Complainants are Pfizer Inc., United States of America (hereinafter “First Complainant”) and Pfizer B.V., the Netherlands (hereinafter “Second Complainant”), represented by Arnold & Porter, United States of America.
Respondent is VAN ZYL, Private, South Africa. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 26, 2020, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainants on December 4, 2020, providing the registrant and contact information disclosed by SIDN, and requesting Complainants to submit an amendment to the Complaint in this light. Complainants filed an amended Complaint on December 7, 2020. The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 10, 2020. In accordance with the Regulations, article 7.1, the due date for Response was December 30, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 5, 2021. The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on January 27, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background First Complainant is one of the world’s largest biopharmaceutical manufacturers and sellers and maintains global operations in more than 125 countries, including in the Netherlands, including through its Dutch subsidiary, Second Complainant, hereinafter also jointly referred to as “Pfizer” or “Complainants”. Pfizer discovers, develops, manufactures and markets leading prescriptions medicines. First Complainant owns numerous trademark registrations for the mark PFIZER, including European Union trademark registration for the word mark PFIZER, number 000374611, registered on September 29, 1998, and for the figurative mark PFIZER, number 000378489, registered on August 17, 1998, both for goods and services in classes 5, 10, 16, 18, 36 and 42 (hereinafter collectively referred to as the “Trademark”). In addition, First Complainant and/or its wholly-owned subsidiary Pfizer Products Inc., own numerous trademark registrations for the PFIZER mark throughout the world. A list of First Complainant’s and its affiliates’ registrations of the PFIZER mark (both in plain text and with a logo) in numerous jurisdictions worldwide, including in the European Union, and some registration certificates of the European Union trademark registrations have been submitted with the Complaint. According to Complainants, all of these registrations are valid, unrevoked and uncancelled. According to Complainants, Pfizer uses its extremely well-known and famous Trademark throughout the world in connection with the sale of a wide variety of pharmaceutical products. Pfizer operates websites at various domain names that contain the Trademark, such as Complainants note that Pfizer has been known by and has used the PFIZER brand, mark and trade name (hereinafter referred to as the “Trade Name”), for over 150 years (since 1849). The Domain Name was registered on September 17, 2020. According to Complainants, at the time the Complaint was filed, the Domain Name was not resolving to an active website. The Panel also established this at the time of drafting this decision. 5. Parties’ Contentions A. Complainants Complainants state that the Domain Name is identical or at least confusingly similar to the Trademark and the Trade Name. Complainants argue, to the extent relevant, that the Domain Name merely adds the dictionary term “bv” (the abbreviation for “besloten vennootschap”, which is the legal form of a private limited liability company under Dutch law, and is the legal form of Second Complainant) and the Top-Level Domain “.nl” to the Trademark, that the Domain Name is confusingly similar to Complainants’ own domain names Complainants argue that Pfizer’s name is so commonly preyed upon by cybersquatters such as Respondent, that Pfizer is frequently compelled to bring domain name proceedings concerning domain names that attempt to capitalize on similar variations of Complainant’s Trademark. References to other WIPO panel decisions concerning those proceedings have been included in the Complaint. According to Complainants, the addition of a descriptive or dictionary term – such as “bv” – does not prevent a finding of confusing similarity under the Regulations, particularly where the disputed domain name incorporates the entirety or dominant feature of the relevant mark, with reference to Petroleo Brasileiro S.A. (Petrobras), Petrobras Netherlands B.V. v. Domains By Proxy, LLC / Petrobras Tankfarm, WIPO Case No. DNL2017-0036 (“[t]he descriptive abbreviated corporate term “bv” and the Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations”). Complainants contend that Respondent has no rights to or legitimate interests in the Domain Name. Complainants note that they are not affiliated in any way with Respondent – to the extent that Respondent can even be identified – and have never authorized Respondent to register or use the Domain Name or the Trademark. Respondent has no rights to or legitimate interests in the Trademark or the Domain Name. Upon information and belief, Respondent is not commonly known by the name “Pfizer,” “Pfizerbv”, or any variation thereof. Complainants argue that Pfizer’s registration of the Trademark precedes Respondent’s registration of the Domain Name by almost 25 years. Moreover, given the widespread publicity and fame of the Trademark throughout the world, it is inconceivable that Respondent did not have knowledge of the Trademark prior to the registration of the Domain Name. Complainants assert that Respondent cannot demonstrate any rights or legitimate interests in the Domain Name. Respondent is not using the Domain Name in connection with a legitimate and noncommercial or fair use within the meaning of the Regulations, article 2.1, sub b. The Domain Name does not resolve to an active website, and does not appear to be used in connection with any bona fide offering of goods or services. It is well-established that the passive holding of a domain name does not constitute a legitimate noncommercial use: see, e.g., Skyscanner Limited v. Marko Nikolic,WIPO Case No. DNL2020-0004 (noting the fact that “the Domain Name does not resolve to an active website”, as evidence that respondent does not have rights or legitimate interests in the disputed domain name) and Williams-Sonoma, Inc. v. E. Linders,WIPO Case No. DNL2013-0020 (“Absent any contrary evidence from the respondent, its passive holding of the domain name does not constitute a legitimate noncommercial use of the domain name.”). Complainants contend that Respondent registered and is using the Domain Name in bad faith. Complainants argue that given the international fame of the Trademark, it is “inconceivable that Respondent might have registered a domain name similar to or incorporating the mark without knowing of it,” and it would be natural to conclude that Respondent registered the Domain Name in order to take advantage of Pfizer’s reputation and the Trademark, constituting opportunistic bad faith under the Regulations. Complainants refer in this regard to a large number of relevant WIPO panel decisions. Further, Complainants argue that panels applying the Regulations have long held that a respondent’s non-use or passive holding of a disputed domain name does not prevent a finding of bad faith. In addition, the registration and use of the Domain Name creates a form of initial interest confusion, which attracts Internet users to the Domain Name based on the use of the Trademark in the Domain Name. This is further evidence that the Domain name is being used in bad faith, according to Complainants, referencing relevant WIPO panel decisions. In addition, Complainants point to certain indications that the Domain Name was registered for the purpose of being used in, a fraudulent “phishing” scheme in which third parties are tricked into providing confidential information to, or engaging in transactions with, persons posing as Pfizer employees. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings As Respondent has not filed a Response, the Panel shall rule based on the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact. The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent. Pursuant to article 2.1 of the Regulations, Complainants’ request to transfer the Domain Name must meet three cumulative conditions: a. the Domain Name is identical or confusingly similar to: I. a trademark, or trade name, protected under Dutch law in which Complainant has rights; or II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which Complainant undertakes public activities on a permanent basis; and b. Respondent has no rights to or legitimate interests in the Domain Name; and c. the Domain Name has been registered or is being used in bad faith. Considering these conditions, the Panel rules as follows. A. Identical or Confusingly Similar Complainants have based the Complaint on the Trademark and the Trade Name. Complainants have submitted a copy of the registration of the Trademark demonstrating that First Complainant is the holder of the Trademark. The Trademark is protected under Dutch law. In addition, numerous WIPO panel decisions applying the analogous elements of the Uniform Domain Name Dispute Resolution Policy (“UDRP”) have recognized Complainants’ well-established rights in its distinctive and well-known Trademark. The Panel notes that the Trade Name is widely used in the Netherlands, including on the website linked to Complainants’ domain name It is established case law under the Regulations that the country code Top-Level Domain suffix “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) or trade name(s) on the one hand, and the disputed domain name on the other hand (see, e.g., Caterpillar Inc. v. H. van Zuylen Materieel,WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008‑0008). The Domain Name includes the entire Trademark and the entire Trade Name respectively, with the addition of “bv” in respect to the Trademark. The Trademark and the Tradename respectively are the distinctive and dominant element of the Domain Name. The addition of “bv” in the Domain Name does not prevent a finding of confusing similarity. The Domain Name is textually, visually and phonetically nearly identical to the Trademark and the Trade Name. The Panel finds that the Domain Name is confusingly similar to the Trademark and the Trade Name for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met. B. Rights or Legitimate Interests Article 2.1(b) of the Regulations requires Complainants to demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if Complainants make out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002). Complainants allege that Respondent lacks rights to or legitimate interests in the Domain Name for the reasons set out in Section 5.A above. The registration of the Trademark predates the registration of the Domain Name. Furthermore, it is undisputed that Complainants have not granted any license or otherwise authorized Respondent to use the Trademark or the Trade Name or to apply for any domain name incorporating the Trademark or the Trade Name. Further, no commercial relationship exists between Complainants and Respondent. The Domain Name does not resolve to an active website, and does not appear to be used in connection with any bona fide offering of goods or services. It is well-established under precedent that the passive holding of a domain name does not constitute a legitimate use of the Domain Name. The Panel finds that Complainants have fulfilled the obligation to establish prima facie that Respondent has no rights to or legitimate interests in the Domain Name. As a result of its failure to submit a response, Respondent has not refuted the arguments of Complainants and/or shown rights to or legitimate interests in the Domain Name. The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has rights to or legitimate interests in the Domain Name. Consequently, the Panel is satisfied that Respondent has no rights to or legitimate interests in the Domain Name and concludes that Complainants have met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith The Panel finds that Complainant’s name is so well-known internationally that it is inconceivable that Respondent might have registered a domain name similar to or incorporating the Trademark and the Trade Name without knowing of it. Considering this distinctiveness and reputation and the prior rights of Complainants, and the fact that Complainants have never licensed or otherwise authorized Respondent to use the Trademark or the Trade Name in a domain name, the Panel finds that Respondent knew or should have known of Complainants’ rights at the time of registration of the Domain Name. Also, in light of the fraudulent phishing scheme as argued by Complainants, which has not been refuted by Respondent, the Panel finds that the Domain Name has been apparently registered for fraudulent purposes and thus in bad faith. This constitutes evidence of bad faith registration in accordance with article 3.2(d) of the Regulations. Previous panels have found that the incorporation of a well-known trademark in a domain name without plausible explanation is may in itself be an indication of bad faith (see, e.g., Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 in which the UDRP panel stated: “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”).1 The Panel notes that the Respondent has not provided any counter-indication of this reasonable presumption. The Panel furthermore notes that Respondent registered the Domain Name at a time when Pfizer's COVID-19 vaccine was the subject (as it continues to be) of global media and public attention. Finally, the Panel notes the indications advanced by Complainants of Respondent’s registration of the Domain Name forming part of a phishing scheme. On all of the above grounds, the Panel finds that the requirement of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations has been met. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, Remco M.R. van Leeuwen 1 In view of the fact that the Regulations are to an extent based on the UDRP, it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
Panelist
Date: February 10, 2021
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