WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Sarthak Kapoor
Case No. D2019-0292
1. The Parties
The Complainant is Pfizer Inc. of New York, New York, United States of America (the “United States”), represented by Arnold & Porter Kaye Scholer LLP, United States of America.
The Respondent is Sarthak Kapoor of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <pfizerpharma.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2019. On February 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 February 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2019. The Respondent sent email communications on February 13, 2019 and March 3, 2019.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on March 12, 2019. 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 Pfizer Inc. is among the largest pharmaceutical enterprises in the world. It has global operations in more than 150 countries. Pfizer discovers, develops, manufactures and markets leading prescriptions medicines, as well as many of the world’s best-known consumer products.
The Complainant has been known by and has used the PFIZER® mark for over 150 years. It has owned a United States trademark registration for the mark PFIZER® since at least as early as August 24, 1948. Pfizer and/or its wholly-owned affiliates including Pfizer Products Inc. have registered PFIZER® as a trademark throughout the world. A list of Pfizer’s and its affiliates’ registrations of the PFIZER® trademark in numerous jurisdictions worldwide is attached to the Complaint as Annex 5.
The Respondent registered the disputed domain name <pfizerpharma.com> on January 9, 2019
5. Parties’ Contentions
The Complainant alleges that:
(1) The disputed domain name <pfizerpharma.com> is identical or confusingly similar to Complainant's PFIZER mark;
(2) The Complainant has never authorized the Respondent to use its mark for any purpose;
(3) The Respondent has no rights or legitimate interests in respect of the PFIZER mark, and that Respondent has registered and is using the disputed domain name in bad faith.
The Respondent communicated with the Center but did not file a formal reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate, paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant submits that the Respondent’s <pfizerpharma.com> domain name:
(1) merely adds the generic term “pharma” to Pfizer’s trademark PFIZER and disputed domain name <pfizerpharma.com>;
(2) is confusingly similar to Complainant’s own domain name <pfizer.com>; and
(3) is so clearly similar to Complainant’s PFIZER mark that it is likely to cause (and plainly is intended to cause, and in fact has caused) confusion among members of the public and others.
The Complainant adds that numerous UDRP decisions have held that incorporation of a Complainant’s trademark in a disputed domain name, even with the addition of a generic term such as “pharma,” is sufficient to establish confusing similarity “particularly where the term ‘pharma’ relates to the Complainant’s business”.
The Respondent had the opportunity to challenge the Complainant’s case but has not done so. The Panel is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant says that it is not affiliated in any way with Respondent “to the extent Respondent can even be identified—and has never authorized Respondent to register or use the subject domain name or the PFIZER® mark”.
The Complainant adds that the Respondent has no right or legitimate interest in the PFIZER® mark, or in the disputed domain name: “Upon information and belief, Respondent is not commonly known by the name ‘PFIZER’, or any variation thereof.”
The Panel is satisfied that the Complainant has made out an unrebutted prima facie case and has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant says that it is indisputable that the Respondent had knowledge of Complainant’s famous PFIZER® mark prior to the registration of the disputed domain name:
“…given Respondent’s fraudulent use of the subject domain name in impersonating Pfizer human resources employees in emails which purport to offer authentic employment opportunities at Pfizer…Respondent plainly has registered the disputed domain name <PFIZERPHARMA.COM> to trick the public, particularly job seekers, into believing that Respondent’s fraudulent conduct—including requests by human resources employees for personal information in response to what appears to be an authentic job offer—is legitimate. Such uses of a domain name to fraudulently impersonate a trademark owner’s employees have repeatedly been held to violate the Policy.”
The Complainant submits that it is apparent that Respondent has intentionally registered the disputed domain name:
“…explicitly for the purpose of impersonating Pfizer employees and making illegitimate and fraudulent employment offers to obtain individuals’ personal and banking information using Pfizer’s famous mark. Respondent accomplishes its fraudulent scheme by using the subject domain name in email addresses used to impersonate Pfizer employees in communications with prospective employees and job applicants. In connection with its fraudulent scheme, Respondent locates prospective applicants by finding their resumes on job searching platforms such as Indeed.com. Respondent then uses the email address associated with the subject domain name by impersonating fictitious Pfizer human resources employees … under Respondent’s fraudulent scheme, he uses the email addresses with the subject domain name to send a fraudulent job application and obtain the applicant’s personal information and signature on the application by return postage mail. To secure the individual’s banking information, Respondent uses the email addresses with the subject domain name to email a job offer which the victim signs, scans and returns via email. Respondent then sends via courier a fraudulent letter from Pfizer’s ‘Payment Department’ which includes a fraudulent check for the ‘new’ employee’s computer expenses. Consequently, Respondent obtains the victim’s personal and banking information, and the victim must pay for any fees resulting from the fraudulent check. Accordingly, there can be no doubt that Respondent is using emails incorporating and utilizing the subject domain name to fraudulently mislead third-parties in an effort to perpetrate fraud.”
The Complainant concludes by submitting that numerous UDRP panels have held that:
“the registration and use of a domain name in connection with a fraudulent scheme constitutes bad faith under the Policy. Respondent’s actions are intentional, willful and in bad faith, and were 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 mark.”
Again, it was open to the Respondent to challenge the Complainant’s case, but the Respondent has not done so.
In all the circumstances the Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use requirements of paragraph 4(a)(iii) of the Policy.
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, <pfizerpharma.com> be transferred to the Complainant.
Anthony R. Connerty
Date: March 26, 2019