Complainant is Vertex Pharmaceuticals Incorporated of Boston, Massachusetts, United States of America, represented by Sunstein Kann Murphy & Timbers LLP, United States of America.
Respondent is Abdul Gafoor, Sunshine Cargo of Singapore, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Instra Corporation Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2015. On May 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2015. The Response was filed with the Center on June 17, 2015.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on June 24, 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. 4. Factual Background
According to WhoIs, the Domain Name was registered on February 25, 2013. The Domain Name resolves to an online pharmacy. 5. Parties’ Contentions A. Complainant
Complainant states that it is a well-known manufacturer of pharmaceutical products based in Boston, Massachusetts, United States of America. It is a publicly traded company on the NASDAQ exchange and is a member of the NASDAQ-100 Index. Complainant further states that its beginnings were profiled in the 1994 book, The Billion-Dollar Moleculeby Barry Werth.
Complainant asserts that it has used the VERTEX mark in connection with pharmaceutical research services since at least as early as November 4, 1989, and in connection with pharmaceutical preparations since at least as early as July 13, 1994.
Complainant further asserts that it is the owner of numerous trademark registrations in many jurisdictions for the mark VERTEX and for the VERTEX triangle design, including in the United States of America, Singapore, and Australia, the home countries of Complainant, Respondent, and Registrar, respectively. The VERTEX trademark registrations are for use in connection with goods in International Class 5, including pharmaceutical preparations, and for research services related to pharmaceutical preparations in International Class 42.
Complainant points out that the Domain Name is comprised of and wholly incorporates Complainant’s mark and contains an additional descriptive term and therefore, Respondent’s use and registration of the Domain Name is likely to cause confusion. The word “vertex” is the dominant portion of the Domain Name and is an exact match of Complainant’s registered mark, and the word “pharmacy” is a generic word defined as “a store where medicinal drugs are dispensed and sold”, according to the Oxford Concise American Dictionary. Complainant claims that the word “pharmacy” is highly related to its trademark because its pharmaceutical goods are dispensed by pharmacies.
Complainant suggests that as Respondent is using the Domain Name to sell items typically found in a pharmacy, namely, over the counter medicines, medical devices, pain relief and cough and cold medicines, that its use of the VERTEX mark is a deliberate attempt to take commercial advantage of Complainant’s rights in VERTEX.
Complainant asserts that it has never licensed or otherwise permitted Respondent to use the mark VERTEX and for these reasons claims that Respondent has no legitimate interest in using Complainant’s registered trademark VERTEX.
Complainant suggests that Respondent had constructive notice of Vertex’s rights prior to registration and use of the Domain Name as it was registered after trademark registrations were granted in the VERTEX mark to Complainant in many countries.
Complainant contends that as Respondent is engaged in active commercial use of the Domain Name to sell products related to Complainant’s core product offering, its use of the Domain Name is an intentional attempt to attract Internet users for commercial gain to Respondent’s web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site of the products on Respondent’s web site.
Complainant also contends that Respondent’s registration of the Domain Name prevents Complainant from using its trademark under a corresponding domain name and suggests therefore that Respondent’s registration and use of the Domain Name is made in bad faith. B. Respondent
Respondent’s response to the Complaint was in the form of a letter dated June 17, 2015 to the Center. Respondent advised that it registered the Domain Name in February 2013 and has since then been using the website for online sales of its products. It states that it is a registered company in Singapore, doing business since 2008 in the retail sale of pharmaceutical and medical goods, and the wholesale of medicinal and pharmaceutical products.
Respondent denies the allegations contained in the Complaint saying that they are false and fabricated. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant asserts that it is a well-established and well-known manufacturer of pharmaceutical products based in Boston, United States of America. Complainant is listed on the NASDAQ exchange and is a member of the NASDAQ-100 Index. It has used the VERTEX mark (“Complainant’s Trademark”) in connection with pharmaceutical research services since in or about 1989, and in connection with pharmaceutical preparations since in or about 1994.
Complainant further asserts that it is the owner of numerous trademark registrations for the mark VERTEX and for the VERTEX triangle design, including in the United States of America, Singapore, and Australia, which it observes are the home countries of Complainant, Respondent, and Registrar, respectively. None of this is disputed by Respondent.
The Panel is satisfied that Complainant has established rights in Complainant’s Trademark in connection with pharmaceuticals and pharmaceutical research services. In light of Complainant’s assertions and lack of any denial by Respondent, the Panel accepts that Complainant’s Trademark is identified with Complainant and that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived, particularly as to the source or origin of the goods or services.
Complainant argues that the Domain Name incorporates, as a dominant part, its well-known, registered trademark VERTEX, with the addition of the generic word “pharmacy”, which defines a store where medicinal drugs are dispensed and sold. The Panel finds that Internet users are likely to regard the word “pharmacy” as descriptive of a website where they could find information about Complainant’s pharmaceutical products or information about its services.
There is obvious merit in Complainant’s position and the Panel finds:
a) Complainant has rights in respect of Complainant’s Trademark.
b) The Domain Name is confusingly similar to Complainant’s Trademark in so far as it contains the distinctive element “Vertex” accompanied by the descriptive and generic term “pharmacy”.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
The question of whether Respondent has rights or legitimate interests in the Domain Name must be assessed against Complainant’s significant rights such assessment taking into account the manner in which Respondent uses the Domain Name.
Complainant asserts that Respondent is using the Domain Name to sell items typically found in a pharmacy, including over the counter medicines and medical devices and that this amounts to a deliberate attempt to take commercial advantage of Complainant’s Trademark. Respondent accepts that it uses its website for online sales of its products and has since 2008 conducted a business in Singapore relating to the wholesale and retail sale of pharmaceutical and medical goods.
It is thus common ground between the parties that Respondent is conducting an online business in the sale of pharmaceutical and medical goods. Respondent does not deny that in doing so it is using the word “Vertex” in the Domain Name. The question is whether in doing so the Panel is entitled to infer that by using the Domain Name in the course of trade this is likely to attract Internet users to Respondent’s website, thereby creating a likelihood of confusion between Complainant’s Trademark and goods or services offered by Respondent or an entity with which it is associated, whether directly or indirectly.
In the absence of any license or permission from Complainant to use Complainant’s Trademark, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be inferred by the Panel. That is, to sell pharmaceutical and medicinal products online. Under the circumstances, it is difficult to see how an online pharmacy website incorporating as a dominant part of the Domain Name Complainant’s Trademark could be characterized as legitimate and thus permissible.
No effort is made by Respondent to explain why it chose a domain name which incorporates as a dominant part the name and mark of a well-established listed pharmaceutical company or how it might be argued that confusion or deception would not occur. Respondent’s denial of Complainant’s allegations and its statement that they are false and fabricated does nothing to address the substance of Complainant’s Complaint.
On this basis, the Panel finds that on the basis of the record and the submissions made by the Parties Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
Having reached the view that Respondent lacks any license or permission to use Complainant’s Trademark and for the reasons set out above it is reasonable to infer that Respondent wishes to take advantage of Internet users who may know of or otherwise wish to purchase Complainant’s well-known goods or services.
In the absence of any explanation from Respondent as to how and why it chose the Domain Name and why confusion and deception is unlikely to occur, particularly as to source, the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take commercial advantage of Internet users who know of Complainant and its goods and services provided under Complainant’s Trademark.
The Panel thus concludes that the third element of the Policy has been met. 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 Domain Name be transferred to Complainant.
Clive L. Elliott QC
Sole Panelist
Date: July 8, 2015
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