Pfizer Inc. v. Jeff Ferris
(Viagra v. ViagraRing.com)
WIPO Case No. D2006-1242
FACTUAL BACKGROUND
Complainant Pfizer, Inc. is a large pharmaceutical enterprise with operations worldwide. Among other products, Pfizer developed, produces and distributes a medication used to treat erectile dysfunction under the brand name Viagra. Viagra has been used in connection with this medication in the U.S. since April 6, 1998.
Viagra has been a registered trademark of Pfizer since June 2, 1998, when the USPTO registered the mark on the Principle Register of the United States. Pfizer, either directly or through its subsidiaries, also owns trademark registration for the Viagra mark in several countries worldwide. Additionally, Pfizer owns the domain name viagra.com and operates a website under that domain.
The Viagra brand, through extensive marketing and publicity, is one of the most recognizable names in the world. It has become synonymous with Pfizer and its erectile dysfunction medication product, sildenafil citrate.
On October 26, 2005, Respondent Jeff Ferris registered the domain name viagraring.com. Ferris uses the domain name in connection with a website on which he offers for sale a line of rings which feature a compartment in which a Viagra pill, or any other type of pill, could be stored. The site contains the text “These rings have a secret compartment with enough space to store lots of different things . . . What’s your poison?†Below this test is a button which links the user to another site, called ViaMedic, which sells several medications for erectile dysfunction, including Viagra.
PROCEDURAL HISTORY
The Complaint was filed with the WIPO Arbitration and Mediation Center (“WIPOâ€) on September 27, 2006. On September 29, 2006, the WIPO requested that Register.com (the registrar of the domain at issue, viagraring.com) verify registration of domain name by the Respondent. Register.com verified the registration and provided contact information for the Respondent.
In accordance with UDRP rules, WIPO notified the Respondent of the complaint. Proceedings commenced on October 4, 2006. Respondent filed his response with WIPO on October 24, 2006.
ISSUE
Does Ferris’ registration and use of viagraring.com constitute an abusive registration and use under the UDRP?
HOLDING
Yes. Ferris’ registration and use of viagraring.com IS an abusive registration and use under UDRP. The Panel ordered that the domain name, viagraring.com, be transferred to the Pfizer.
REASONING
Under paragraph 4(a) of the UDRP, Pfizer must prove each of the following three elements of its case in order to obtain the requested relief:
1. Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. Respondent’s Domain Name has been registered and is being used in bad faith.
The WIPO panel held that:
(A) IDENTICAL OR CONFUSINGLY SIMILAR. Pfizer held established rights in the Viagra mark, and that mark was clearly famous. Ferris completely incorporated the mark into the viagraring.com domain name, altering it only by the addition of the word “ring†which is common and generic.
Previous WIPO panels had held that the addition of generic or descriptive terms to Pfizer’s Viagra mark did not create a new or different mark and did not obviate consumer confusion.
Ferris’ argued that the viagraring.com domain name was not confusingly similar to the Pfizer mark, because he was selling jewelry and not “an ingestible substance.†The WIPO panel found this unconvincing and, accordingly, found the viagraring.com domain confusingly similar to Pfizer’s mark within the meaning of the UDRP.
(B) RIGHTS OR LEGITIMATE INTERESTS. Ferris did not contend that viagraring.com was commonly known by that domain name, nor did he have a license from Pfizer to use its Viagra mark. Ferris did not argue that he was making a fair use of the mark or making a legitimate non-commercial use.
The panel found that Ferris clearly knew of the Viagra mark prior to the registration of viagraring.com and consciously chose to use the Viagra mark in promoting the sale of his rings.
The panel also found that Ferris’ claim to a bona fide offering of goods was undermined by the fact that his rings had not particular exclusive association with the Viagra product. The rings could be, by Ferris’ own admission, used to house a variety of medications. Ferris claim was also undermined by fact that the viagraring.com website linked to ViaMedic.com, which promoted the sale of Viagra and other competing products further.
The Panel concluded that Ferris did not have rights to or legitimate interests in the domain name, nor was he using his domain name in connection with a bona fide offering of goods.
(C) REGISTERED AND USED IN BAD FAITH. Citing Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith), the Panel found that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. The Panel found that Ferris clearly registered his domain name (and appropriated Pfizer’s famous trademark) in order to suggest to users a connection between his product line and Pfizer’s product which simply did not exist. This was misleading and supported a finding of bad faith registration.
The Panel also found that Ferris used the viagraring.com domain name in bad faith. Under the UDRP, bad faith use of a domain name exists where such domain name is intentionally used to attract Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the products promoted on the website. The Panel found that Ferris clearly created and intended to exploit the likely confusion that would arise from his use of Pfizer’s Viagra mark to attract users to his website for commercial gain.
Accordingly, the Panel concluded that Ferris both registered and used the domain name viagraring.com in bad faith.
