The Complainant is Pfizer Inc., United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Naci Ozarar, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2021. On January 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2021, 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 January 6, 2021 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 January 6, 2021. 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 January 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Response was filed with the Center on January 27, 2021. On February 1, 2021, the Complainant transmitted to the Center by email an unsolicited Supplemental Filing in reply to the Response. The Center appointed Andrew F. Christie as the sole panelist in this matter on February 18, 2021. 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 one of the largest pharmaceutical enterprises in the world, with global operations in more than 125 countries. It discovers, develops, manufactures, and markets leading prescriptions medicines and vaccines. On December 2, 2020, the Complainant and its collaboration partner BioNTech SE (“BioNTech”) announced that the United Kingdom’s medicines regulatory agency had granted temporary authorization for emergency use of their COVID-19 mRNA vaccine (the “Pfizer-BioNTech vaccine”), the first authorization in the world for a COVID-19 vaccine. In the following days and weeks, the Pfizer-BioNTech vaccine received additional regulatory authorizations around the world, including in the United States, Switzerland, and Israel, and the Complainant began delivering doses of the vaccine globally. The Complainant owns numerous word and stylized trademark registrations for PFIZER throughout the world, including United States Registration No. 2951026 (registered on May 17, 2005), for the word trademark PFIZER. The Complainant says it owns the domain name The disputed domain name was registered on December 2, 2020. The Complainant has provided two screenshots, dated December 22, 2020, and January 27, 2021, showing that on those dates the disputed domain name resolved to a website at which it was stated: “Pfizer-Biontech.Com Is For Sale! No, this is not another parking page! In fact, this is the page you are looking for. We know, there’re plenty of domain sales sites, but we’re different, do you want to know why? USD 99000 (Buy Now Price) USD 5000 (minimum Offer) Buy it now! Offer now!”. Various other domain names were also offered for sale at the website. The Complainant subsequently provided a screenshot, dated February 1, 2021, of the webpage at “www.pfizer-biontech.com/blog”. This webpage contained entries concerning the recycling of car batteries, bitcoin, dogecoin, and numerous other topics unrelated to the Complainant. As of the date of this decision, the disputed domain name redirects to a website at “www.e-vaccine.net”. 5. Parties’ Contentions A. Complainant – Amended Complaint The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) it merely adds the term “biontech”, the name of the Complainant’s COVID-19 vaccine collaboration partner, to the PFIZER trademark; (ii) it is confusingly similar to the Complainant’s own domain name The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Complainant is not affiliated in any way with the Respondent, and has never authorized the Respondent to register or use the disputed domain name or its PFIZER trademark; (ii) the Respondent is not commonly known by the name “pfizer”, by the disputed domain name, or by any variation thereof; (iii) the Complainant’s adoption and registration of the PFIZER trademark in the United States and elsewhere precedes by more than 150 years the Respondent’s registration of the disputed domain name; (iv) given the widespread publicity and fame of the PFIZER trademark throughout the world, the Respondent’s registration of the disputed domain name on the same day as the Complainant’s announcement that its COVID-19 vaccine was the first in the world to be authorized for emergency use, and the inclusion of BioNTech’s name in the disputed domain name, it is indisputable that the Respondent had knowledge of the Complainant’s famous PFIZER trademark prior to the registration of the disputed domain name; and (v) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because it has engaged in opportunistic cybersquatting and has only used the disputed domain name as a redirect to a webpage that offers it for sale for USD 99,000 (Buy Now Price) or USD 5,000 (Minimum Offer) and otherwise has no function or purpose. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because: (i) given the international fame of the trademark PFIZER it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the trademark without knowing of it, but rather registered it to take advantage of the Complainant’s reputation and its trademarks, being opportunistic bad faith under the Policy; (ii) the Respondent’s registration of the disputed domain name immediately upon the Complainant’s announcement of its COVID-19 vaccine authorization, along with the Respondent’s attempt to sell it for a substantial profit, is in itself evidence of opportunistic bad faith; (iii) efforts to hide the identity of the real party in interest through the use of “privacy” services, such as WhoisGuard, Inc., are frequently viewed by panels as evidence of bad faith registration; (iv) the registration and use of the disputed domain name creates a form of initial interest confusion, which attracts Internet users to it, based on the use of the confusingly similar term “Pfizer” in the disputed domain name; (v) there is no evidence of an actual or contemplated good faith use of the disputed domain name; and (vi) the Respondent’s actions are intentional, willful, in bad faith, and committed with full knowledge of the ownership by the Complainant of the PFIZER trademark and the Complainant’s exclusive rights to use and license that trademark. B. Respondent – Response In relation to whether the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, the Respondent contends that the disputed domain name is not identical to the Complainant’s trademarks because it comprises two different words, “pfizer” and “biontech” (separated by a hyphen) and the Complainant does not hold the PFIZER-BIONTECH trademark. In relation to whether the Respondent has rights or legitimate interests in respect of the disputed domain name, the Respondent contends: (i) he registered the disputed domain name aiming to build a bona fide offering of a blog and forum website providing information about a possible