The Complainant is Vifor (International) Ltd., Switzerland, internally represented.
The Respondent is Peg Baum, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 11, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the complete contact details.
The Center verified that the 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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2021.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 28, 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 BackgroundThe Complainant is a global pharmaceutical company that specialises in the discovery, development, manufacturing and marketing of pharmaceutical products for the treatment of iron deficiency. Headquartered in Switzerland, the Complainant operates and owns the domain name
The Complainant is the owner of numerous trade mark registrations for the VIFOR PHARMA mark in various jurisdictions, including, inter alia, the VIFOR PHARMA trade mark (Reg. No. 691826) registered in Switzerland on August 25, 2016 and the VIFOR PHARMA international trade mark (Reg. No. 975870) registered on February 12, 2008 covering multiple jurisdictions including Australia, Japan, Republic of Korea (the), Singapore and the United States.
The Disputed Domain Name was registered by the Respondent on June 7, 2021. The Disputed Domain Name was used in an email fraud to impersonate the Complainant. The Disputed Domain Name currently resolves to an inactive website and there are no records of the website having been used for legitimate purposes in the past.
5. Parties’ Contentions A. ComplainantThe Complainant’s primary contentions can be summarised as follows:
(a) The Disputed Domain Name is almost identical and confusingly similar to the Complainant’s VIFOR PHARMA trade mark.
(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its VIFOR PHARMA trade mark. The Respondent is not commonly known by the Disputed Domain Name. There is also no evidence of 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.
(c) The Respondent intentionally attempted to attract, Internet users for commercial gain to the website to which the Disputed Domain Name resolves, by creating a likelihood of confusion with the Complainant’s VIFOR PHARMA mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Disputed Domain Name has been used by the Respondent for fraudulent purposes. In particular, the Respondent attempted to pass itself off as the Complainant’s Chief Financial Officer by sending emails using the Disputed Domain Name to the Complainant’s employees with the intention of deceiving them. Therefore, the Respondent has registered and is using the Disputed Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the 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 by the Respondent in bad faith.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant has rights in the VIFOR PHARMA trade mark, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain (“TLD”) extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name incorporates a version of the Complainant’s VIFOR PHARMA trade mark with the letter “i” replaced with “l”. The Panel finds that despite the replacement of the letters, the Complainant’s VIFOR PHARMA is sufficiently recognizable.
Such variation does not appear to have the effect of sufficiently distinguishing the Disputed Domain Name from the Complainant’s VIFOR PHARMA trade mark and therefore does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s VIFOR PHARMA trade mark.
As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s VIFOR PHARMA trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsOnce a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel finds that the Complainant has not authorised the Respondent to use the VIFOR PHARMA trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the VIFOR PHARMA trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him 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 was in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he 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.
There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel agrees with the Complainant that the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate noncommercial or fair use as the Disputed Domain Name was used by the Respondent for fraudulent purposes. In particular, the Respondent had attempted to pass itself off as the Complainant’s Chief Financial Officer by sending emails using the Disputed Domain Name to the Complainant’s employees with the intention of deceiving them. Such use of the Disputed Domain Name would very likely give a false impression that the Disputed Domain Name is related to the Complainant and is thus capable of misleading third parties and tarnishing the Complainant’s VIFOR PHARMA trade mark.
In addition, no evidence has been provided to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0.
The Complainant’s VIFOR PHARMA trade mark appears to be fairly well-known. A quick Internet search shows that the top search results returned for “Vifor Pharma” are the Complainant’s official website and several third party websites making references to the Complainant’s products and services. Therefore, taking this into consideration together with the fact that the Disputed Domain Name incorporates a deliberately misspelled version of the Complainant’s VIFOR PHARMA trade mark and that the Respondent has been attempting to pass itself off as a staff member of the Complainant using the Disputed Domain Name, the Respondent must have been aware of the Complainant and its rights in the VIFOR PHARMA trade mark when registering the Disputed Domain Name. The Panel finds that there is a reasonable likelihood that Internet users may not notice the difference between the Disputed Domain Name and the Complainant’s VIFOR PHARMA trade mark and may mistakenly perceive the Disputed Domain Name to be owned and operated by the Complainant.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:
(i) The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;
(ii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains a typosquatted version of the Complainant’s VIFOR PHARMA mark and is being used by the Respondent for fraudulent purposes. Any use of the Disputed Domain Name would likely mislead third parties into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor 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
Gabriela Kennedy
Sole Panelist
Date: October 12, 2021