant's business.
An argument that people could be confused would carry some weight even without evidence of actual confusion. But the Complaint goes further and offers a witness statement from a customer who used the website under the impression that it was connected to or approved by the Complainant. I regard that as strong evidence that the risk of confusion is high and that people are in fact being confused by the way the domain name is being used.
The Complainant goes on to argue that allowing the Respondent to use the domain name in this way will encourage others to take unfair advantage of the Complainant's rights too. That of course begs the question of whether unfair advantage has been taken here – the very issue before me. If unfair advantage has not been taken of the Complainant's rights, the argument falls away because there is no unfairness to copy. On the other hand, if unfair advantage has been taken of the Complainant's rights, the question of abusive registration is settled without any need to consider the consequences of allowing that unfairness to stand.
In fact this all seems remarkably clear. The Complainant has taken care to establish its rights in respect of a name or mark that is identical or similar to the domain name. The domain name is being used to draw in traffic on the strength of the Complainant's reputation and to attempt to sell goods that the Complainant says are counterfeit. Given the risk this involves to the Complainant's business and goodwill, it can only be regarded as taking unfair advantage of or being unfairly detrimental to the Complainant's rights. There are strong grounds for the view that the Complainant has made a compelling argument. At the very least, it has established a prima facie case that this is an abusive registration. That case demands a response. In the absence of a response, the complaint succeeds.
I find that the Complainant has rights in respect of a name or mark which is identical or similar to the domain name; and that the domain name, in the hands of the Respondent, is an abusive registration.
In the light of that, I direct that the domain name be transferred to the Complainant.
Mark de Brunner
14 February 2006
