WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vertex Pharmaceuticals Incorporated v. Ramzan Arif, Vertex Medical (pvt) Ltd.
Case No. D2020-2334
1. The Parties
The Complainant is Vertex Pharmaceuticals Incorporated, United States of America (“United States”), represented by Sunstein LLP., United States.
The Respondent is Ramzan Arif, Vertex Medical (pvt) Ltd., Pakistan, represented by Cylaw Solutions, India.
2. The Domain Name and Registrar
The disputed domain name <vertexmedical.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2020. On September 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 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 14, 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 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2020. On October 5, 2020, the Respondent requested the extension of the due date for Response. The Center granted the extension of the due date for Response to October 18, 2020. The Respondent submitted its response on October 17, 2020.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 24, 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 is a corporation incorporated under the laws of the Commonwealth of Massachusetts, United States. It is a manufacturer of pharmaceutical products, publicly traded on the NASDAQ exchange and a member of the NASDAQ-100 Index. The Complainant’s cystic fibrosis drug, Orkambi, was reported in the media to be on target to generate sales of USD 1 billion in 2016. The Complainant has used the VERTEX mark in connection with pharmaceutical research since November 4, 1989 and in connection with pharmaceutical preparations since July 13, 1994.
According to a list prepared by the Complainant, it owns a considerable number of registered trademarks for the VERTEX mark in international classes 5 (pharmaceutical preparations) and 42 (pharmaceutical research) across some 16 territories worldwide, not including Pakistan, where the Respondent is based. For example, the Complainant owns United States registered trademark no. 1630448 for the word mark VERTEX, registered on January 1, 1991 in respect of pharmaceutical research in international class 42.
Mr. Ramzan Arif (“the Respondent individual”), has been a director of Vertex Medical (pvt) Ltd. (“the Respondent Company”), since 2017 and has worked with the Respondent Company since 2004, according to his sworn statement. A Dun & Bradstreet company profile and “company snapshot” for the Respondent Company states that it is part of the Medical Equipment & Supply Wholesalers Industry, has 100 employees and annual revenue of USD 6.39 million.
The history and origins of the Respondent Company may be followed via extensive dated documentation produced by the Respondent. The Respondent Company was incorporated with the Securities and Exchange Commission of Pakistan on July 7, 2009 but has its origins in a partnership formed in May 2000 named “Vertex Enterprises”. On June 8, 2000, said partnership was registered as a taxpayer for sales tax with the Federal Board of Revenue of the Government of Pakistan in the capacity of a distributor/exporter/importer. Said partnership was later registered with the Registrar of Firms for Lahore, Pakistan on August 30, 2001.
A partnership deed, which has not been produced, appears to have been entered into in respect of the said partnership on August 3, 2001. The Respondent Company’s CEO joined said partnership along with another party on December 28, 2004, whereupon a new partnership deed, referencing the older deed, was entered into. Said new partnership deed has been produced. It indicates that, as of December 28, 2004, the partnership carried on business relating to electro medical equipment, accessories, bulbs, disposables, surgical instruments, hospital supplies, and all other allied accessories and products.
As there is no practical difference between the Respondent Individual and the Respondent company for the purposes of the administrative proceeding, they will be collectively described as “the Respondent” where appropriate in the remainder of this Decision.
The disputed domain name was registered on July 8, 2006. Screenshot evidence of archived and current website content and other documentation indicates that the disputed domain name has been used in connection with the Respondent’s business, initially for email addresses, then from about 2008 for a “coming soon” website which listed the general email address for said business, and more recently, over about the last four years, for a fuller website describing the business of the Respondent Company.
5. Parties’ Contentions
The Parties contend as follows:
Identical or Confusingly Similar
The disputed domain name is comprised of the VERTEX mark and the word “medical”. VERTEX is an exact match for the Complainant’s mark and the word “medical” is highly related to the Complainant’s mark as it describes the field in which the Complainant’s goods and services are produced. Such additional word does not eliminate the similarity between the Complainant’s mark and the disputed domain name.