vaccine being developed for COVID-19; (ii) the disputed domain name was registered as an asset unrelated to the Complainant’s trademark or its commercial presence, but related to the COVID-19 pandemic and possible vaccination information; (iii) the name choice of the disputed domain name is not intended to cause harm, harass, create confusion or violate trademark rights, but to be found by people looking for information about COVID-19 on the Internet; (iv) the Respondent has informed the CEO of BioNTech SE through private messaging about his building of the blog/information source at a website resolving from the disputed domain name; and (v) the Complaint was initiated when the website resolving from the disputed domain name was under construction and in a parking template, and the following statement/disclaimer was subsequently placed in the footer section of the parking template to avoid any confusion and misunderstanding: “pfizer-biontech.com domain is in no way affiliated, endorsed, sponsored or specifically approved by Pfizer Inc and/or BioNTech SE, Inc. and their respective partners and/or subsidiaries”. In relation to whether the disputed domain name has been registered or is being used in bad faith, the Respondent contends that: (i) the disputed domain name was registered to provide a bona fide offering of a public information exchange on the COVID-19 pandemic and possible vaccination; (ii) the Respondent has conducted a website building and domain name sales business since 2017, and due to an automated content management system installed on the server the disputed domain name was stated as “for sale” at USD 99,000 by default; (iii) the Complainant and the Respondent are not competitors, and the disputed domain name was not registered primarily to disrupt the Complainant’s business; and (iv) the Respondent is an Internet investor not involved with the Complainant’s business area, sector or industry. C. Complainant – unsolicited supplemental filing In an unsolicited supplemental filing in reply to the Response, the Complainant made several points, including: (i) there is no evidence that, prior to the commencement date of this proceeding, the disputed domain name was used, or was even intended to be used, for any purported blog; (ii) the Respondent has not provided any evidence that he informed the CEO of the Complainant’s vaccine partner, BioNTech, about building a blog website and, even if he did do so, there is no suggestion that the CEO consented to the use of the disputed domain name or that he would have authority to consent to use of the PFIZER trademark which is owned by the Complainant; (iii) the Respondent claims that the disputed domain name was pointed to a “for sale” page by “default” yet, even now, the main page on the website resolving from the disputed domain name continues to offer it for sale for USD 99,000 in a blatant and ongoing effort to sell it; (iv) the vast majority of posts at the newly created, purported blog at “www.pfizer-biontech.com/blog” are not even about COVID-19, but rather relate to a variety of wholly unrelated topics; and (v) the purported disclaimer was not posted on the website resolving from the disputed domain name until after this proceeding was commenced and, in any event, a disclaimer is not adequate to dispel confusion or to avoid a finding that the Policy has been violated, particularly because the disclaimer is quite inconspicuous. 6. Procedural Issue – admission of unsolicited supplemental filing The Complainant’s unsolicited supplemental filing addresses a number of matters, including the Respondent’s assertion of his communications with the CEO of BioNTech about registration and use of the disputed domain name, and the Respondent’s change in use of the disputed domain name to direct to a purported blog. Since these are matters on which the Respondent relies in justification of its actions, and of which the Complainant apparently did not know at the date of the filing of its Amended Complaint, the Panel has exercised its discretion to admit the Complainant’s supplemental filing to the case record. 7. Discussion and Findings A. Identical or Confusingly Similar Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case, since it is viewed as a standard registration requirement), the disputed domain name consists of the whole of the Complainant’s registered word trademark PFIZER followed by a hyphen and the word “biontech”. The Complainant’s word trademark PFIZER is clearly recognizable within the disputed domain name. The addition of the word “biontech”, which is the name of the Complainant’s collaboration partner in the development of a COVID-19 vaccine, does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. As provided in section 1.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the complainant’s trademark is recognizable within the disputed domain name, the addition of other terms including third-party marks is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its PFIZER word trademark. The Respondent has not provided any evidence that it has been commonly known by the disputed domain name. The Respondent’s claim that it has rights or legitimate interests in the disputed domain name by virtue of its use in connection with a bona fide offering of services – namely, the provision of information about a possible vaccine being developed for COVID-19 – is fanciful, for the following reasons. First, it appears that the purported blog page was added to the website subsequent to the filing of the Complaint. Secondly, almost all of the entries on the purported blog page are unrelated to the topic of a COVID-19 vaccine. Thirdly, the evidence provided by the Complainant shows that the home page of the purported blog contained an offer to sell the disputed domain name for USD 99,000 (the “buy now” price) or, at least, for USD 5,000 (the “minimum offer” price). To use the disputed domain name in this manner is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of it. In any event, even if the disputed domain name had been used to resolve to a blog that did genuinely provide information about a possible vaccine being developed for COVID-19, it does not follow that such a use would give the Respondent rights or legitimate interests in the disputed domain name. Notably, the disputed domain name consists of the Complainant’s trademark and the name of its collaboration partner, separated by a hyphen. An Internet user will read the disputed domain name as referring to the Complainant and its collaboration partner, and so will almost certainly believe, wrongly, that a website resolving from the disputed domain name is affiliated with them. Moreover, the fact remains that the homepage of the website resolving from the disputed domain name contains an offer to sell it for a large sum of money. In these circumstances, it cannot be said that use of the disputed domain name in connection with a blog providing information about a possible vaccine being developed for COVID-19 is a legitimate noncommercial or fair use of it. