The Complainant is Vertex Pharmaceuticals Incorporated, United States of America (“United States” or “USA”), represented by Sunstein Kann Murphy & Timbers LLP, United States.
The Respondent is Private Data Domains Ltd., Greece / AnonymousSpeech, AnonymousSpeech, Michael Weber, Japan. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names 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. One June 20, 2019, the Privacy Service of the disputed domain names sent an email communication to the Center, stating in essence that the disputed domain names had never been registered nor transferred to their company.
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 Commencement of Panel appointment
The Center appointed Reyes Campello Estebaranz 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 is a leading pharmaceutical company, headquartered in Boston, Massachusetts, USA, which operates internationally, with offices, research and development sites in various locations worldwide (San Diego, Washington D.C., London, Madrid, Vienna, Paris, Munich, Rome, Haarlem - The Netherlands, Stockholm, Zug - Switzerland, Warsaw, Sao Paulo, Toronto, Sidney). It develops and manufactures pharmaceutical products and preparations, through its own research department and laboratories, since late eighties (1989), and operates under the trademark derived from its company name Vertex, as well as its abbreviation VX.
The Complainant holds an extensive trademark portfolio for the marks VERTEX and VX in many jurisdictions worldwide, alone or in combination with other terms and/or figurative elements, of which the following are sufficiently representative for the present proceeding:
European Union Trademark No. 00707802 VERTEX, figurative, registered December 15, 2004, in classes 5 and 42;
European Union Trademark No. 001126234 VERTEX, word mark, registered April 26, 2006, in classes 5 and 42;
Japanese Trademark No. 4073487 VERTEX, word mark, registered October 24, 1997, in class 5;
US Trademark No. 2,578,974 VERTEX, figurative, registered June 11, 2002, in classes 5 and 42;
US Trademark No. 2,704,914 VERTEX, word mark, registered April 8, 2003, in class 5;
US Trademark No. 4,057,950 VX, figurative, registered November 22, 2011, in class 5;
US Trademark No. 4,795,844 VX-970, figurative, registered August 18, 2015, in class 5;
The disputed domain name was registered on February 24, 2017 and the disputed domain name was registered on February 25, 2017. Both disputed domain names resolve to a website, in English language, owned apparently by a pharmaceutical company that identifies itself as Vertex Laboratories, “a private company established in 2008 as part of Sciroxxx company and acting as a standalone company since 2013”, which purports to manufacture pharmaceutical products for the sport market, and operates in Europe. This website includes, in boldface, after its heading and before the text content of the site, the notice “because of the problems with our primary domain our page is available under ”. 5. Parties’ Contentions A. Complainant
Key contentions of the Complaint may be summarized as follows:
Through its intensive use and promotion, the trademark VERTEX as well as its abbreviation VX have acquired significant notoriety in the pharmaceutical sector worldwide. The notoriety of the mark VERTEX has been recognized by prior decisions under the Policy.
The disputed domain names reproduce the Complainant’s trademarks VERTEX and VX, respectively, with the addition of the term “laboratories”, which refers to the Complainant’s pharmaceutical industry (being descriptive of scientific research services and the location where pharmaceutical products are created), and it is insufficient to prevent Internet users’ confusion. The Complainant’s trademarks are recognizable within the disputed domain names. Therefore, the disputed domain names are confusedly similar to the Complainant’s marks.
There was a prior case decided under the Policy,WIPO Case No. D2017-0240, with reference to , which presumably was registered by the same Respondent and was linked to the same website linked to the disputed domain names. This prior decision ordered the transfer of the domain name to the Complainant, but the Respondent attempts to circumvent it by the registration and use of the disputed domain names. The website linked to the disputed domain names explicitly indicates, ““[b]ecause of the problems with our primary domain our page is available under ”.