Rights or Legitimate Interests
The Complainant’s mark is highly distinctive as used in connection with goods and services in the medical field. It is not a word that a third party would legitimately choose unless seeking to create the impression of an association with the Complainant. Use of such term in the medical field is arbitrary and unique to the Complainant which has used the mark since 1989. A previous panel has concluded that the Complainant’s mark is well-known and distinctive (see Vertex Pharmaceuticals Incorporated v. Abdul Gafoor, Sunshine Cargo, WIPO Case No. D2015-0850).
Registered and Used in Bad Faith
The Respondent is engaged in active commercial use of the disputed domain name to sell medical equipment. Such field has been the Complainant’s core field of business since 1989. The use of the disputed domain name is likely to be an intentional attempt 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 products on the Respondent’s website. This is a clear indication of bad faith. The Respondent had either actual or constructive knowledge of the Complainant’s rights in its trademarks prior to the Respondent’s registration and use of the disputed domain name. The disputed domain name was registered years after the Complainant’s registered marks were granted worldwide. A simple trademark search would have revealed said marks and consequently the Respondent had constructive notice thereof.
The Complainant sent the Respondent a letter on February 18, 2020 detailing its rights in the VERTEX trademark and insisting that the Respondent cease use of said mark including in the disputed domain name. The Complainant sent a further letter reiterating such demands on June 29, 2020. It is clear that the Respondent received these letters as it responded on February 25, 2020 but otherwise took no further action. The Respondent has had actual notice of the Complainant’s rights since February 18, 2020 and yet has continued to use the disputed domain name, demonstrating that it is being used in bad faith. The disputed domain name also prevents the Complainant from using its trademark in a corresponding domain name and this likewise constitutes registration and use in bad faith.
The Respondent’s business was established two decades ago when the Internet was rarely available in Pakistan. The term “vertex” was adopted by the Respondent because it is a generic medical term and the firm dealt in electro-medical equipment. The Respondent has grown into a prominent company in Pakistan in the areas of endoscopy, operation theaters, cardiology, ward furniture, sterilization equipment, central gas systems and others. Such products mainly fall under international class 10 in respect of trademarks, whereas those of the Complainant mainly fall under international classes 5 and 42.
An Affidavit by the Respondent Individual confirms his employment with the Respondent since 2004. The disputed domain name was registered on July 8, 2006 as <vertexmedical.com> because the Respondent was already trading as Vertex Enterprises and dealing in medical products in Pakistan, prior to its later incorporation in 2009. The relative website has been in active use for the last three to four years although it was used before then to display a business email address. The Respondent has been commonly known by the disputed domain name since May 1, 2000, well before registration of the disputed domain name. The Complainant has no monopoly over the combination of words in the disputed domain name and it is fanciful to suggest otherwise. They are in wide use by numerous businesses (evidence provided) and a “Google” search for the words does not reference the Complainant, nor does the Complainant own a domain name containing these words.
In line with its origins, the Policy is designed to deal with cybersquatting and not disputes between parties with competing rights acting in good faith. The present dispute should be outside the scope of the Policy.
Identical or Confusingly Similar
The term “vertex” is generic and this defeats the claim of trademark rights even if the mark is the subject of an incontestable registration. It has been used for trademarks since as early as 1914. It has a well-defined dictionary definition in medical dictionaries. It does not exclusively belong to the Complainant and is used for businesses worldwide.
Rights or Legitimate Interests
The Respondent has rights or legitimate interests in the disputed domain name and does not need to show that such right is better than that of the Complainant. The Respondent is commonly known by the disputed domain name as demonstrated by its documentary evidence. The Respondent has been called “Vertex” since 2000, has dealt in medical products since then, and has been known as “Vertex Medical” since 2009. The Respondent’s name has been recognized online by various third parties including the Health Department of the Government of Sindh’s Environmental Impact Assessment report dated March 2019, company profiles on several websites including Dun & Bradstreet, and Minutes of the Medical Device Board meeting issued by the Ministry of National Health Services, Pakistan, further to a grant of an Establishment License to import medical devices.
