WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vertex Pharmaceuticals Incorporated v. Uladzislau Niachayeu
Case No. D2019-2752
1. The Parties
The Complainant is Vertex Pharmaceuticals Incorporated, United States of America (“United States”) , represented by Sunstein Kann Murphy & Timbers LLP, United States of America.
The Respondent is Uladzislau Niachayeu, Belarus.
2. The Domain Name and Registrar
The disputed domain name <vertexsng.net> is registered with Nicenic International Group Co., Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2019. On November 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 November 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on December 18, 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 is a manufacturer of pharmaceutical products based in Boston, Massachusetts, United States. The Complainant is publicly traded on the NASDAQ exchange and is a member of the NASDAQ-100 Index.
The Complainant owns numerous registrations in jurisdictions throughout the world for the marks VERTEX and VERTEX and design including the United States trademark registration No. 2,704,913 (registered on April 8, 2003) and No. 2,578,974 (registered on June 11, 2002).
The disputed domain name was registered on September 3, 2018 and resolved to a website in Russian offering pharmaceutical products for sale and featuring the Complainant’s trademarks. At the time of the dispute, the disputed domain name does not resolve to any active website.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the Complainant’s trademark. Adding of meaningless “sng” letters does not preclude the confusing similarity.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is using the disputed domain to direct Internet traffic to its website in order to sell its own pharmaceutical products. The, Respondent’s website features a prominent mountain design around the word VERTEX, which is highly similar to the distinctive triangle design of the Complainant’s trademark. The Respondent’s use of the Complainant’s trademarks to sell pharmaceuticals is a deliberate attempt to take commercial advantage of the Complainant’s rights in these marks. Registration of the Complainant’s trademarks well preceded registration of the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks.
The disputed domain name was registered and is being used in bad faith. It is very likely that the Respondent had actual knowledge of the Complainant’s trademark rights prior to its registration of the disputed domain name. While using the disputed domain name the Respondent attempted to attract Internet users for commercial gain to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products on the Respondent’s website. The disputed domain name prevents the Complainant from using its trademarks under a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.net” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark VERTEX.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case letters “sng” are commonly perceived by Russian speaking users targeted by the Respondent as an abbreviation standing for “Sodrujestvo Nezavisimyh Gosudarstv” in Russian (Commonwealth of Independent States in English) meaning union of some former republics of the Union of Soviet Socialist Republics. The Panel finds that the addition of the “sng” letters in the present case would not prevent a finding of the confusing similarity.
Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has rights in its registered trademarks.
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, and noting the nature of the disputed domain name, no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
The disputed domain name used to redirect Internet users to a website with a logo similar to the Complainant’s trademarks and falsely claiming it is a website of an official dealer of the Complainant to make the Internet users believe that they actually access the website authorized or otherwise agreed by the Complainant. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).
According to section 2.8.1 of the WIPO Overview 3.0 resellers, distributors using a domain name containing complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.
The Panel finds that the Respondent failed to satisfy at least the second and the third above requirements selling drugs of another company and falsely claiming dealership status granted by the Complainant, and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide.
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to section 3.1 of the WIPO Overview 3.0 , bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy, provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In this regard, the Panel finds that at least the fourth of the above scenarios applies to the present case confirming the Respondent’s bad faith.
Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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 <vertexsng.net> be transferred to the Complainant.
Date: December 29, 2019