The Respondent has no rights or legitimate interests in the disputed domain names, as it is not a licensee of the Complainant, nor has him been otherwise authorized to register and use the Complainant’s trademarks in the disputed domain names. The Complainant’s trademark VERTEX is highly distinctive in connection with pharmaceutical research services and products, being unique to the Complainant that adopted this mark in 1989, and it has been considered notorious in prior decisions under the Policy. Similarly, the abbreviation VX, in connection to pharmaceutical products and services, is arbitrary and unique to the Complainant that adopted it in 2009. The Respondent is trying to circumvent a prior decision under the Policy using the disputed domain names to divert Internet users and potential customers to its website for commercial gain. The date of the disputed domain names’ registration, more than 25 years after the Complainant’s foundation and first trademark filing, and 20 years after its first trademark registration in Japan, where the Respondent indicates it is located, is a further indication of the absence of rights and legitimate interests.
The disputed domain names were registered and are being used in bad faith. A simple trademark search would have revealed the Complainant’s trademarks, and the Respondent had actual notice of the Complainant’s rights prior to the registration and use of the disputed domain names, due to the previous UDRP case related to domain name. This case was notified to the Respondent on February 8, 2017, some days before the disputed domain names’ registration, and although the Respondent’s name is different in this prior case, there are strong reasons to believe that the same ownership and organization is behind. The website linked to the disputed domain names displays almost same content to the one linked to . All three domain names share the same combination (the marks plus “-laboratories”). The website linked to the disputed domain names includes a notice admitting the common ownership (as indicated above). Thus, the Respondent registered the disputed domain names with full actual knowledge of the Complainant’s rights, in bad faith, and, continued its use for the same purpose with almost identical website content, after the decision of transfer in the cited prior case was notified to the Respondent in April 2017. This is a clear indication of registration and use in bad faith.
Further, the disputed domain names were registered several years after the Complainant’s trademarks registration of in many jurisdictions, including Japan where the Respondent indicates it is based, and the Complainant has used its marks for selling pharmaceutical products in this jurisdiction (Japan) prior to the registration of the disputed domain names.
The disputed domain names are used to sell pharmaceutical products, which is the same core business of the Complainant, but specific for athletes. Thus, the Respondent’s use of the disputed domain names is an intentional attempt to attract Internet users for commercial gain to its 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 the Respondent’s products included in such website.
Furthermore, the disputed domain names prevent the Complainant’s use of its trademarks under corresponding domain names.
The Complainant has cited various previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain names. 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 divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute. The Panel, following the definitions included in the Rules, considers the Respondent to be the holder of the disputed domain names (Michael Weber).
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties. A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered marks VERTEX and VX. The disputed domain names incorporate these marks in their entirety followed by a dash “-”, which facilitates the direct perception of the marks, and the term “laboratories”, which clearly relates to the Complainant’s pharmaceutical industry. The Complainant’s trademarks VERTEX and VX are directly recognizable in the disputed domain names, and their respective gTLDs (“.net”, “.com”) add no distinctive meaning, being technical requirements, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s marks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP 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) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has asserted that the Respondent is not a licensee nor has him been otherwise authorized to use the trademarks VERTEX and VX. Further, the Complainant has alleged that there is no evidence that the Respondent is commonly known by the disputed domain names, has any other rights, or made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. On the contrary, the Respondent is trying to circumvent a prior decision under the Policy using the disputed domain names to divert Internet users and potential customers to its website for commercial gain.
This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 evidence provided by the Complainant shows the disputed domain names are linked to a website, which indicates in its content that it is owned by a pharmaceutical company identified as Vertex Laboratories, manufacturing pharmaceutical products for the sport market and operating in Europe. However, the Respondent’s named according the disputed domain names’ registration is different to the disputed domain names, and the Respondent has deliberately chosen not to reply to the Complaint, not providing any evidence of being commonly known by the disputed domain names, apart from the website content linked to them. Further, this website does not include a clear reference to the company Vertex laboratories, not indicating its location, fiscal number, legal registration, or any reference to its social form, and/or country of incorporation. Even the distributors included in this website are only identified by their emails (from , , or ) not including any reference to their names and locations.