The disputed domain name consists of two common dictionary words. “vertex” is a generic medical term meaning “the highest point; the topmost point of the vault of the skull; the crown of the head”. “Medical” is a broad category relating to the Respondent’s products. The Respondent was the first to use this unique combination. The Complainant has no exclusive rights to the use of said generic words and no standing in this proceeding. The Respondent’s use is protected under paragraph 4(c)(ii) of the Policy. The VERTEX mark is not highly distinctive, given it is a generic word defined in a medical dictionary. It was adopted in good faith by the Respondent and no license or permission from the Complainant is needed. The decision in Vertex Pharmaceuticals Incorporated v. Abdul Gafoor, Sunshine Cargo, supra, is not relevant as the domain name concerned was similar to the Complainant’s name and the Complainant owned a trademark in the Respondent’s jurisdiction. Here, the Complainant has no presence or active business in Pakistan even after 20 years of the Respondent’s business using the name “Vertex”.
Registered and Used in Bad Faith
The Complainant has provided no reason or explanation as to why or how the Respondent could have known of the Complainant or its asserted rights in the year 2000 or 2006. Actual knowledge must exist for a finding of bad faith. There is no place for the concept of constructive knowledge under the Policy. The Respondent was set up in 2000 and even recent invoices demonstrate the continuity of the business and its objectives. The Respondent has four different locations and around 100 employees. Details of such employees and of the Respondent are available online from a simple search.
By the date of registration of the disputed domain name, the “Vertex” brand already had significant goodwill attached for the Respondent. In any event, it is a generic term used in multiple companies. The initial partners took legal advice before adopting the “Vertex Enterprises” name in the context of medical products and no one in Pakistan was using such name in a similar field. The Respondent registered the disputed domain name for business purposes and used it in this context.
The Complainant has failed to provide an iota of evidence of the Respondent’s knowledge of the Complainant or its mark. No evidence has been provided as to the Complainant’s business, reputation, sales volumes, advertising, marketing, revenue, or any other facts which could establish that the Complainant and its mark was particularly well-known in Pakistan in either 2000 or 2006. Knowledge and targeting of a complainant can be proved inferentially but not merely from the ownership of a similar or identical mark or from a misplaced belief. The Complainant does not explain how the Respondent had actual or constructive knowledge in 2000, asserts that the Respondent should have carried out a trademark search without stating in which database, and states that the Complainant sent letters to the Respondent without providing any evidence thereof. The Respondent cannot recall any such correspondence but, had there been any, the Complainant would have prior knowledge of the Respondent’s rights and legitimate interests. The United States TESS database did not exist in 2000 and the Respondent could not have carried out an online search of the Complainant’s marks. The Complainant had no trademark registrations in Pakistan.
Reverse Domain Name Hijacking
There is no basis for this claim and the Complainant through its counsel should have known this before the Complaint was filed. The Complainant’s counsel should have appreciated that the Complaint could not succeed even on a rudimentary examination of the Policy. This Complaint was dead on arrival and likely would have been denied had there been no Response.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in its VERTEX registered trademark. The Respondent suggests that these rights are undermined due to the allegedly generic nature of the mark. However, as far as the Panel is concerned, the mark is ex facie valid in a number of jurisdictions. There is no evidence before the Panel that it has become generic. There is evidence that the word “vertex” is an anatomical term and a dictionary word. This does not ipso facto make the Complainant’s mark generic and, on the contrary, it appears reasonable to the Panel that a term describing “the crown of the head” can give rise to an arbitrary trademark when applied to pharmaceutical preparations or research. The Panel will however return to the dictionary word nature of the mark in its consideration of the second and third elements under the Policy.
Comparing the Complainant’s mark to the disputed domain name, it may be seen that the mark appears as the first element of the Second-Level Domain, together with the word “medical”. The Panel accepts the Complainant’s contention that the mark is recognizable in the disputed domain name and that the additional word “medical” does not alter that conclusion. The generic Top-Level Domain, in this case “.com”, is typically disregarded for the purposes of comparison with the relied-upon mark.
In these circumstances, the Panel finds that the Complainant has rights in a mark and that the disputed domain name is confusingly similar to such mark. The Complainant has therefore established the first element test.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.”
