WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Super Privacy Service LTD c/o Dynadot / bilal bal
Case No. D2020-2111
1. The Parties
The Complainant is Pfizer Inc., United States of America (“U.S.”), represented by Arnold & Porter Kaye Scholer LLP, U.S.
The Respondent is Super Privacy Service LTD c/o Dynadot, U.S. / bilal bal, Turkey.
2. The Domain Name and Registrar
The disputed domain name <raylumisdigitalcompanion.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2020. On August 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 11, 2020, 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 August 31, 2020, 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 September 1, 2020.
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 September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2020.
The Center’s email of Notification of the Complaint was sent to an additional email address of the Respondent on October 28, 2020, and an additional five day period (i.e., through November 7, 2020) was granted to the Respondent by the Center to indicate whether it would like to participate in the proceeding. No email communication was received from the Respondent.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 17, 2020. 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 with global operations in more than 125 countries. The Complainant discovers, develops, manufactures and markets leading prescriptions medicines.
Pfizer and its affiliates own numerous trademark registrations for the mark RAYLUMIS including in Australia (registered on February 5, 2019 - Reg. No. 1987341) and the European Union (registered on January 24, 2018 - Reg. No. 017264805).
The above-mentioned trademarks are hereinafter referred to as the “Trademark”.
On June 3, 2020, the Complainant filed a U.S. trademark application for RAYLUMIS DIGITAL COMPANION (U.S. Serial No. 88/945,808).
The above-mentioned trademark application is hereinafter referred to as the “Application”.
The Domain Name was registered on June 6, 2020. At the time of filing of the Complaint, the Domain Name resolved to the website “www.dan.com” (the “Website”). On the Website, the Domain Name was offered for sale.
5. Parties’ Contentions
The Domain Name is confusingly similar to the Trademark and identical to the Application. The Trademark consists of a coined and fanciful term, having no denotative meaning. The Domain Name consists entirely of the Trademark, appending only the common descriptors “digital” and “companion”. The addition of these common words does not distinguish the Domain Name, they are simply descriptive elements which are added to the Trademark. The Domain Name is identical to the Application. Accordingly, the Domain Name is identical to the Application and confusingly similar to the Trademark.
The Respondent has no right or legitimate interest in the Domain Name. The Respondent is not affiliated in any way with the Complainant. The Complainant has never authorized to register or use the Domain Name, the Trademark or the Application. The Respondent is not commonly known by the name “raylumis” or any variation thereof. As the Domain Name was registered only three days after the Complainant filed the Application, the Respondent must have had knowledge of the Application prior to the registration of the Domain Name. The Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. The Respondent has intentionally registered the Domain Name explicitly for the purpose of engaging in opportunistic cybersquatting as the Domain Name is offered for sale for USD 990.
The Domain Name is registered and is being used in bad faith. Given that the Respondent registered the Domain Name three days after the Complainant filed the Application, there is strong evidence to suggest that the Respondent knew of the Complainant’s Trademark and Application. Therefore, the Respondent registered the Domain Name in bad faith. The Respondent’s immediate attempt to sell the Domain Name for a price obviously in excess of the Respondent’s own registration costs demonstrates, on its own, use of the registration in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
It is not disputed that the Complainant has rights in the Trademark. A pending trademark application, like the Application, would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i), see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4.
As set out in WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the element “raylumis”, which is identical to the Trademark, and is accompanied by the descriptive words “digital” and “companion” as a suffix. The addition of these descriptive words does not avoid a finding of confusing similarity for purposes of the first element. See WIPO Overview 3.0, section 1.8 in which it is set out that if 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. See, e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388.
In addition, with regard to the suffix “.com” (which indicates that the Domain Name is registered in the “.com” generic Top-Level Domain (“gTLD”)), this suffix does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; the suffix is a necessary component of a domain name and does not give any distinctiveness in this particular matter (see, e.g. A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / firstname.lastname@example.org, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457).
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence provided by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence submitted by the Parties that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not appear to be affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known as “raylumis” or “raylumis digital companion”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever been permitted in any way by the Complainant to register or use the Trademark or Application, or to apply for or use any domain name incorporating either of these.
The Respondent has not made any demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services, but is rather offering the Domain Name for sale for an amount well in excess of the presumable costs of registration and maintenance of the Domain Name, which cannot be considered as bona fide use of the Domain Name.
Consequently, the Panel finds it established that the Respondent has no rights or legitimate interests in the Domain Name.
Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no formal response was filed by the Respondent.
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
Lacking a Response, the Panel finds that the Respondent must have been aware of the Complainant, its Trademark and the Application when he registered the Domain Name only three days after the Application, which is identical to the Domain Name, was filed by the Complainant. It will be difficult to imagine that the Respondent would have acted in good faith when registering the Domain Name which includes the Trademark as distinctive element. This is emphasized by the fact that Domain Name is identical to the Application.
At the time of filing the Complaint, the Domain Name redirected to the Website on which the Domain Name was offered for sale for USD 990. In the opinion of the Panel, this suggests that the Respondent registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.
This is evidence of registration in bad faith under Policy paragraph 4(b)(i). The Respondent’s offer to sell the Domain Name in excess of any out-of-pocket costs directly related to the Domain Name leads to a finding of use of the Domain Name in bad faith. See, e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.
Finally, although the previously mentioned lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.
Therefore, the Panel finds that the Respondent uses the Domain Name in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <raylumisdigitalcompanion.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: December 1, 2020