WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Whois Agent, Domain Protection Services, Inc. / Justin Shattuck, Ahmed John, Private and Van Zyl, Private
Case No. D2020-2621
1. The Parties
The Complainant is Pfizer Inc., United States of America (“United States” or “US”), represented by Arnold & Porter Kaye Scholer LLP, United States.
The Respondents are Whois Agent, Domain Protection Services, Inc., United States / Justin Shattuck, United States, Ahmed John, Private, South Africa, and Van Zyl, Private, South Africa.
2. The Domain Names and Registrars
The disputed domain names <pfizerbv.com> and <pfizersupply.com> are registered with Tucows Inc.; the disputed domain name <pfiizer.com> is registered with Name.com, Inc. (Name.com LLC).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2020. On October 8, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 8 and 9, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names, which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint. The Complainant filed an amended Complaint on October 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 Respondents of the Complaint, and the proceedings commenced on October 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2020. On October 28, 2020, the Center received an email communication from the administrative/technical contact of the dispute domain names <pfizerbv.com> and <pfizersupply.com>, however the Center did not receive any communication from the registrant of the latter disputed domain names. On November 20, 2020, the Center received an informal email communication from the Respondent, Justin Shattuck, but none of the Respondents submitted a formal response. Accordingly, the Center informed the Parties that is was proceeding to panel appointment on November 26, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on November 27, 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 US-based multinational pharmaceutical company with operations in more than 150 countries, which develops, manufactures and markets prescription medicines and vaccines. The Complainant has been known by and has used the PFIZER mark for over 150 years (since 1849), owning numerous registrations for this mark in many countries around the world. Of relevance to this proceeding, the Complainant owns several trademark registrations in the United States for the PFIZER mark, the earliest of which was issued to registration on May 1, 1956 (Registration No. 626088), and, directly or through its wholly owned affiliates, have registered PFIZER (both in plain text and with a logo) as a trademark in numerous jurisdictions worldwide (collectively the “PFIZER mark”). The well-known character of the PFIZER mark has been recognized in prior UDRP decisions.1
The Complainant also owns the domain name <pfizer.com> (registered on April 28, 1992), which is used in connection with its official website providing information about its company and products, as well as for its employees’ email addresses, including for communications with vendors, customers, and other external third parties.
The disputed domain name <pfiizer.com> was registered on December 19, 2017, the disputed domain name <pfizerbv.com> was registered on September 15, 2020, and the disputed domain name <pfzersupply.com> was registered on September 17, 2020 (collectively “the disputed domain names”). The disputed domain names are currently inactive resolving to pages with Internet browser error messages. The disputed domain names <pfiizer.com> and <pfizerbv.com> were used for fraudulent email purposes.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The disputed domain name <pfiizer.com> merely adds the letter “i” to the PFIZER mark, creating the term “pfiizer” which is virtually identical to the domain name <pfizer.com> and the PFIZER mark, being a common or obvious misspelling of this mark and a clear typosquatting case. The disputed domain name <pfizerbv.com> merely adds the generic term “bv” (meaning “besloten vennootschap” or “private limited company” in Dutch language), and the disputed domain name <pfizersupply.com> merely adds the generic term “supply” to the PFIZER mark, being both disputed domain names confusingly similar to this mark.
The Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the names “pfizer”, “pfiizer”, “pfizerbv”, “pfizersupply” or any variation thereof, is not affiliated in any way with the Complainant, and is not using the disputed domain names in connection with any bona fide offering of goods or services. The disputed domain names are used in connection with a fraudulent scheme designed for phishing, misleading third parties, and soliciting payments.
Due to its well-known character, the PFIZER mark is commonly preyed upon by cybersquatters. The disputed domain names have been registered and used by various persons acting together in connection with a phishing scheme seeking to defraud the Complainant’s business partners. The Respondent has tried to trade on the PFIZER mark reputation impersonating the Complainant in a fraudulent scheme apparently intended to dupe the Complainant’s vendors and business partners into sending payments to the Respondent. Various emails configured over the disputed domain name <pfiizer.com> were sent requesting their recipients to send quotations to email addresses connected to the disputed domain names <pfizerbv.com> and <pfzersupply.com>.
Given the international fame of the PFIZER mark, it is inconceivable that the Respondent did not know about it when registering the disputed domain names. The disputed domain names were registered and have been used targeting the reputed PFIZER mark with opportunistic bad faith, in connection with a fraudulent phishing scheme. Furthermore, typosquatting in relation to the disputed domain name <pfiizer.com> is in itself is a clear evidence of bad faith, intentionally trying to exploit typing and similar errors made by Internet users seeking to access the Complainant’s official webpage. The 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 mark and its exclusive rights to use and license this trademark.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position and requests the transfer of the disputed domain names.
On November 20, 2020, the Center received an informal email communication from the Respondent, Justin Shattuck, reproduced below:
“I've yet to have anything addressed to me as a concern. Could you please reach out to me directly versus attaching me to an email with other recipients with no nature of knowing me. Ideally, you'd leverage BCC.”