The essence of the Complainant’s case is that its mark is highly distinctive and is not a word that a third party would legitimately choose unless seeking to create the impression of an association with the Complainant. The Complainant goes on to say that use of such a term for goods and services in the medical field is arbitrary and unique to the Complainant. The latter assertion is plainly not borne out by the evidence, which shows that the word “vertex” is an anatomical term and thus is reasonably likely to be used in connection with medicine and related goods or services on a frequent basis. The evidence also indicates that multiple businesses operating in the medical field in a variety of different countries have selected the term for their respective business names and domain names.
The focus of the Respondent’s case is on paragraph 4(c)(ii) of the Policy, namely its assertion that it has been commonly known by the disputed domain name. In a very detailed Response, accompanied by over two hundred pages of supportive documentary evidence, the Respondent sets out the history of its company and how it came to be named “Vertex Medical”. The evidence shows that a partnership was established in 2000 named “Vertex Enterprises” and that this was subsequently incorporated as “Vertex Medical” in 2009. Between those two points, the disputed domain name was registered and used in connection with the Respondent’s business.
It has previously been noted in a case under the Policy that proof of mere registration of a business name, without more, would not be enough to demonstrate that a respondent is commonly known by a corresponding domain name in terms of paragraph 4(c)(ii) of the Policy. Some actual use of the name is required pre-dating the registration of the domain name. The words “commonly known by” must be read as meaning commonly known by at least some other people than those responsible for the registration of the entity (see Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672). Here, such use at least of the material word “vertex” is established according to those requirements. It evidently formed part of the Respondent’s business name some six years before the disputed domain name was registered. Use of the same name in sales and income tax records and in the partnership documentation relative to the 2004 amendment is also established on the present record. This means that the Respondent’s predecessor entity was commonly known, as such, by people other than those responsible for the entity’s registration.
In addition to the evidence that the Respondent business was commonly known by a material element of the disputed domain name for some years before it was registered, the Respondent also provides a reasonable explanation for the selection of the name itself. “Vertex” is an anatomical term which also has the meaning “summit” in some definitions and in the absence of any contrary evidence seems to the Panel to be entirely plausible as a choice for the Respondent’s business name. Importantly, there is no evidence before the Panel suggesting that in adopting this name, the Respondent was seeking to create the impression of an association with the Complainant. The Complainant has provided no information about the extent of its global reputation in 2000, or in 2006 when the disputed domain name was registered, and/or whether this extended to Pakistan or whether it had a substantial, globally accessible Internet presence at either of those dates. On the latter topic, the Respondent reasonably points out that the commercial Internet was in its infancy in 2000, with particularly limited penetration in Pakistan at that stage, such that an online search for the Complainant or its marks might have been less feasible. In these circumstances, the Respondent’s explanation of how it selected its business name, and subsequently the disputed domain name, takes on greater significance for the present analysis, particularly in light of the fact that the Complainant does not appear to have any prior trademark registration or indeed any presence in Pakistan.
The Complainant relies on the previous case of Vertex Pharmaceuticals Incorporated v. Abdul Gafoor, Sunshine Cargo, supra. The Panel agrees with the Respondent that this case has significant differences from the present facts and circumstances. In the first place, the Complainant had a trademark registration in Singapore, where the respondent in that case was based. In the second place, the domain name concerned was <vertexpharmacy.com>, and the word “pharmacy” was found to be closely related to the products for which the Complainant’s mark was registered, in that pharmaceutical products are dispensed from a pharmacy. In the third place, the respondent in that case merely argued that the Complainant’s claims were false and the panel recorded that no effort was made by the respondent to explain why it chose a domain name which incorporated, as a dominant part, the name and mark of a well-established listed pharmaceutical company. While it would probably not have affected the outcome of that case, given the use to which the domain name concerned was being put, it should also nevertheless be noted that the panel did not appear to have had before it the fact that the word “vertex” is an anatomical term and dictionary word that is in use in business names by other parties unrelated to the Complainant.
