The Complainant is Pfizer Inc. of New York, New York, United States of America (“U.S”), represented by Kaye Scholer, LLP, U.S.
The Respondent is Freda Atagamen of Michael Chucks, Vasant Vihar, New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name (“Disputds Domain Name”) is registered with eNom ( 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2014. On December 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 19, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2015
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on February 3, 2015. 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.
The Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English in accordance with Paragraph 11(a) of the Rules. 4. Factual Background
The Complainant is a renowned corporation in the world for a highly diversified pharmaceutical product mix ranging from prescription medicines for humans to consumer products. The Complainant has its global operation in more than 150 countries. The Complainant also enjoys fame all over the world, especially in Asia, including India, where the Respondent is located.
The Complainant and its affiliate own numerous prior trademark registrations including Trademark Registration No. 135798 dated September 27, 1948 for PFIZER, Trademark Registration No. 291665 dated October 25, 1973 for PFIZER, Trademark Registration No. 529365 dated May 10, 1990 for PFIZER, logo and Trademark Registration No. 1243445 dated January 22, 2007 for PFIZER, log; Trademark Registration No. 1874437 dated March 19, 2011 for PFIZER, logo.
The Complainant also owns, among others, the domain name , which it uses to host its website to communicate with the public about the Complainant and its products.
The Disputed Domain Name was registered with the Registrar on November 1, 2014. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant asserts that it is among the largest pharmaceutical enterprises in the world, having global operations in more than 150 countries. The Complainant also asserts that it has used the PFIZER mark since 1849, and has had the first U.S. trademark registration for the word mark PFIZER, since August 24, 1948.
Further, the Complainant contends that it and its affiliate own numerous PFIZER trademark registrations around the world and that its PFIZER trademarks enjoy a worldwide reputation. In particular, the Complainant is the owner of numerous trademark registrations for the mark PFIZER, including U.S Trademark Registration No. 626,088, issued May 1, 1956 for PFIZER and design, U.S Trademark Registration No. 3,125,531, issued August 8, 2006 for PFIZER and design, U.S Trademark Registration No. 3,932,037, issued March 15, 2011 for PFIZER and design, and U.S Trademark Registration No. 2,951,026, issued May 17, 2005 for PFIZER.
In addition, the Complainant states that the Complainant operates website under the domain name registered in 1996, in order to promote its products and services.
The Complainant also argues that the Disputed Domain Name reproduces the Complainant’s trademark PFIZER in its entirety and that the addition of the generic or descriptive term to its trademark PFIZER, which previous UDRP panels have considered to be “well-known” or “famous” and in many WIPO UDRP decisions, cause the likelihood of confusion among the Complainant’s customer and the public as to the Disputed Domain Name and the Complainant’s own trademark PFIZER and/or domain name .
Finally, the Complainant asserts that the above confusion leads to the belief that the Disputed Domain Name is in some ways affiliated with the Complainant and its affiliate.
Therefore, the Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant’s PFIZER mark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant argues that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to register or use its PFIZER trademark, including without limitation in connection with the fraudulent email and fraudulent job listings, or to seek registration of any domain name incorporating this mark. The Complainant also alleges that the Respondent is not and has never been known either by the “Pfizer”, “Pfizer-Inc” or by any similar name.
The Complainant contends that under a recent WIPO UDRP decision; Pfizer Inc v. Michael Chucks / Whoisguard Protected, Whoisguard Inc.,WIPO Case No. D2014-0887, an individual or organization being “Michael Chucks” having address in Delhi, India has previously registered the domain name and used that domain name as part of a phishing scam similar to that at issue in this case.
The Complainant further argues that the registration of the PFIZER trademarks in the U.S and other countries precedes the registration of the Disputed Domain Name for years. Additionally, the Respondent has used the Complainant’s name in its fraudulent emails, and the Respondent was involved in a prior UDRP proceeding relating the domain name . As such, the Respondent cannot reasonably pretend that it was not aware of the Complainant’s mark PFIZER prior to the registration of the Disputed Domain Name nor can the Respondent demonstrate any right or legitimate interest in the Disputed Domain Name. Therefore, the Complainant contends that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant also argues that the Respondent has intentionally registered the Disputed Domain Name explicitly for the purpose of making illegitimate or unfair use of the Complainant’s marks by misleading the public especially the Internet users who may be interested in seeking employment with the Complainant through a fraudulent “phishing” scheme. Accordingly, the Complainant contends that the Respondent uses the Disputed Domain Name in emails incorporating the Complainant’s mark and information of the Complainant and its staff to mislead the public and falsely hold itself out as the Complainant or the Complainant’s affiliate.
Finally, the Complainant also argues that the Respondent’s passive holding or warehousing of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known trademark PFIZER is not a legitimate or noncommercial fair use as decided in many WIPO UDRP decisions.
Therefore, the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith
The Complainant also contends that two factors for the test in which the Respondent’s passive holding or warehousing constitutes bad faith, have been satisfied successively. In particular, the Complaint argues that the Complainant’s trademark PFIZER has a strong reputation and is widely known as found in numerous WIPO UDRP decisions and that the Respondent is engaged in fraudulent activity using an email address that incorporates the Disputed Domain Name.
