Complainant is Pfizer Inc., United States of America (“the United States” or “U.S.”), represented by Arnold & Porter Kaye Scholer LLP, United States.
Respondent is Perfect Privacy, LLC, United States / Holding Account, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2020. On July 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 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 July 9, 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 July 10, 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 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2020. The Center appointed Anne Gundelfinger as the sole panelist in this matter on August 6, 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 among the largest pharmaceutical enterprises in the world with global operations in more than 125 countries. Complainant develops, manufactures, and markets leading prescription medicines, as well as many of the world’s best-known consumer products, and has used and been known by the PFIZER mark (“Mark”) for over 150 years. It has owned a United States trademark registration for the Mark since at least as early as August 24, 1948. Complainant and/or its wholly owned affiliates own hundreds of registrations for the PFIZER Mark throughout the world, including but not limited to the following U.S. registrations: - U.S. Trademark Registration No. 626,088, issued May 1, 1956 for PFIZER and design; - U.S. Trademark Registration No. 2,951,026, issued May 17, 2005 for PFIZER; - U.S. Trademark Registration No. 3,125,531, issued August 8, 2006 for PFIZER and design; - U.S. Trademark Registration No. 3,932,037, issued March 15, 2011 for PFIZER and design; - U.S. Trademark Registration No. 4,245,996, issued November 20, 2012 for PFIZER; and - U.S. Trademark Registration No. 5,082,880, issued November 15, 2016 for PFIZER. Complainant also owns the domain name The disputed domain name was registered on November 27, 2019. According to the WhoIs records of the registrar of record at the time this proceeding was commenced, registrant is Perfect Privacy, LLC, a privacy service. After this proceeding was commenced, the identity of the registrant was unmasked to reveal the name “Holding Account”. The disputed domain resolves to a parking page that displays apparent pay-per-click sponsored links relating to various pharmaceutical products and companies (including competitors of Complainant), and related patient assistance programs. It also includes a link to a webpage at the domain name marketplace at “www.sedo.com” that states that the disputed domain name is for sale for USD 300. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to its long-used, well-established, and well-known PFIZER Mark because the disputed domain name wholly incorporates the Mark along with the term “Rx”, a common term referring to prescription medication. Complainant further contends, and has presented substantial evidence in support, that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Specifically, Complainant asserts inter alia that (a) Complainant’s Mark is famous and well known globally, so much so that Respondent must have known of and targeted Complainant’s Mark in registering the disputed domain name, (b) Complainant has given no authorization or license for use of the disputed domain name, (c) Respondent is not commonly known by the disputed domain name, (d) Respondent’s use of the disputed domain name for a parking page containing pharmaceutical-related links and its offer to sell the disputed domain name for USD 300 both fail to establish rights or legitimate interests and also demonstrate Respondent’s bad faith registration and use, (e) Respondent’s use of the disputed domain name is misleading and creates a likelihood of confusion as to the source or sponsorship of Respondent’s website, and (f) when registering the disputed domain name Respondent cloaked its true identity by use of a domain name privacy service, which is further evidence of bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that Complainant prove the following three elements in order to be successful in this action: (i) the disputed domain name is identical or confusingly similar to trademarks or service marks 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name wholly incorporates Complainant’s PFIZER Mark along with the term “Rx”, which is a common term for prescription medication. It is well-established that the addition of other terms (whether generic, descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287. Similarly, the addition of the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. Accordingly, the Panel finds that the disputed domain name is confusing similar to Complainant’s Mark, and that the first element of the test is satisfied. B. Rights or Legitimate Interests It is well-established that a complainant must present a prima facie case in relation to the second element of the test, not mere allegations. Once a prima facie showing is made, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. This burden-shifting is appropriate given that the respondent is often the only party with access to evidence of their own rights or legitimate interests. Given this, where a respondent fails to file a response, a panel may draw inferences from the failure to respond as appropriate under the circumstances of the case and while still weighing all available evidence irrespective of whether a response is filed. See, section 2.1 of the WIPO Overview 3.0 and cases cited therein. See also, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, Complainant has asserted that it has given no authorization for Respondent’s use of the disputed domain name, and further has submitted evidence that Respondent is using the disputed domain name for a parking page featuring pay-per-click pharmaceutical-related links, including links relating to products and programs of Complainant’s competitors. It is the consensus view that such a use is neither a fair use nor a bona fide offering of goods or services under the Policy and therefore does not establish rights or legitimate interests. See e.g., Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302. See also, section 2.9 of the WIPO Overview 3.0 and cases cited therein. In the absence of countervailing evidence from Respondent the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the test is satisfied. C. Registered and Used in Bad Faith The third element of the test requires a showing that the disputed domain name has been registered and is being used in bad faith. As previously concluded, the disputed domain name is confusingly similar to Complainant’s well-known PFIZER Mark. Indeed, given the global fame and highly distinctive nature of the PFIZER Mark (recognized by many previous panels), as well as the use of the “Rx” element and the pharmaceutical-related content of the site, there can be no doubt that Respondent knew of and was targeting Complainant’s Mark. Moreover, the targeting of Complainant’s Mark was clearly for commercial gain. Respondent both offered to sell the domain name for a profit and hosted pay-per-click pharmaceutical-related links on the site. Either action alone would suffice in the overall circumstances of this case to establish bad faith registration and use – here we have both. See, paragraphs 4(b)(i) and 4(b)(iv) of the UDRP; sections 3.1, 3.1.1, 3.1.4, and 3.5 of the WIPO Overview 3.0; Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. Finally, while not necessary to the finding, Respondent’s use of a privacy protection service and its use of vague registration information (name of registrant is “Holding Account”) raise an inference of and further support a finding of bad faith registration. See, section 3.6 of the WIPO Overview 3.0 and cases cited therein. Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith, and that the third element of the test is satisfied. 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 Anne Gundelfinger
Sole Panelist
Date: August 20, 2020
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