(Viagra v. ViagraRing.com)
WIPO Case No. D2006-1242
FACTUAL BACKGROUND
Complainant Pfizer, Inc. is a large pharmaceutical enterprise with operations worldwide. Among other products, Pfizer developed, produces and distributes a medication used to treat erectile dysfunction under the brand name Viagra. Viagra has been used in connection with this medication in the U.S. since April 6, 1998.
Viagra has been a registered trademark of Pfizer since June 2, 1998, when the USPTO registered the mark on the Principle Register of the United States. Pfizer, either directly or through its subsidiaries, also owns trademark registration for the Viagra mark in several countries worldwide. Additionally, Pfizer owns the domain name viagra.com and operates a website under that domain.
The Viagra brand, through extensive marketing and publicity, is one of the most recognizable names in the world. It has become synonymous with Pfizer and its erectile dysfunction medication product, sildenafil citrate.
On October 26, 2005, Respondent Jeff Ferris registered the domain name viagraring.com. Ferris uses the domain name in connection with a website on which he offers for sale a line of rings which feature a compartment in which a Viagra pill, or any other type of pill, could be stored. The site contains the text “These rings have a secret compartment with enough space to store lots of different things . . . What’s your poison?†Below this test is a button which links the user to another site, called ViaMedic, which sells several medications for erectile dysfunction, including Viagra.
PROCEDURAL HISTORY
The Complaint was filed with the WIPO Arbitration and Mediation Center (“WIPOâ€) on September 27, 2006. On September 29, 2006, the WIPO requested that Register.com (the registrar of the domain at issue, viagraring.com) verify registration of domain name by the Respondent. Register.com verified the registration and provided contact information for the Respondent.
In accordance with UDRP rules, WIPO notified the Respondent of the complaint. Proceedings commenced on October 4, 2006. Respondent filed his response with WIPO on October 24, 2006.
ISSUE
Does Ferris’ registration and use of viagraring.com constitute an abusive registration and use under the UDRP?
HOLDING
Yes. Ferris’ registration and use of viagraring.com IS an abusive registration and use under UDRP. The Panel ordered that the domain name, viagraring.com, be transferred to the Pfizer.
REASONING
Under paragraph 4(a) of the UDRP, Pfizer must prove each of the following three elements of its case in order to obtain the requested relief:
1. Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. Respondent’s Domain Name has been registered and is being used in bad faith.
The WIPO panel held that:
(A) IDENTICAL OR CONFUSINGLY SIMILAR. Pfizer held established rights in the Viagra mark, and that mark was clearly famous. Ferris completely incorporated the mark into the viagraring.com domain name, altering it only by the addition of the word “ring†which is common and generic.
Previous WIPO panels had held that the addition of generic or descriptive terms to Pfizer’s Viagra mark did not create a new or different mark and did not obviate consumer confusion.
Ferris’ argued that the viagraring.com domain name was not confusingly similar to the Pfizer mark, because he was selling jewelry and not “an ingestible substance.†The WIPO panel found this unconvincing and, accordingly, found the viagraring.com domain confusingly similar to Pfizer’s mark within the meaning of the UDRP.
(B) RIGHTS OR LEGITIMATE INTERESTS. Ferris did not contend that viagraring.com was commonly known by that domain name, nor did he have a license from Pfizer to use its Viagra mark. Ferris did not argue that he was making a fair use of the mark or making a legitimate non-commercial use.
The panel found that Ferris clearly knew of the Viagra mark prior to the registration of viagraring.com and consciously chose to use the Viagra mark in promoting the sale of his rings.
The panel also found that Ferris’ claim to a bona fide offering of goods was undermined by the fact that his rings had not particular exclusive association with the Viagra product. The rings could be, by Ferris’ own admission, used to house a variety of medications. Ferris claim was also undermined by fact that the viagraring.com website linked to ViaMedic.com, which promoted the sale of Viagra and other competing products further.
The Panel concluded that Ferris did not have rights to or legitimate interests in the domain name, nor was he using his domain name in connection with a bona fide offering of goods.
(C) REGISTERED AND USED IN BAD FAITH. Citing Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith), the Panel found that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. The Panel found that Ferris clearly registered his domain name (and appropriated Pfizer’s famous trademark) in order to suggest to users a connection between his product line and Pfizer’s product which simply did not exist. This was misleading and supported a finding of bad faith registration.
The Panel also found that Ferris used the viagraring.com domain name in bad faith. Under the UDRP, bad faith use of a domain name exists where such domain name is intentionally used to attract Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the products promoted on the website. The Panel found that Ferris clearly created and intended to exploit the likely confusion that would arise from his use of Pfizer’s Viagra mark to attract users to his website for commercial gain.
Accordingly, the Panel concluded that Ferris both registered and used the domain name viagraring.com in bad faith.