Consequently, the Complainant upholds that the Disputed Domain Name was registered and used by the Respondent in bad faith and with full knowledge of the Complainant’s ownership and exclusive rights over the trademark PFIZER. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
In accordance with paragraph 4(a) of the Policy, in order to grant the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case. A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has trademark rights in and to PFIZER, which is registered worldwide, including the Respondent’s home country, India, well before the Disputed Domain Name was registered. In addition, it is evidenced that the Complainant has a lengthy use of its trademark PFIZER for its commercial activities, and in particular to offer pharmaceutical products ranging from prescription medicines for humans to consumer products worldwide.
Second, the Panel finds that the Disputed Domain Name comprises the Complainant’s distinctive and well-known PFIZER trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the hyphen “-” and the suffix “inc”. The suffix “inc”, which is the abbreviation for “incorporated”, is undisputedly a generic term, which may, in combination with PFIZER, create a term that denotes the corporate entity of the Complainant being “Pfizer Inc.”
The Panel finds that “Pfizer” remains the dominant element in the Disputed Domain Name. Thus, in the Panel’s view, the addition of the said hyphen and suffix does nothing to distinguish the Disputed Domain Name from the PFIZER trademark, , as it was found in previous UDRP decisions (See, e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassM, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388).
Third, the Panel finds, similar to other UDRP panels, that the addition of the generic Top-Level Domain (gTLD) “.org” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s PFIZER trademark, and paragraph 4(a)(i) of the Policy is established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Panel finds that the Complainant has made evidence prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademark PFIZER.
The Panel finds that before the date of notice to the Respondent of the dispute and as of the date of this decision, the Disputed Domain Name resolved to a password protected “Webmail Login” website, which bears no real content but merely a login section and statement about the hosting web Rackspace. Further, the Panel finds that the Respondent is using the Disputed Domain Name in the email address that it uses to solicit job applications, falsely holding itself out as the Complainant, and to correspond with the job applicants (again falsely holding itself out as the Complainant) who have unwittingly submitted job applications to the Respondent. In its emails to the public, the Respondent uses the email address that includes the Disputed Domain Name and falsely holds itself out as the Complainant and even including the Complainant’s actual street address, web address “www.”, and the name of the Complainant’s Executive Vice President, Worldwide Human Resources.
Accordingly, it is apparent that the Respondent is using the Disputed Domain Name (and emails incorporating the Disputed Domain Name) to misleadingly induce the job applicant to believe that the Disputed Domain Name is somehow related to or approved by the Complainant. Such use cannot constitute a bona fide use of the Disputed Domain Name pursuant to paragraph 4(c)(i) of the Policy.
Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that the Respondent is not mentioned anywhere in the website which the Disputed Domain Name resolves to. Moreover, the Panel finds no evidence that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent operates a business or any other organization under the Disputed Domain Name. Therefore, the Panel upholds that the Respondent has not been commonly known by the Disputed Domain Name.
Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that the use of the Disputed Domain Name (and the emails incorporating the Disputed Domain Name) by the Respondent appears to aim at commercial gain. The Panel finds no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an evidence of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The Panel further finds that the Complainant’s trademark PFIZER has been registered worldwide, and enjoys significant reputation. The Complainant’s PFIZER trademark has been registered and used in, among others, India where the Respondent resides.
The trade name of the Complainant is “Pfizer Inc.” Besides, the Complainant also owns and operates the website under the domain name , to which the Disputed Domain Name is identical, except an addition of the hyphen “-“ and the generic term “inc”. The Complainant’s trademark PFIZER, which was first registered in 1948, and domain name , which was registered in 1996, and commencement of use of the Complainant’s trade name “Pfizer Inc.” all well predate the Disputed Domain Name. PFIZER, which is a coined word, without any dictionary meaning, is neither descriptive nor generic in respect of any products or services.
Additionally, taking into account the prior UDRP proceeding involving the Complainant and the Respondent regarding the domain name (see Pfizer Inc v. Michael Chucks, Whoisguard Protected, Whoisguard Inc Supra, the Respondent cannot reasonably pretend that it was not aware of the Complainant’s mark PFIZER prior to the registration of the Disputed Domain Name nor can the Respondent demonstrate any legitimate activity through the Disputed Domain Name.
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and the Complainant’s trademark PFIZER and domain name before its registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
As discussed earlier, the Respondent is using the Complainant’s well-known trademark PFIZER in its entirety as the uniquely distinctive element in the Disputed Domain Name. Further, the Respondent is using the Disputed Domain Name and its associated email address to impersonate a senior official of the Complainant, perpetrating what appears to be a fraud on unsuspecting job applicants. Given these facts, the Panel finds that the Respondent intentionally used the Disputed Domain Name (and the associated email address incorporating the Disputed Domain Name) to mislead the public into believing that the website under the Disputed Domain Name (and the associated email address incorporating the Disputed Domain Name) is associated, fostered or recommended by the Complainant. The Panel infers from such behavior that the Respondent’s purpose in using the Disputed Domain Name is to capitalize on the reputation and goodwill of the Complainant’s trademark, and thus generate unjustified benefits. Such behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
In addition, the Disputed Domain Name resolves to a password protected Webmail Login page, but with no real content other than a login section in the center of the home page. Hence, the Panel finds that as apart from its use of the Disputed Domain Name for fraudulent emails, the Respondent is not using the Disputed Domain Name, which is deemed as passive holding of a domain name. Such passive holding constitutes bad faith use under the Policy (see Worldwide Pants Inc. v. VisionLink Commc’ns Grp.,WIPO Case No. D2008-1796.
Taking into account the foregoing, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv), and paragraph 4(a)(iii) of the Policy is established. 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 the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: February 24, 2015
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