Complainant is Pfizer Inc., United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
Respondent is Contact Privacy Inc. Customer 1247423951, Canada / Name Redacted1 . 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2020. On June 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2020, 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 Complainant on June 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 24, 2020. 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 Respondent of the Complaint, and the proceedings commenced on July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. On July 15, 2020, July 17, 2020, and July 22, 2020, the Center received email communications from [Name Redacted] regarding identification of Respondent. Complainant submitted a settlement form signed by Complainant and [Name Redacted]. Accordingly, in order to proceed with the settlement process, as provided in the Rules, paragraph 17, the Center requested confirmation regarding an intention to settle from the registrant of the disputed domain name by means of the Registrar-confirmed email address. Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to panel appointment on August 24, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on September 7, 2020. 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 Complainant is one of the largest pharmaceutical manufacturers and sellers in the world, maintaining global operations in more than 125 countries. Complainant has used the PFIZER trademark (“PFIZER Mark” or “Complainant’s Mark”) in connection with pharmaceutical products and consumer healthcare products since 1849. It owns multiple trademark registrations for the PFIZER Mark around the world, including United States registration numbers 626,088 and 5,082,880 (registered on May 1, 1956 and November 15, 2016, respectively). ThePFIZER Mark has been recognized as famous by various other UDRP panels. See, e.g., Pfizer Inc. v. WhoisGuard, Inc. / Susan Watson,WIPO Case No. DCO2019-0019 (“The Panel finds that the trademark PFIZER is so well-known internationally that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.”); see also Pfizer Inc. v. Domain Maybe for Sale c/o Dynadot,WIPO Case No. D2019-2732; Pfizer Inc. v. Domains By Proxy, LLC / Gabriel Guzman Sanchez, Hosting Titan, S.A. de C.V.,WIPO Case No. D2019-1706; Pfizer Inc. v. Sarthak Kapoor,WIPO Case No. D2019-0292; Pfizer Inc. v. Dale Leach,WIPO Case No. D2017-2358; Pfizer Inc. v. Mau Lio,WIPO Case No. D2017-0242; Pfizer Inc. v. Registration Private, Domains By Proxy, LLC / Jenny Tran, WIPO Case. No. D2016-2067. Complainant also owns and operates websites at various domain names that contain the PFIZER Mark, such as The disputed domain name Complainant alleges that the disputed domain name is confusingly similar to Complainant’s Mark because it essentially reproduces the PFIZER Mark in its entirety. The only difference between the disputed domain name and Complainant’s Mark is that the disputed domain name includes the letter “l” between the letters “p”, and “f”. Complainant argues that this difference is so miniscule that it does not prevent a finding of confusing similarity. Complainant also contends that Respondent has no rights or legitimate interests in or to the disputed domain names. According to Complainant, Respondent has never been commonly known by the disputed domain name, that Complainant has not licensed Respondent the right to use Complainant’s Mark, and that Respondent is not otherwise authorized to act on Complainant’s behalf. Furthermore, Complainant argues that Respondent’s use of the disputed domain name to perpetrate phishing fraud cannot be considered a bona fide offering of goods and services. Complainant also contends that the disputed domain name was registered and used in bad faith. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the PFIZER Mark given: (i) Respondent’s incorporation of an obvious misspelling of Complainant’s Mark, (ii) the worldwide notoriety of Complainant’s Mark, and (iii) Respondent’s attempt to impersonate a number of Complainant’s employees to conduct a fraudulent scheme to obtain confidential personal information from at least one individual who engaged Complainant’s services. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the PFIZER Mark through its national and international trademark registrations. With Complainant’s rights in the PFIZER Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. It is well established that a domain name consisting of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. WIPO Overview 3.0, section 1.9; see also Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775. The only difference between the disputed domain name and Complainant’s Mark is that the disputed domain name includes the letter “l” between the letters “p” and “f”. Respondent’s addition of a single letter in Complainant’s Mark is a common example of “typosquatting” and creates a virtually identical and/or confusingly similar domain name to Complainant’s Mark under paragraph 4(a)(i) of the Policy. See Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971 (“Numerous panels in the past have found similarity to be present in the case of a deliberate misspelling of a mark (so-called “typosquatting”), by adding, deleting, substituting or reversing the order of letters in a mark.”); see also America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,WIPO Case No. D2001-0918; Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol,WIPO Case No. D2001-0654; AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s Mark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the PFIZER Mark in any way. Complainant has also asserted that Respondent is not commonly known by the disputed domain name. As shown in the evidence submitted by Complainant, the disputed domain name was used to impersonate certain employees working for Complainant to perpetrate a fraudulent scheme to obtain highly sensitive financial information from individuals who engaged Complainant’s services. These activities cannot be considered bona fide offerings of goods or services nor legitimate noncommercial or fair uses under the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.13.1, and section 2.5.1. Indeed, the use of a domain name for illegal activity, including phishing and fraud, can never confer rights or legitimate interests on a respondent. See, e.g., Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group,WIPO Case No. D2018-0717; WIPO Overview 3.0, section 2.13.1. Respondent has failed to rebut Complainant’s allegations and evidence. Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations of the PFIZER Mark that long predates Respondent’s registration of the disputed domain name. Complainant also provided ample evidence showing that Respondent was impersonating specific employees currently working for Complainant to conduct a fraudulent phishing scheme. Therefore, Respondent was undoubtedly aware of Complainant and its rights in the well-known PFIZER Mark when registering the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. The use of the disputed domain name to conduct an apparent fraudulent scheme to collect Internet users’ personal data via email addresses impersonating certain employees working for Complainant is the type of illegal activity that is manifestly considered evidence of bad faith under the Policy. See WIPO Overview 3.0, section 3.1.4; Wikimedia Foundation, Inc., supra. The unauthorized use of the name and contact details of a third party by Respondent in connection with the registration of the disputed domain name further supports the conclusion that Respondent registered and used the disputed domain name in bad faith. See WIPO Overview 3.0, section 3.6. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were 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 Brian J. Winterfeldt 1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: September 21, 2020
Full & Egal Universal Law Academy