The Complainant is Vertex Pharmaceuticals Incorporated, United States of America (“United States”), represented by Sunstein LLP., United States.
The Respondent is Privacy Protect, LLC (PrivacyProtect.org) / Yurij Nikolskij, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2020. On August 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 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 the Complainant on August 14, 2020, 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 16, 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 the Respondent of the Complaint, and the proceedings commenced on September 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2020. The Center appointed Jacques de Werra as the sole panelist in this matter on November 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 The Complainant is a manufacturer of pharmaceutical products based in Boston, Massachusetts, USA. The Complainant is publicly traded on the NASDAQ exchange and is a member of the NASDAQ-100 Index. The Complainant is the owner of numerous trademark registrations in many jurisdictions for the mark VERTEX and for the VERTEX triangle design. The Complainant is also the owner of a number of trademark registrations containing the letters “VX” for pharmaceutical products in Class 5 (“the Trademark”), including the following trademarks: - US Trademark No. 4,057,950 for the sign “VX”, figurative, registered on November 22, 2011, in class 5; The Complainant has used the Trademark in connection with pharmaceutical research services since at least as early as November 4, 1989, and in connection with pharmaceutical preparations since at least as early as July 13, 1994. The Respondent registered the Disputed Domain Name on May 16, 2020. The Disputed Domain Name is being used in connection with a website featuring the name “vertex” in order to sell injectable and tablet steroids. 5. Parties’ Contentions A. Complainant The Complainant claims in essence that the Disputed Domain Name is confusingly similar to the Trademark. It refers (among other arguments) to a previous UDRP panel decision which was rendered regarding the same domain name (against a nominally different registrant) in similar circumstances. See Vertex Pharmaceuticals Incorporated v. Private Data Domains Ltd. / AnonymousSpeech, AnonymousSpeech, Michael Weber,WIPO Case No. D2019-1259. In that previous case, the Complainant submits the Disputed Domain Name was indeed similarly used in connection with a website for the sale of injectable and tablet steroids on which the name “vertex” was used with an identical logo (featuring a mountain design). The Complainant further alleges that the Respondent is using the Disputed Domain Name to direct Internet traffic to its website in order to sell its own injectable and tablet steroids. The Respondent’s use of the VX and VERTEX marks to sell such goods is a deliberate attempt to take commercial advantage of the Complainant’s rights in these marks for similar goods. The timing of the Complainant’s registration of the Trademark, and the Respondent’s registration of the Disputed Domain Name at issue, also demonstrates that the Respondent has no right or legitimate interest in the Disputed Domain Name. The Respondent registered the Disputed Domain Name on May 16, 2020, more than twenty-five years after the founding of the Complainant and more than ten years after the Complainant applied to register the Trademark in the United States. The Complainant has never licensed or otherwise permitted the Respondent to use the Trademark. The Complainant further alleges that the Respondent had either actual or constructive knowledge of the Complainant’s rights in these marks prior to the Respondent’s registration and use of the Disputed Domain Name, clearly indicating bad faith. It seems apparent that the Respondent is the same entity as was the respondent in the prior case involving the Disputed Domain Name (Vertex Pharmaceuticals Incorporated v. Private Data Domains Ltd. / AnonymousSpeech, AnonymousSpeech, Michael Weber,WIPO Case No. D2019-1259), including but not limited to because the Disputed Domain Name is identical to the domain in the previous proceeding; 2) and the current website provides the same email address for contact inquires (i[...]@vx-laboratories.com) as the previous domain name; and 3) the website currently associated with the Disputed Domain Name displays the identical “vertex” logo (featuring a mountain design), and offers the same steroid-based goods for sale as did the previous website hosted at the Disputed Domain Name in 2019. Accordingly, it seems apparent that this is the same entity and that the Respondent has actual knowledge of the Complainant’s rights in these marks. The Disputed Domain Name was also registered many years after trademark registrations were granted to the Complainant including by the Trademark in various countries. Further, the Respondent is engaged in active commercial use of the Disputed Domain Name to sell tablet and injectable steroids. Finally, the Respondent’s registration of the Disputed Domain Name prevents the Complainant from using its trademarks under a corresponding domain name. For these reasons, the Complainant submits that the Respondent’s registration and use of the Disputed Domain Name is made in bad faith as the Respondent has no legitimate rights to use or register the 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 the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding: (i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark. A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name can be considered as confusingly similar to the Trademark, because the Trademark is recognizable within the Disputed Domain Name to which the dictionary term “laboratories” has been added, which does not prevent a finding of confusing similarity as determined by previous UDRP panels. As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to it of the dispute, the 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 has been commonly known by the Disputed Domain Name, even if it has acquired no trademark 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 trademark or service mark at issue. “Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name”, see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.1. In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which features the Trademark owned by the Complainant as its first and distinctive element without the authorization of the Complainant, in a way which can only reasonably be explained as an abbreviation of the Complainant corporate name and as a direct reference the Complainant’s Trademark “VX”. The selection of the Disputed Domain Name as targeting the Complainant and the Trademark is indeed confirmed by the presence of the term “laboratories” in the Disputed Domain Name which refers to the pharmaceutical industry of the Complainant. This is also confirmed by the fact that the website associated to the Disputed Domain Name expressly mentions the name of the company of the Complainant, i.e. “Vertex”, which confirms that the abbreviation “VX” contained in the Disputed Domain Name is meant by the Respondent to refer to the name or Trademark of the Complainant. The choice of the Disputed Domain Name corresponding to the Trademark of the Complainant cannot be reasonably explained otherwise than by the knowledge of the Respondent of the Complainant and of the Trademark. The Complainant has thus established without being contradicted that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and that the Respondent has not been commonly known by the Disputed Domain Name. The Panel notes that the Respondent has not established that it would be commonly known by the Disputed Domain Name. On this basis, the Panel accepts the Complainant’s prima facie showing so that it was consequently up to the Respondent to come forward with evidence of rights or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s default in this proceeding. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; (ii) circumstances indicating that the respondent registered the Disputed 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; (iii) circumstances indicating that the respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other online location, 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 location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. The Complainant claims that the Respondent is the same registrant and user of the Disputed Domain Name as the one which had registered the Disputed Domain Name and had used it in a way which is identical to the use made by the Respondent, i.e. to sell steroid-based goods for sale. The Panel notes that the registrant of the Disputed Domain Name is nominally different in this proceeding, and the Panel is not in a position to determine on the basis of the record whether the Respondent in these proceedings is identical to the respondent in the previous dispute. See Vertex Pharmaceuticals Incorporated v. Private Data Domains Ltd. / AnonymousSpeech, AnonymousSpeech, Michael Weber,WIPO Case No. D2019-1259. In addition, no explanation was given as to why the Disputed Domain Name that was transferred to the Complainant as a result of the previous proceeding could be registered by the Respondent. This however does not prevent a finding of bad faith in the present circumstances given that the Respondent is using the Disputed Domain Name in a way that similarly establishes that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other online location, 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 location or of a product or service on its website or location. See Vertex Pharmaceuticals Incorporated v. Private Data Domains Ltd. / AnonymousSpeech, AnonymousSpeech, Michael Weber,WIPO Case No. D2019-1259. The Panel consequently holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s Trademark so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant and to the Trademark. The Panel notes in this respect that the Trademark’s reputation has been duly established and recognized by previous UDRP panels. See Vertex Pharmaceuticals Incorporated v. Private Data Domains Ltd. / AnonymousSpeech, AnonymousSpeech, Michael Weber,WIPO Case No. D2019-1259. On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met. 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 Jacques de Werra
On October 22, 2020, the Center’s email of Notification of the Complaint was copied to the Respondent’s email listed on the website to which the Disputed Domain Name resolved, [...]@vx-laboratories.com, and an additional five day period (i.e., through October 27, 2020) was granted to the Respondent by the Center to indicate whether it would like to participate in the proceeding. No email communication was received from the Respondent.
- US Trademark No. 4,795,844 for the sign “VX-970”, figurative, registered on August 18, 2015, in class 5.
Sole Panelist
Date: November 19, 2020
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