WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Registration Private, Domains By Proxy, LLC / Jenny Tran
Case No. D2016-2067
1. The Parties
The Complainant is Pfizer Inc. of New York, New York, United States of America (“US”), represented by the law firm Kaye Scholer, LLP, US.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, US / Jenny Tran of San Jose, California, US.
2. The Domain Name and Registrar
The disputed domain name <pfizer-au.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2016. On October 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 2016, 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 20, 2016.
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 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2016.
The Center appointed Richard G. Lyon as the sole panelist in this matter on November 24, 2016. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 US-based multinational pharmaceutical company. It holds many trademarks around the world for PFIZER, alone and in combination with various designs or other words. The earliest of such marks referred to in the Complaint that was registered on the Principal Register of the United States Patent & Trademark Office (USPTO) issued in 1956, for PFIZER & design. The Complainant operates a number of websites that incorporate its name and USPTO-registered marks, including “www.pfizer.com” and “www.pfizer.com.au”.
The Respondent registered the disputed domain name in August 2016. When the Panel attempted to access the disputed domain name he received a standard error message “Server not found.” According to an annex to the Complaint at one time the disputed domain name resolved to a different error message, “This site can’t be reached.”
5. Parties’ Contentions
The Complainant contends as follows:
1. The disputed domain name consists of the USPTO-registered PFIZER mark, the addition of “-au”, and the generic Top-Level Domain (“gTLD”) “.com”. The last of these is irrelevant to determining identity or similarity under paragraph 4(a)(i) of the Policy. The “-au” adds to confusion as it mimics the Australian website long maintained by the Complainant. The disputed domain name is thus confusingly similar to the Complainant’s many nationally registered trademarks.
2. The Complainant has never authorized the Respondent to use its marks and nothing indicates that the Respondent has ever been commonly known by the disputed domain name. The Respondent has used the disputed domain name solely as part of a phishing scheme, “to impersonate a Pfizer employee in communications with actual Pfizer employees.” Such use is not legitimate and the Respondent has demonstrated and can demonstrate no other right or legitimate interest in the disputed domain name.
3. The Complainant advances three bases for finding bad faith. First, “As an initial matter, Respondent’s lack of rights or legitimate interest in the use of the [disputed] domain name renders the issue of bad faith registration unnecessary to even be considered.” Second, phishing by itself demonstrates bad faith in registration and use; the Complainant cites nine UDRP decisions that it asserts have so held. Third, the Respondent’s warehousing of the disputed domain name, demonstrated by resolution of it to the error message described above (called “a blank page” by the Complainant), is a separate basis for finding bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Unlike (US) civil litigation, the Respondent’s default does not result in an automatic decision in the Complainant’s favor or an admission of the truth of the factual allegations in the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. Even in a default case such as this “[t]he Policy requires the Complainant to prove each of the three elements. Policy, paragraph 4.” Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755. The Complainant bears the burden of proof under each element of paragraph 4(a).
A. Identical or Confusingly Similar
The Complainant succeeds under this Policy element substantially for the reasons set out in Section 5(A)(1) above. The dominant feature of the disputed domain name is the Complainant’s USPTO-registered mark PFIZER, so the Complainant has proven both aspects of paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) requires proof of a negative. This is done by the Complainant’s making a prima facie case that the Respondent lacks rights or legitimate interests. Once this is accomplished the burden of production shifts to the Respondent to demonstrate the contrary, with the ultimate burden of proof remaining with the Complainant. WIPO Overview 2.0, paragraph 2.1.
The Complainant here has made its prima facie caseby demonstrating that it has never authorized the Respondent to use its marks and that nothing indicates that the Respondent has ever been commonly known by the term PFIZER. The Respondent has provided nothing to refute this showing, so the Complainant succeeds under this Policy element.
C. Registered and Used in Bad Faith
The Complainant’s first proposed basis for a finding of bad faith, that bad faith in effect is an automatic consequence of a lack of a right or legitimate interest, is in this Panel’s opinion something of an oversimplification and certainly not a general rule. The second ground advanced by the Complainant, that phishing evidences bad faith, is correct as a matter of Policy precedent – but bad faith may be found only when supported by evidence demonstrating such improper use. See, e.g., CITGO Petroleum Corporation v. [name redacted], WIPO Case No. D2016-1410; Alliance Healthcare Services Inc. v. [Name redacted] / Whois Agent, Whoisprivacy Protection Service Inc., WIPO Case No. D2015-1666. The Complainant’s evidence in this proceeding is not adequate to prove phishing or indeed much of anything. That evidence consists of a single email from someone said, without proof, to be the Respondent, to someone said, without proof, to be an employee of the Complainant. While the email does come from an address at the disputed domain name, its contents (“Robert, Can you process an international payment today? Regards, David”), without more, do not demonstrate impropriety.
The Panel need not dwell upon these issues, however, as the Complainant has proven bad faith under the passive use doctrine.
Since the very earliest days of the Policy panels have repeatedly held that in appropriate circumstances non-use of a domain name (often called passive use or warehousing) may constitute bad faith for purposes of paragraph 4(a)(iii). WIPO Overview 2.0, paragraph 3.2. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, involving the domain name <telstra.org>, the panel found the following circumstances sufficient to infer bad faith:
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia [its home country and the domicile of respondent] and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
The evidence in this case supports comparable findings under paragraphs (i), (ii), and (v) of the Telstra case, and that in this Panel’s opinion suffices for findings of both registration and use in bad faith. Of particular (probably essential) importance to this conclusion are two more circumstances in common with Telstra: the coined and distinctive nature of the PFIZER marks and their well-established and longtime use around the world for a consumer product. On the record in this case, in the words of the Telstra panel “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.”
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 <pfizer-au.com> be transferred to the Complainant.
Richard G. Lyon
Date: November 30, 2016