A core factor in assessing fair use of the disputed domain names is that they do not falsely suggest affiliation with the Complainant’s trademarks. See section 2.5, WIPO Overview 3.0. The disputed domain names incorporate the Complainant’s trademarks in their entirety adding a descriptive term for the pharmaceutical industry (“laboratories”), which also may point to the Complainant and its notorious trademarks. Therefore, the Panel considers that there is a high risk of implied affiliation. The Panel further notes the extensive presence of the trademark VERTEX, and its abbreviation VX (used as a trademark), over the Internet, as well as the extensive use of these marks worldwide, including Japan, where the Respondent is apparently located according the information in the disputed domain names’ registration, and Europe, where the Respondent apparently operates according to the website content linked to the disputed domain names.
The Panel further considers that the use of the disputed domain names linked to a website related to the same industry where the Complainant’s trademarks are used, well established and notorious (the pharmaceutical industry), contributes to a high risk of affiliation and confusion. The website linked to the disputed domain names does not include any clear reference to the ownership of the disputed domain names nor does it include any reference to the lack of relationship with the Complainant’s trademarks and business.
Furthermore, the website linked to both disputed domain names includes, in boldface, after its heading and before the text content of the site, the notice “because of the problems with our primary domain our page is available under ”. This text leads the Panel to conclude that both domain names mentioned in this notice, as well as (which is linked to the same website content), share the same ownership, belonging all three to the same person, company or group of companies despite to their different owners in their WhoIs registration data. The Panel considers that this circumstance, together with all other cumulative circumstances of the case, undermines a potential legitimate use of the disputed domain namesin connection with a bona fide offering of goods.
It is further remarkable the Respondent’s attitude deliberately choosing not to reply to the Complaint, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interests in the disputed domain names.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established. C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith.”
At the time of the disputed domain names’ registration, this Panel considers unlikely that the Respondent did not know about VERTEX and VX marks, and did not have them in mind. Several factors in this case lead to this conclusion.
The Panel notes the extensive presence of the trademarks VERTEX and VX over the Internet, as well as their extensive use and promotion worldwide, including Japan, where the Respondent is located (according the information provided in the disputed domain names’ registration), and Europe, where the Respondent operates (according to the website content linked to the disputed domain names). The Complainant’s trademarks are used and registered in both Japan, and the European Union, for more than 20 years, being considered notorious in the pharmaceutical sector. Under these circumstances, the disputed domain names incorporate the Complainant’s trademarks in their entirety, which intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation, adding the descriptive term “laboratories”, which also points to the Complainant and its marks referring to the same pharmaceutical industry. Further, the disputed domain names are used in connection to a website that also refers to the same industry (pharmaceutical), which increases the intrinsic risk of confusion and association. Furthermore, said website does not include any clear reference to its ownership or that of the disputed domain names, not indicating its location, fiscal number, legal registration, or any reference to its social form and/or country of incorporation. Even the distributors included in this website are only identified by their emails (from , , or ) not including any reference to their names and locations.
It is further to be noted that the disputed domain names may probably belong to the same person, company or group of companies that owned , which was transferred to the Complainant in a prior case under the Policy. The circumstances of the case, particularly the notice included in the website linked to the disputed domain names, lead the Panel to conclude that all three domains are under the same control. Therefore, the notifications in this prior case (to the owner of ) may be considered as an evidence of the Respondent’s actual knowledge of the Complainant’s rights before the disputed domain names’ registration, as the notification of the complaint in this prior case took place some days before the disputed domain names’ registration.
The Panel further notes that the contact details of the disputed domain names’ WhoIs indicate that were “redacted for privacy”. However, according to the Registrar, the Respondent’s domicile is located in Japan. The website content linked to the disputed domain name contains no reference to Japan and it is provided solely in English, indicating that the site may be directed to the European market. These circumstances indicate in the Panel’s opinion the existence of a discordancy, having the Respondent provided probably false information in the disputed domain names’ registration.
The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain names 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.”
Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain names were very likely registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademarks, trying to misleadingly attract Internet users to the Respondent’s website, and disrupting the Complainant’s business. It is further highly probable that the Respondent acted in bad faith trying to avoid the effect of the prior decision under the Policy, which ordered the transfer of the domain name to the Complainant, through the registration and use of the almost identical () or equivalent () disputed domain names.
All the above-mentioned lead the Panel to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain names in bad faith under the third element 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 disputed domain names, and >, be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: July 25, 2019
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