WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Upjohn US 1 LLC v. Whois Privacy Protection Foundation / James Pastor
Case No. D2020-2479
1. The Parties
Complainant is Upjohn US 1 LLC, United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
Respondent is Whois Privacy Protection Foundation, Netherlands / James Pastor, United States.
2. The Domain Name and Registrar
The disputed domain name <vgrsingapore.net> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2020. On September 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 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 Complainant on October 5, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 5, 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 Respondent of the Complaint, and the proceedings commenced on October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 11, 2020.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on November 20, 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
Undisputed facts include the following. Complainant is a subsidiary of Pfizer, one of the world’s largest manufacturers of pharmaceuticals, with global operations in over 100 countries. Complainant, together with its affiliates and predecessors-in-interest (collectively, “Complainant”), owns rights to the mark VGR, which Complainant has used since 1998 in connection with the sale and distribution of its blockbuster VIAGRA medication. Complainant has several registered trademarks for the VGR mark, including in the United States, where Respondent lists an address of record. These include United States Registration No. 2827922 (registered March 30, 2004).
The disputed domain name <vgrsingapore.net> was registered on February 10, 2020. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to resolve to a website that offers for sale “our quality pills” for “international shipments around the world” under the name “Buy Viagra Singapore”. Medications listed by Respondent include various references to “Viagra” as well as to medications sold by competitors of Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that the (i) disputed domain name <vgrsingapore.net> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that its registered VGR mark is “well-known and famous throughout the world.” Complainant contends that Respondent has merely added the geographically descriptive term “Singapore,” which is likely to confuse prospective online consumers into thinking that the disputed domain name is affiliated with, or endorsed by Complainant for sales of Viagra through an international website.
Complainant further contends that Respondent has used the disputed domain name to set up a website meant to lure in customers looking for Complainant’s Viagra products, which are marketed and associated with the VGR mark, but that Respondent is instead selling what appears to be counterfeit products using marks from Complainant and Complainant’s competitors. Complainant contends that Respondent has no rights or legitimate interests in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a commercial website, when Respondent clearly knew of Complainant’s rights.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <vgrsingapore.net> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark VGR, and merely adds the geographical term “Singapore.”
Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words, including geographical term, does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); see also Pfizer Inc. v. Private Registration, WhoIsGuardService.com, WIPO Case No. D2015-1471 (transferring, inter alia <vgrsingapore.com>).
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the disputed domain name. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a commercial website that appears to offer, among others, items using marks owned by Complainant, but which is unaffiliated with Complainant or Complainant’s products and services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a URL associated with the disputed domain name to resolve to a website that offers for sale “our quality pills” for “international shipments around the world.” Medications listed by Respondent include various references to “Viagra” as well as to medications sold by competitors of Complainant.
Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Given the nature of the site content and the disputed domain name which incorporates Complainant’s VGR mark, and which advertises Complainant’s Viagra products, among others, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <vgrsingapore.net> be transferred.
Dated: November 27, 2020