Complainant is Pfizer Inc., New York, New York, United States of America, represented by Kaye Scholer, LLP, United States of America.
Respondent is Private person, Aleksandr Syichev of Sankt-Peterburg, Leningradskaya oblasti, Russian Federation and PrivacyP, Domain Admin, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2013. On April 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 22, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 25, 2013.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 27, 2013.
The Center appointed Eduardo Machado as the sole panelist in this matter on June 11, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is one of the world’s largest pharmaceutical manufacturers and sellers and maintains operations in more than 150 countries.
Complainant owns the registered trademark XELJANZ, United States Trademark Registration No. 4,099,367, which was applied for on March 11, 2009 and issued on February 14, 2012.
Complainant and its affiliates also own numerous registrations for the XELJANZ mark throughout the world.
Complainant and its affiliates use the well-known XELJANZ mark as the name of, and in connection with the worldwide sale of, its medication for treatment of certain adults with moderately to severely active rheumatoid arthritis.
A visit by the Panel to the respective site demonstrated that Respondent’s website hosts “pay-per-click” links to sites that advertise and sell the products of third parties, including medicines and health treatment. 5. Parties’ Contentions A. Complainant
Basically, Complainant alleges that Respondent, in an evident effort to divert persons interested in purchasing or learning about the Xeljanz product and to unfairly trade on the good will and reputation of Complainant’s XELJANZ mark, has anonymously registered the domain name , which wholly incorporates the famous XELJANZ trademark and merely appends the generic term “med” which is a short form for “medicine”).
Furthermore, Complainant states that Respondent has no legitimate right over the trademark XELJANZ, and has used and is using the disputed domain name to direct Internet users, for a profit, to a web site that hosts “pay-per-click” links to sites that advertise and sell the products of third parties, including third party products that compete with Complainant’s products. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the complainant's trademark or service mark; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that that the disputed domain name incorporates wholesale the Complainant`s trademark XELJANZ with the mere addition of the generic term “med,” and also that the disputed domain name is confusingly similar to Complainant’s domain name , at which Complainant operates a web site.
In addition, the Panel finds that the disputed domain name is likely to cause confusion among Complainant’s customers and Internet users.
Therefore, the condition set out by paragraph 4(a)(i) has been met by Complainant. B. Rights or Legitimate Interests
According to Complainant, Respondent is not affiliated with Complainant and Complainant confirms that it has never authorized Respondent to register or use the disputed domain name.
Furthermore, Complainant’s adoption and registration of its Trademark precedes Respondent’s registration of the disputed domain name.
It is also well clear that Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the clear intent of commercial gain.
The Panel takes into consideration the fact that Respondent did not answer to the Complaint.
The Panel finds that Respondent is not commonly known by the name “Xeljanz”, or any variation thereof. Moreover, Respondent does not appear to have any trademark rights in the mark XELJANZ.
The Panel concurs with the allegation that Respondent has registered the disputed domain name explicitly for the purpose of making illegitimate or unfair use of Complainant’s trademark by using the disputed domain name to attract visitors who will then generate “pay-per-click” fees when they click through the commercial links that appear on Respondent’s website and visit the sites advertised there, including sites that offer products sold by other parties for the treatment of rheumatoid arthritis, and that therefore may compete with Complainant’s own products.
The Panel also finds that Respondent has no right to use the trademark XELJANZ for a domain name that is used to advertise and sell goods for-profit. See, e.g., Pfizer Inc. v. Pretzel Publishing,WIPO Case No. D2005-1329 (transferring , which was used for site that not only provided information about Pfizer’s Viagra, but also linked to related site promoting competing product).
Therefore, the condition set out by paragraph 4(a)(ii) of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
The Panel finds that Complainant’s trademark XELJANZ is an invented and coined mark that has a strong worldwide reputation, of which Respondent, who is not a representative or licensed of such mark, plainly was aware at the time the disputed domain name was registered, given the content on Respondent’s site as well as the links to commercial sites selling other arthritis treatments.
The Panel also finds that the disputed domain name deliberately and misleadingly includes wholesale Complainant’s registered trademark XELJANZ.
The Panel agrees that Respondent has registered and is using the disputed domain name intentionally to misdirect and divert customers looking for information about Complainant and its XELJANZ product to a for-profit web site that collects “pay-per-click” revenue from sites that offer third-party products, including products that compete with genuine XELJANZ product. See, e.g., Pfizer Inc. v. Fizer Inc.,WIPO Case No. D2005-085 (respondent’s receipt of click through fees from links on its web site is “clear evidence of bad faith”); Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600 (finding bad faith where the domain name was “used in connection with the promotion and sale of competing products”); Yahoo! Inc. v. Carrington, NAF Claim No. 308000184899 (redirecting users to competing websites of Complainant’s while earning profits in the form of referral found to be bad faith use).
In this sense, the Panel concludes that use of a mark in a domain name to promote the sale of products in competition with the mark owner’s products, as the Respondent here is doing, constitutes bad faith. See, e.g., Pfizer Inc. v. Medlink Telecom GmbH, WIPO Case No. D2002-0547; Pfizer Inc. v. Lorna Kang,WIPO Case No. D2002-0480 (July 3, 2002); Pfizer, Inc. v. Seocho and Vladimir Snezko,WIPO Case No. D2001-1199 (Dec. 10, 2001); Pfizer Inc. v. E,WIPO Case No. D2001-0791.
The Panel is of the opinion that there is ample evidence for a finding of bad faith in this case.
Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by Complainant. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to Complainant.
Eduardo Machado
Sole Panelist
Date: June 24, 2013
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