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainant first registered its PFIZER word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s PFIZER trademark, given that the disputed domain name consists of the Complainant’s distinctive trademark with the addition of a hyphen and the name of the Complainant’s collaboration partner in the development of a vaccine for COVID-19. Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s trademark, any use of the disputed domain name by the Respondent almost certainly implies an affiliation with the Complainant that does not exist, and so would be a use in bad faith. Furthermore, the evidence shows that the disputed domain name was offered for sale for USD 99,000 or, at least, for USD 5,000, which indicates that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for a sum in excess of its out-of-pocket expenses directly related to the domain name. According to paragraph 4(b)(i) of the Policy, that is evidence of the registration and use of the disputed domain name in bad faith. After this proceeding was commenced, the Respondent included a disclaimer on the website to which the disputed domain name then resolved. Even if this disclaimer had been prominent – which it was not – it would not assist the Respondent. As is recognized in section 3.7 of the WIPO Overview 3.0, where the overall circumstances point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In any event, as at the date of this decision the disputed domain name resolves to another website, at which it appears the disclaimer is not present. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. D. Appropriate Remedy where Disputed Domain Name Contains a Third Party’s Trademark or Name The Complainant has requested that the disputed domain name be transferred to it. The disputed domain name consists of the Complainant’s trademark and the name of its partner in the COVID-19 mRNA vaccine collaboration. The question that arises is whether it is appropriate for a panel to order transfer of a disputed domain name where it contains the name of a third party. According to the WIPO Overview 3.0, panels have adopted a range of approaches to this issue. In a number of cases, the panel has ordered the remedy sought. In some of those cases, the panel has included in its decision an express statement that the order of transfer is without prejudice to the third party’s rights. In some other cases, the panel has sought an assurance of the third party’s non-objection before ordering transfer. In certain highly exceptional circumstances, however, a panel has ordered cancellation rather than the requested remedy of transfer of the disputed domain name. The Panel considered the issue in the earlier, and unrelated, matter WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com,WIPO Case No. D2012-0674. In that case, the Panel expressed the view that there is no basis in principle or in practice for denying a complainant the remedy of transfer merely because the disputed domain name contains, in addition to the complainant’s trademark, a trademark owned by a third party. The Panel noted that neither the Policy nor the Rules contains a provision that precludes the grant of the transfer remedy in this situation. The Panel also noted that neither the Policy nor the Rules contains a provision that precludes the third party from bringing an action under the Policy, or under any other applicable law, against the complainant in whose favor an order of transfer is made, in the event that the third party considers the complainant’s holding of the disputed domain name after transfer to be in violation of the Policy. For these reasons, the Panel was of the view that a UDRP panel need not be concerned that an order of transfer of a disputed domain name will immunize the successful complainant from further action in relation to that domain name. Thus, a UDRP panel can and should grant the remedy of transfer even where the disputed domain name contains the tademark or name of a third party. This approach has been considered and adopted in a number of cases – see section 4.13 of the WIPO Overview 3.0. Having given further consideration to the issue, the Panel remains of the view that there is no basis in principle or in practice for denying a complainant the remedy of transfer merely because the disputed domain name contains a third party’s trademark or name. Moreover, the Panel considers that there is no need to include an express statement that the order of transfer is without prejudice to the third party’s rights. An order of transfer simply resolves the dispute between the parties to the complaint. Since a third party is, by definition, not a party to the complaint, it is difficult to see how a panel’s determination could ever be interpreted as being with prejudice to a third party – including a third party whose trademark or name is incorporated in the disputed domain name. Thus, an express statement that the panel’s decision is without prejudice to the third party’s rights would appear to be superfluous. In any event, a panel’s order of transfer, once implemented, results in registration of the disputed domain name by the complainant. That registration is, of course, subject to all of the provisions of the UDRP. These provisions include, in particular, the paragraph 2(d) representation and warranty that the registrant (in this instance, the successful complainant) “will not knowingly use the domain name in violation of applicable laws or regulations”. Thus, by accepting an order of transfer, a successful complainant is obliged not to use the disputed domain name in a manner which would violate the rights of the third party whose trademark or name is included in it. For these reasons, the Panel considers that the appropriate remedy to order in this case is the remedy sought by the Complainant – namely, transfer of the disputed domain name. 8. 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 Andrew F. Christie
Sole Panelist
Date: March 4, 2021
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