## Facts

- Pfizer, Inc. owned trademark registrations for VIAGRA in the United States and many other jurisdictions for a prescription pharmaceutical product.
- Martin Marketing registered the domain name `<viagra-nascar.com>` through Intercosmos Media Group, Inc. d/b/a directNIC.com.
- The domain resolved to a website featuring NASCAR-related content that used the VIAGRA mark in that context.
- Pfizer did not authorize Respondent to use the VIAGRA mark or to register a domain name incorporating it.
- Pfizer filed a UDRP complaint with the WIPO Arbitration and Mediation Center in August 2002; Respondent sent an informal email asserting the site did not misuse the trademark and linked to Pfizer, but did not submit a formal response and was declared in default.
- A sole panelist was appointed, and the proceeding was conducted in English.

## Issues

1. Whether `<viagra-nascar.com>` is identical or confusingly similar to a trademark in which Pfizer has rights under UDRP ¶ 4(a)(i).
2. Whether Respondent had rights or legitimate interests in the domain name under UDRP ¶ 4(a)(ii).
3. Whether the domain name was registered and used in bad faith under UDRP ¶ 4(a)(iii), including the circumstances described in UDRP ¶ 4(b)(iv).

## Decision

- The panel found the domain name confusingly similar to Pfizer’s VIAGRA mark because it wholly incorporated the mark and merely added “nascar.”
- The panel found Respondent lacked rights or legitimate interests because Pfizer made a prima facie showing of non-authorization and Respondent provided no substantiated basis for bona fide use or fair use.
- The panel found bad-faith registration and use, inferring knowledge of the famous VIAGRA mark and concluding the domain was used to attract Internet users by creating confusion as to source or sponsorship.
- The panel ordered transfer of `<viagra-nascar.com>` to Pfizer.

## Legal Principles

- A domain name that incorporates a complainant’s mark in its entirety is typically confusingly similar, and adding a descriptive or generic term does not avoid confusion under UDRP ¶ 4(a)(i).
- Once a complainant makes a prima facie showing that a respondent lacks rights or legitimate interests, the burden shifts to the respondent to produce evidence of a UDRP ¶ 4(c) circumstance; default permits the panel to accept unrebutted allegations supported by the record.
- Registration of a domain name incorporating a widely known mark by an unaffiliated registrant supports an inference that the registrant knew or should have known of the complainant’s rights.
- Linking to a trademark owner’s site does not, by itself, establish legitimacy or negate bad faith when the respondent has appropriated the mark in the domain name and uses it in a manner likely to confuse users.
- Bad faith under UDRP ¶ 4(b)(iv) is shown where the domain is used to intentionally attract users for commercial gain by creating a likelihood of confusion regarding affiliation, sponsorship, or endorsement.

## Conclusion

The panel concluded that Respondent’s unauthorized registration and use of a domain name combining the famous VIAGRA mark with another term satisfied all three UDRP elements, and it therefore ordered the domain transferred to Pfizer.


Pfizer, Inc. v. Martin Mktg., WIPO Case No. D2002-0793 (Nov. 15, 2002)