The Complainant is Vertex Pharmaceuticals Incorporated, United States of America (“United States”), represented by Sunstein Kann Murphy & Timbers LLP, United States.
The Respondent is Ahalya Hayre, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Shinjiru Technology Sdn Bhd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2019. On August 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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 August 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 August 7, 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 August 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2019.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on September 17, 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 well-known manufacturer of pharmaceutical products based in the United States. The Complainant is publicly traded on the Nasdaq exchange and is a member of the Nasdaq-100 Index. The Complainant owns worldwide registrations of VERTEX and VERTEX (plus triangle design) trademarks, including No. 1630448 United States trademark registration, registered on January 1, 1991; No. 2578974 United States trademark registration, registered on June 11, 2002; No.1522440 Indian trademark registration, registered on March 31, 2010; No.1522439 Indian trademark registration, registered on March 30, 2010. The Complainant has been using the VERTEX trademark in connection with pharmaceutical business at least as early as 1989.
According to the Registrar’s confirmation, the Respondent, Ahalya Hayre, registered the disputed domain name on November 27, 2018. The disputed domain name resolves to a website displaying pharmaceutical products, using a VERTEX (plus triangle design) mark with an upside down of the triangle, comparing to the Complaint’s VERTEX (plus triangle design) trademark. The bottom of the associated website also displays “Vertex Pharmaceuticals Limited”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its VERTEX trademark, and the addition of the generic term “pharma” is insufficient to differentiate the similarity between the disputed domain name and the Complainant’s VERTEX trademark. Moreover, the term “pharma” is highly related to the Complainant’s core business, which will increase the confusion between the disputed domain name and the Complainant’s VERTEX trademark.
The Complaint further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is the owner of numerous registrations of the VERTEX and VERTEX (plus triangle design) trademarks, and the earliest trademark, registered on January 1, 1991, No. 1630448 Unite States trademark registration. The Complainant thus has successfully established its right upon the VERTEX trademark.
The disputed domain name incorporates the Complainant’s VERTEX trademark in its entirety, with an addition of a dash “-” and a term “pharma”. Previous UDRP panels has established that incorporation of a complainant’s trademark in its entirety into a domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The addition of a dash “-” and the additional term “pharma” do not prevent the assessment in the similarity between the disputed domain name and the Complainant’s VERTEX trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s VERTEX trademark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case, therefore the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See Construction Skills Certification Scheme Limited v. Mara Figueira,WIPO Case No. D2010-0947.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered on November 27, 2018, nearly 30 years later than the Complainant’s VERTEX trademark. Moreover, the Complainant owns VERTEX trademark in India where the Respondent appears to reside and operate business through the disputed domain name. Given the reputation of the Complainant and the content of the associated website, the Panel holds that the Respondent must have been aware of the Complainant and its trademark and/or services at the time of registering the disputed domain name. Without any rights or legitimate interests, the Respondent’s registration of the disputed domain name is indicative of bad faith.
The Panel further observes that the website at the disputed domain name claims to offer pharmaceutical products that is as same as the Complainant’s core business. Further, the Respondent turns upside down the triangle of the Complainant’s VERTEX (plus a triangle design) trademark and displays it on the associated website. In addition, the bottom of the associated website displays “Vertex Pharmaceuticals Limited” which is highly similar to the Complainant’s name “Vertex Pharmaceuticals Incorporated”. Thus, the Panel views that the Respondent has the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s VERTEX trademark as to the source, sponsorship, affiliation, or endorsement of its websites or location or of products and services. See Barclays Bank PLC v. PrivacyP / Sylvia Paras,WIPO Case No. D2011-2011.
For the reasons above, the Panel concludes that the Respondent registered and is using the disputed 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 disputed domain name be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Date: September 29, 2019
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