WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vertex Pharmaceuticals Incorporated v. Whois Privacy Services Pty Ltd / D Pontiac
Case No. D2015-1864
1. The Parties
The Complainant is Vertex Pharmaceuticals Incorporated of Boston, MA, United States of America, represented by Sunstein Kann Murphy & Timbers LLP, United States of America.
The Respondent is Whois Privacy Services Pty Ltd of Queensland, Australia / D Pontiac of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") <vertexpharmaceutical.com> is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 19, 2015. On October 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 2015 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 October 23, 2015.
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 October 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2015.
The Center appointed Peter Wild as the sole panelist in this matter on December 1, 2015. 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
According to WhoIs, the Domain Name was registered on October 17, 2005. The Domain Name resolves to a website with links to various offers and a comment that the "domain may be for sale". The Center's attempt to send communication to the information listed for Respondent Whois Privacy Services Pty Ltd to the email address […]@whoisprivacyservices.com.au and the postal address, both as indicated in the WhoIs, were returned as undeliverable.
Complainant asserts to be a well-known manufacturer of pharmaceutical products based in Boston, Massachusetts, USA, publicly traded on the NASDAQ exchange and a member of the NASDAQ-100 Index. Complaint points out that they used the VERTEX mark 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 and that they are the owner of numerous trademark registrations in many jurisdictions for the mark VERTEX and for the VERTEX triangle design for goods in International Class 5, including pharmaceutical preparations, and for research services related to pharmaceutical preparations in International Class 42.
5. Parties' Contentions
According to Complainant, the Domain Name and Complainant's trademarks are confusingly similar with the identical beginning VERTEX and with adding the generic word "pharmaceutical" which, according to Complainant, is purely descriptive and enhances danger of confusion, as it refers to Complainant's business.
Complainant suggests that as Respondent is using the Domain Name for commercial activity by using it on a pay per click website and by offering it for sale, both constituting use of the VERTEX mark as a deliberate attempt to take commercial advantage of Complainant's rights in VERTEX.
Complainant asserts that it has never licensed or otherwise permitted Respondent to use the mark VERTEX and for these reasons claims that Respondent has no rights or legitimate interests in using Complainant's registered trademark VERTEX.
Complainant suggests that Respondent had constructive notice of Complainant's rights prior to registration and use of the Domain Name as it was registered after trademark registrations were granted in the VERTEX mark to Complainant for many countries. Complainant claims that Respondent is using the Domain Name in bad faith for commercial gain by displaying sponsored links which compete with Complainant. Complainant also claims that Respondent is engaged in further commercial use by displaying that the Domain Name may be for sale.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that it is a well-established and well-known manufacturer of pharmaceutical products based in Boston, United States of America. Complainant is listed on the NASDAQ exchange and is a member of the NASDAQ-100 Index. It has used the VERTEX mark ("Complainant's Trademark") in connection with pharmaceutical research services since in or about 1989, and in connection with pharmaceutical preparations since in or about 1994.
Complainant further asserts that it is the owner of numerous trademark registrations for the mark VERTEX and for the VERTEX triangle design, including in the United States of America, Canada, and Australia, which it observes are the home countries of Complainant, Respondent, and Registrar, respectively. None of this is disputed by Respondent.
Complainant has registered rights in VERTEX trademark in connection with pharmaceuticals and pharmaceutical research services. In light of Complainant's assertions and lack of any response by Respondent, the Panel accepts that Complainant's trademark is identified with Complainant. Complainant argues that the Domain Name incorporates, as a dominant part, its well-known, registered trademark VERTEX, with the addition of the generic word "pharmaceutical", which defines the goods in which Complainant trades. The Panel finds that Internet users are likely to regard the word "pharmaceutical" as descriptive of a website where they could find information about Complainant's pharmaceutical products or information about its services and the main distinctive element to be VERTEX.
For these reasons the Panel finds:
a) Complainant has rights in respect of VERTEX trademark.
b) The Domain Name is confusingly similar to Complainant's Trademark in so far as it contains the distinctive element "Vertex" accompanied by the descriptive and generic term "pharmaceutical".
Accordingly, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
Complainant asserts that Respondent is using the Domain Name for a pay per click website and offers it for sale, both amounting to a deliberate attempt to take commercial advantage of Complainant's trademark without Complainant's consent. Whether Respondent has rights or legitimate interests in the Domain Name must be assessed against Complainant's rights taking into account the manner in which Respondent uses the Domain Name. In the absence of Respondent's comments, and in light of the evidence submitted by the Complainant, the Panel finds that Complainant satisfied its burden to make out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
In the circumstances, it is difficult to see how Respondent's conduct could be characterized as legitimate and thus permissible. On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
According to the record, Respondent is using the Domain Name for a pay-per-click website which usually results in a commercial gain. It also offers the Domain Name for sale. In addition, Respondent registered the Domain Name by using a privacy shield service and according to the record, the indicated email and address in the WhoIs information were not correct. Respondent also chose a domain name which not only incorporates Complainant's trademark which appears to be well known in the pharmaceutical field but added the descriptor "pharmaceuticals". A simple Internet search would have shown to Respondent that VERTEX was a well established trademark in the pharmaceutical field with trademark protection in Canada, Australia, the US and more territories.
Respondent did not reply or submit any explanation or possible justification for its choice of the Domain Name. In light of all these elements, it is reasonable to infer that Respondent wishes to take advantage of Internet users who may know of or otherwise wish to purchase Complainant's well-known goods or services. In the absence of any explanation from Respondent as to how and why it chose the Domain Name and why confusion and deception is unlikely to occur, the Panel finds that Respondent registered and used the Domain Name in bad faith. That is, so as to take advantage of Internet users who know and trust Complainant's trademark.
In light of these factors, the third element of the policy has been met.
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 <vertexpharmaceutical.com> be transferred to Complainant.
Date: December 9, 2015