In the absence of any challenge by the Complainant to the substantial body of evidence put forward by the Respondent in the present case, the Panel finds on the balance of probabilities that the Respondent has indeed been commonly known by the disputed domain name (or at least the most significant element thereof, the name “Vertex”) even if it has acquired no corresponding trademark or service mark rights. Furthermore, there is adequate evidence indicating that before any notice to the Respondent of the dispute, the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services conform to paragraph 4(c)(i) of the Policy.
In these circumstances, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint therefore fails.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
It is not strictly necessary for the Panel to make an assessment regarding the third element of the Policy, the Complaint having already failed. However, the Panel notes for convenience that the main aspects of its analysis above apply with equal force and effect to the question of registration and use in bad faith. The Complainant put forward no evidence suggesting that the Respondent might have had knowledge of the Complainant or its rights as at the date of creation of the Respondent’s partnership in 2000 or likewise as at the date of registration of the disputed domain name. Furthermore, a plausible reason has been advanced by the Respondent for the apparent coincidence between the Complainant’s mark, the Respondent’s business name and ultimately the disputed domain name.
The Complainant seeks to rely upon the concept of constructive notice to demonstrate prior knowledge of its rights on the part of the Respondent. As is noted in section 3.2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) panels have typically applied this concept in limited circumstances, notably where the parties are both located in the United States and the complainant has obtained a federal trademark registration pre-dating the relevant domain name registration. This does not apply in the present case as the Respondent is based in Pakistan. The section goes on to note that application of the concept of constructive notice may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark. These are matters on which the Panel in the present case has no information pertaining to the position as at the date of registration of the disputed domain name or the date of founding of the Respondent’s partnership.
Finally, the Panel adds that it has some sympathy with the Respondent’s contention that this case is not entirely suitable for the Policy as it appears to deal with the issue of allegedly competing legitimate rights belonging to parties in different jurisdictions. The Parties are free to take this matter to a more suitable forum for resolution. Proceedings in a court of competent jurisdiction would be likely to provide the Parties with the opportunity to conduct a fuller inquiry into the facts and circumstances of the case with the benefit of discovery procedures, oral testimony, and cross-examination.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules requires the Panel to give consideration to whether the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain name holder. Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
At first sight, the terms of the Complaint might suggest that it was brought in good faith. The Complainant appears to be a substantial entity with significant global rights and there is a coincidence between the Complainant’s mark and the first element of the disputed domain name which seems to call for an explanation. Nevertheless, the Panel is particularly troubled by the fact that the Complainant failed to mention that “vertex” is an anatomical term and a dictionary word. The Complainant stated as a fact that the use of this term with respect to goods and services in the medical field is unique to the Complainant, which is both incorrect and highly misleading.
Furthermore, at least at the point where the Complainant became aware of the Respondent’s identity, it should have investigated the factual background further with a view to demonstrating a lack of legitimate interests on the Respondent’s part. It should also have considered the position specifically with reference to the date of registration of the disputed domain name. There is no suggestion that the Complainant made any such investigations before proceeding with the Amended Complaint, thus putting the Respondent to considerable inconvenience and expense in answering the same where the matter could conceivably have been addressed (or at least the issues narrowed) by way of correspondence between the Parties outside the context of the Policy.
The Panel is also troubled by the Complainant’s submission regarding the alleged correspondence which is said to have passed between the Parties. The Complainant submits that this included a reply from the Respondent, yet none of this correspondence has been produced. Although the Respondent is uncertain as to whether it received any communication from the Complainant, and therefore whether it replied to this, given the unequivocal nature of the Response it is reasonable to infer that the Respondent would have forcibly rejected the Complainant’s claims at that stage. However, the Panel does not know what actually passed between the Parties here and it was the Complainant’s responsibility to produce the documentation concerned because it specifically sought to rely upon it.
The nature of the incorrect and misleading submission regarding the use of “vertex” in a medical context coupled with an apparent failure to investigate the Respondent and a failure to put forward documentary evidence which was relied upon in submissions is all the more concerning given that the Complainant is represented by counsel.
In all of these circumstances, the Panel find that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: November 6, 2020