None of the Respondents submitted a formal response.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Preliminary Issue: Complaint Consolidated against Multiple Respondents
The Panel considers that the circumstances of this case indicate that the disputed domain names are subject to common control. Particularly, according to the evidence provided by the Complainant, the disputed domain name <pfiizer.com> has been used for sending emails where email addresses connected to the disputed domain names <pfizerbv.com> and <pfzersupply.com> were included. Additionally, technical settings of the disputed domain names are similar (including IP address, IP location and ASN), and the registration dates of the disputed domain names <pfizerbv.com> and <pfzersupply.com> are close in time.
Therefore, the Panel considers that the consolidation is appropriate, fair and equitable to all parties in accordance with the Policy and the Rules. See section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Respondents will hereinafter be collectively referred to as “the Respondent”.
B. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Furthermore, a domain name consisting of a common, obvious, or intentional misspelling of a trademark, containing sufficiently recognizable aspects of that mark, is considered confusingly similar to the relevant mark for the purposes of the first element, and employing a misspelling in this way normally signals an intention to confuse users seeking or expecting the complainant. See sections 1.7, 1.8, and 1.9, WIPO Overview 3.0.
It is further to be noted that the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered trademark PFIZER, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation acquired through its use of the PFIZER mark over many years (since 1849). The disputed domain names incorporate this mark in its entirety followed by the letters “bv”, the term “supply” or duplicating the letter “i” in the mark, which may be considered a common misspelling that may easily go unnoticed not avoiding the direct perception of the mark. The Complainant’s trademark PFIZER is recognizable in the disputed domain names, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
C. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain names, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain names in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain names.
A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain names incorporate the Complainant’s trademark in its entirety followed by the letters “bv” (normal abbreviation for “private limited company” in Dutch language), the term “supply” or with a sole common misspelling (duplicating the letter “i” form the mark PFIZER). The Panel considers that this common misspelling points to an intention to confuse Internet users seeking for or expecting the Complainant, and that the addition of the letters “bv” or the word “supply” refer to terms connected to the Complainant’s activity as a worldwide supplier of prescriptions medicines and vaccines or its company operating, among others, in the Dutch market. Therefore, the disputed domain names denote a risk of implied affiliation and confusion.
The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the disputed domain names, not being authorized by the Complainant to use its PFIZER mark, and that the disputed domain names have been used in connection with a fraudulent scheme designed for phishing, misleading third parties, which cannot be considered a legitimate interest.
The Panel further notes that the Respondent’s names provided in the registration of the disputed domain names were concealed under a privacy registration service, and have no resemblance with the term “pfizer” or the terms corresponding to the disputed domain names “pfiizer”, “pfizerbv”, and “pfizersupply”.
Furthermore, the Panel considers remarkable that the disputed domain names are inactive resolving to pages with Internet browser error messages and that the Respondent has chosen not to reply to the Complaint. The Panel has consulted the Internet archive Wayback Machine in connection to the disputed domain names, finding, since their registration, only one relevant capture related to the disputed domain name <pfiizer.com> (dated August 4, 2018), which only includes a browser error message.
All the above-mentioned circumstances lead the Panel to conclude that nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the centennial existence and use of the PFIZER mark, as well as its extensive presence over the Internet, its use internationally and its well-known character worldwide, which has been recognized by previous decisions under the Policy.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain names: (i) the disputed domain names incorporate the Complainant’s trademark PFIZER in its entirety, followed by letters or terms (“bv” or “supply”) that may refer to the Complainant’s company form, its business or activity, or a sole common misspelling (duplicating the letter “i” within the mark), which enhances the intrinsic likelihood of confusion and affiliation; (ii) the Complainant’s trademark is well-known worldwide and the Complainant operates internationally, in its home country (United States) and in South Africa (where the Respondent is apparently located according to the Registrar verification); (iii) according to the evidence provided by the Complainant, the disputed domain names have been used for sending emails impersonating the Complainant’s employees in connection to with a fraudulent phishing scheme; (iv) the Respondent used a privacy registration service, various names and addresses; and (v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain names and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain names were registered and are being used targeting the PFIZER mark in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant by intentionally misleading third parties using the disputed domain names in a phishing scam. Furthermore, the Panel considers that the Respondent has been engaged in a bad faith pattern of conduct in registering various domain names incorporating the PFIZER mark (namely the disputed domain names), targeting this mark for the same purpose. See section 3.2.1, WIPO Overview 3.0.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain names have been registered and are 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 disputed domain names <pfiizer.com>, <pfizerbv.com>, and <pfizersupply.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: December 8, 2020
1 See Pfizer Inc. v. WhoisGuard, Inc. / Susan Watson, WIPO Case No. DC02019-019; Pfizer Inc. v. Domain Maybe for Sale c/o Dynadot, WIPO Case No. D2019-2732; Pfizer Inc. v. Domains By Proxy, LLC / Gabriel Guzman Sanchez, Hosting Titan, S.A. de C.V., WIPO Case No. D2019-1706; Pfizer Inc. v. Sarthak Kapoor, WIPO Case No. D2019-0292; Pfizer Inc. v. Dale Leach, WIPO Case No. D2017-2358; Pfizer Inc. v. Mau Lio, WIPO Case No. D2017-0242; Pfizer Inc. v. Registration Private, Domains By Proxy, LLC / Jenny Tran, WIPO Case. No. D2016-2067.