The Complainant is Vertex Pharmaceuticals Incorporated of Boston, Massachusetts, United States of America (“United States”), represented by Sunstein Kann Murphy & Timbers LLP, United States.
The Respondent is Private Data Domains Ltd of Heraklion, Crete, Greece / Antonio Marzelo of Kabul, Afghanistan. 2. The Domain Name and Registrar
The disputed domain name is registered with Papaki Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2017. On February 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2017; February 17, 2017; February 21, 2017; and February 22, 2017, 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 the Complainant on February 21, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on February 22, 2017.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2017. The Center received an email communication from the Respondent on March 9, 2017, and informed the Parties on March 16, 2017 that the Center will proceed to appoint a panelist for this matter.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 24, 2017. 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 Complainant states that it is a well-known manufacturer of pharmaceutical products based in Boston, Massachusetts, United States. It is a publicly traded company on the NASDAQ exchange and is a member of the NASDAQ-100 Index.
The 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.
The Complainant is the owner of numerous trademark registrations in many jurisdictions for the mark VERTEX (e.g., United States Registration No. 1,630,448, registered on January 1, 1991) and for the VERTEX triangle design. 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.
According to publicly available records, and as confirmed by the Registrar, the disputed domain name was registered on October 6, 2014. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to marks in which the Complainant has rights since it comprises the Complainant’s trademark VERTEX with the addition of the common generic term “laboratories”.
The Complainant also asserts that it has never licensed or otherwise permitted the Respondent to use the mark VERTEX and claims that the Respondent has no rights or legitimate interests in the disputed domain name.
Further, the Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent is engaged in active commercial use of the disputed domain name to sell pharmaceutical products so the disputed domain name is used for intentionally attempting to attract Internet users for commercial gain to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on the Respondent’s website.
Finally, the Complainant also contends that the Respondent’s registration of the disputed domain name prevents the Complainant from using its trademark under a corresponding domain name which is a factor that suggests that the Respondent’s registration and use of the disputed domain name is made in bad faith. B. Respondent
The Respondent filed the following reply to the Complainant’s contentions in its email communication of March 9, 2017:
“Ladies and gentlemen,
Our domain was blocked without good reason.
Our company is registered in Kyrgyzstan and does not violate any laws of this country. The word vertex is commonly used. And the presence of this word in the domain name can not be the basis for its blocking.
Best Regards” 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall 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.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark VERTEX. The disputed domain name contains the Complainant’s mark in its entirety with the addition of the descriptive term “laboratories”. The generic Top-Level Domain “.com” does not dispel a finding of confusing similarity.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), whereby: “[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Respondent put forward two arguments in the above-quoted email, namely that “Our company is registered in Kyrgyzstan” and that “The word vertex is commonly used”.
The Respondent did however not provide any further information regarding the first argument such as a document showing the existence of the said company in Kyrgyzstan, and the disputed domain name is registered to “Antonio Marzelo” and not to any company. The Panel is thus not inclined to infer any rights or legitimate interests to the Respondent on that basis.
While it is true that the word “vertex” is a dictionary term (that according to, inter alia, the dictionary at “/dictionary” has different meanings, such as “the point opposite to and farthest from the base in a figure”, “the top of the head” or “a principal or highest point”), the term is distinctive when it is used as a trademark for pharmaceuticals or for other goods and services for which “vertex” is not descriptive. The Respondent has not elaborated further on the raised issue, specifically why he chose to couple “vertex” with “laboratories”. Moreover, the Respondent used the disputed domain name to offer products in the same area of business as the Complainant, namely pharmaceuticals, before taking the website down once this proceeding commenced.
The arguments put forward by the Respondent do thus not support a finding of rights or legitimate interests. Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the temporal and geographical extent of use of the Complainant’s trademark, and the distinctive nature of the mark in relation to pharmaceuticals, it seems immediately unlikely to the Panel that the Respondent registered the disputed domain name without the knowledge of the Complainant and the Complainant’s mark.
The Panel notes in this context that the Respondent has used a privacy or proxy registration service and the evidence on record clearly indicates that the information that the Respondent has provided for the Registrar’s database are false or at least incorrect. In paragraph 3.9 of the WIPO Overview 2.0, it is stated that “Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service”, a view that has been applied by UDRP panels in a number of decisions such as in D-Market Elektronik Hizmetler Ve Ticaret Anonim Şirketi v. Hakan Dolapçioğlu,WIPO Case No. D2010-0429 and in Standard & Poor’s Financial Services LLC v. Shaun Ray,WIPO Case No. D2013-1545.
At the time of the filing of the Complaint, the disputed domain name was used for a website offering various pharmaceuticals, in particular aimed at sportsmen. The Panel therefore finds that the disputed domain name has been used for commercial gain by intentionally “creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.” The fact that the website of the disputed domain name has been inactivated subsequent to the filing of the Complaint does under these circumstances not alter this finding. See The Vanguard Group, Inc. v AD-X Network, Inc.,WIPO Case No. D2000-0942.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Date: April 7, 2017
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