The Complainant is Vertex Pharmaceuticals Incorporated, United States of America (“United States”), represented by Sunstein Kann Murphy & Timbers LLP, United States.
The Respondent is Jimmie D. Morris, Funtown toys, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 2019, 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 June 7, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 12, 2019.
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 June 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2019.
The Center appointed Michelle Brownlee as the sole panelist in this matter on July 15, 2019. 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 owns numerous registrations in jurisdictions throughout the world for the marks VERTEX and VERTEX and design in connection with pharmaceutical preparations and pharmaceutical research services, including United States trademark registration numbers 1,630,448, 2,578,974, and 2,704,913. The earliest of these registrations issued in January 1, 1991, and claims a first use of the mark in commerce on May 3, 1989. 5. Parties’ Contentions A. Complainant
The Complainant states that it is a well-known pharmaceutical company based in Boston, Massachusetts. The Complainant produces drugs used to treat cystic fibrosis, one of which was described as a “blockbuster” drug by the Boston Globe in 2016 when sales of the drug were projected to exceed one billion dollars in its first full year on the market.
The Complainant contends that the Domain Name is confusingly similar to its VERTEX trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Complainant states that the Respondent was not authorized by the Complainant and notes that the Respondent is using the Domain Name in connection with a site that is offering sports nutrition supplements for sale. The Respondent is using the Complainant’s VERTEX and design trademark on its web site and photographs on the web site show product packaging that features the VERTEX and design mark. The Complainant contends that the Respondent’s actions demonstrate an intention to create confusion with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the VERTEX trademark. The addition of the word “pharmaceutical” in the Domain Name does not serve to distinguish the Domain Name from the Complainant’s trademark. See Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity […] The nature of such additional term(s) may however bear on assessment of the second and third elements”. Under these circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s VERTEX trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent is using the Domain Name in connection with a web site that is offering sports nutrition supplements for sale by creating the misleading impression that these products are offered by the Complainant. The Respondent has not refuted these allegations. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Domain Name is being used in connection with a web site that is being used to promote products that use the Complainant’s logo but are not produced by the Complainant. The Panel finds that the use of the Complainant’s trademarks in the Domain Name, in the heading at the top of the page, and in photos that show product packaging demonstrates an intent by the Respondent to attract Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s VERTEX and VERTEX and design trademarks, which presumably results in commercial gain to the Respondent. Under the circumstances, the Panel finds that the Respondent has registered and used the Domain Name in bad faith. 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.
Michelle Brownlee
Sole Panelist
Date: July 27, 2019
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