The Complainant is Pfizer Inc. of New York, New York, United States of America (“United States”), represented by Kaye Scholer, LLP, United States.
The Respondent is Randi Pollock of Marina Del Rey, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2015. On August 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 21, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2015.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on October 12, 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
The date of the Domain Name registration was confirmed by the Registrar to be November 28, 2014. The Complainant provided evidence of multiple trademark registrations for the mark PFIZER including, inter alia, United States Trademark, No. 626,088 (registered on May 1, 1956) and United States Trademark, No. 2,951,026, (registered on May 17, 2005) that predate the date of the Domain Name registration for a variety of related goods and services.
The Panel also conducted an independent search to determine that the Domain Name resolves to a webpage which appears to be inactive and reads “website coming soon”.
Since the Respondent did not respond, the facts regarding the use and fame of the Complainant’s mark, as well as other statements regarding correspondence between the parties, are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant
The Complainant alleges it is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. The Complainant further alleges that it discovers, develops, manufactures, and markets leading prescriptions medicines for humans, as well as many of the world’s best-known consumer products.
The Complainant also alleges it has been known by and has used the PFIZER trademark for over 150 years – since 1849 – and has owned a United States trademark registration for the trademark PFIZER since at least as early as August 24, 1948. Pfizer and/or its wholly-owned affiliates, including Pfizer Products Inc., have registered PFIZER as a trademark throughout the world.
In addition, the Complainant also alleges it owns the domain name , which it has used since at least as early as 1996 to host a website to communicate with the public about Pfizer and its products.
The Complainant alleges that it sent the Respondent an email on July 30, 2015 requesting the voluntary transfer of the domain name to Pfizer and followed up with two emails on August 3, 2015 and August 13, 2015. The Complainant alleges that the Respondent, in an email dated August 13, 2015, stated that “I am sorry there is no voluntary transfer. Please advise what you are willing to purchase it for as it is not for sale.”
To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark PFIZER, in respect of a wide range of goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic or descriptive word “online” to the term “pfizer” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for PFIZER.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the generic and/or descriptive term “online” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark and if anything, enhances it to suggest the offer of the Complainant’s products online. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Further, the Respondent sought a price for the transfer of the Domain Name to the Complainant. Prior UDRP panels have ruled that “[t]he fact that Respondent offered to sell the domain name registration to Complainant is evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy paragraph 4(a)(ii).” Lockheed Martin Corporation v. Allen Jarosz,WIPO Case No. D2005-0361.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s PFIZER trademark and that the continued holding of the Domain Name is in bad faith. This is consistent with the holding in Pfizer Inc. v. Legal Dept, Barry McMahon and Pfizer ltd, Sys Admin,WIPO Case No. D2013-2046.
In addition, it has been held in previous UDRP cases that knowledge of the corresponding trademark at the time of the domain name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464) and see, e.g., Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services,WIPO Case No. D2000-0177.
Under WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition, paragraph 3.2 (“WIPO Overview 2.0”), regarding the question of whether there can be use in bad faith when the domain name is not actively used and there is passive holding, the consensus view is that it can. WIPO Overview 2.0 states, “with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, [and] no response to the complaint having been filed. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).” See WIPO Overview 2.0, paragraph 3.2, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
It is clear to the Panel that the language of the “no offer” of sale in the Respondent’s email reply to the Complainant is a carefully worded work-around to avoid trying to trigger a finding of bad faith on the basis of an excessive demand for payment. Notwithstanding, this Panel does not find that this wording precludes a finding of bad faith. In examining the circumstances of this case, the Panel finds the Respondent is using the Domain Name in bad faith.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name and the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy. 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 the Complainant.
Ellen B. Shankman
Sole Panelist
Date: October 22, 2015
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