WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. and Pfizer Health AB v. sheng yao
Case No. D2020-2952
1. The Parties
The Complainants are Pfizer Inc. and Pfizer Health AB, United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
The Respondent is sheng yao, China.
2. The Domain Name and Registrar
The Disputed Domain Name <pfizergenotropin.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2020. On November 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 9, 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 November 10, 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 November 11, 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 December 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 19, 2021. 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 one of the world’s largest pharmaceutical manufacturers and sellers and maintains global operations in more than 125 countries. Pfizer owns numerous trademark registrations for the trademark PFIZER, among others:
- PFIZER, United States Trademark Registration No. 626,088 registered on May 1, 1956;
- PFIZER, United States Trademark Registration No. 2,951,026 registered on May 17, 2005
The Complainant Pfizer Health AB (“Pfizer Health AB,” and, together with Pfizer, “Complainants”) is a wholly owned subsidiary of Pfizer and owns numerous trademark registrations for the trademark GENOTROPIN, among others:
- GENOTROPIN, United States Trademark Registration No. 2,041,062 registered on February 25, 1997.
The Complainants and their affiliates use the PFIZER and GENOTROPIN trademarks in numerous countries throughout the world in connection with the sale of widely prescribed human growth hormone pharmaceutical products.
In addition, the Complainants operates websites at various domain names that contain the PFIZER and GENOTROPIN trademarks, such as <pfizer.com> and <genotropin.com>, which are used to provide information about the Complainants and their products, programs and services.
The Respondent registered the Disputed Domain Name <pfizergenotropin.com> on November 30, 2019. The Disputed Domain Name resolves to a website, which advertises and sells apparently counterfeit GENOTROPIN products as well as third party products that compete with the Complainant’s products.
5. Parties’ Contentions
The Complainants’ contentions can be summarized as follows:
Identical or confusingly similar
The Complainants contend that the Disputed Domain Name <pfizergenotropin.com> combines the Complainants’ well-known trademarks PFIZER and GENOTROPIN. In addition, the Disputed Domain Name is confusingly similar to the Complainants domain names <pfizer.com> and <genotropin.com>.
The Complainants further state that the Disputed Domain Name is clearly similar to the Complainants’ PFIZER and GENOTROPIN trademarks that it is likely to cause (and plainly is intended to cause) confusion among members of the Internet users.
Finally, the Complainants contend that the Respondent’s website resolves to a webpage that mimics the Complainant’s website at “www.genotropin.com”, using graphics and imagery blatantly copied from the Complainant’s website. Thus, the Respondent’s website was designed to give users the false impression that it is authorized by the Complainants and is intended to capitalize on the famous PFIZER and GENOTROPIN trademarks.
Rights or legitimate interests
The Complainants argue that the Respondent is not affiliated in any way with the Complainants and has never been authorized by the Complainants to register or use the Disputed Domain Name, the PFIZER trademark or the GENOTROPIN trademark. In addition, the Respondent has no rights or legitimate interests in the PFIZER trademark, the GENOTROPIN trademark, or the Disputed Domain Name.
The Complainants further contends that the Respondent is not commonly known by the name “PFIZER,” “PFIZERGENOTROPIN,” “GENOTROPIN,” or any variation thereof.
Finally, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. To the contrary, the Respondent has intentionally registered the Disputed Domain Name for the purpose of misleading users and making an illegitimate and fraudulent impression that it is authorized by the Complainants in order to promote and sell purported human growth hormone medicines that compete with authentic GENOTROPIN medicine.
Registration and use in bad faith
The Complainants contend that due to the renown of the trademarks PFIZER and GENOTROPIN, it is inconceivable that the Respondent might have registered a domain name incorporating the trademarks without knowing of them. Accordingly, the Respondent registered the Disputed Domain Name in order to take advantage of the Complainants’ reputation and their trademarks.
The Complainants further allege that here is no doubt that the Respondent knew of the Complainants’ rights in their PFIZER and GENOTROPIN trademarks prior to registering the Disputed Domain Name. Since the Disputed Domain Name not only incorporate those trademarks, but it resolves to a website featuring the GENOTROPIN trademark (and the Complainants GENOTROPIN logo at the top of each page), so as to attract and mislead Internet users who are searching for information about the Complainants’ products.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Name:
“(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights;
(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 Complainants have trademark rights over the terms PFIZER and GENOTROPIN.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <pfizergenotropin.com> is confusingly similar to the Complainants’ trademarks PFIZER and GENOTROPIN. The Disputed Domain Name wholly incorporates the Complainants’ trademarks as its only distinctive element.
Furthermore, the Disputed Domain Name contains the Complainants’ trademarks PFIZER and GENOTROPIN in their entirety; the addition of the generic Top-Level Domian (“gTLD”) “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, the Panel finds that the Complainants have satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
“(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 at issue.”
There is no evidence of the existence of any of those rights or legitimate interests. The Complainants have not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademarks in the Disputed Domain Name. The Complainants have prior rights in the trademarks, which predate the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not known by the Disputed Domain Name.
In addition, the Respondent is using the Disputed Domain Name to promote and sell purported human growth hormone medicines that compete with authentic GENOTROPIN medicine with the Complainants’ logo.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainants’ contentions.
As such, the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainants have used its trademarks long before the Disputed Domain Name was registered.
The Complainants’ trademarks are well-known as it has been recognized by previous decisions under the Policy (See, 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; and Pfizer Inc. v. Sarthak Kapoor, WIPO Case No. D2019-0292).
In light of this, the Respondent had evidently knowledge of the Complainants’ PFIZER and GENOTROPIN trademarks when it registered the Disputed Domain Name. The use of the GENOTROPIN logo and the pictures of the GENOTROPIN medicine in the website linked to the Disputed Domain Name is evidence of this.
The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainants’ trademarks when registering the Disputed Domain Name and it has intentionally created likelihood confusion with the Complainants’ trademarks in order to attract Internet users for his own commercial gain, as required by paragraph 4(b)(iv) of the Policy.
In the case at hand, in view of the Respondent’s registration of a domain name confusingly similar to the Complainant’s well known trademarks, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint, the Panel finds that the Respondent’s lack of use of the Disputed Domain Name also amounts to bad faith.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and using the Disputed Domain Name 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 Name <pfizergenotropin.com> be transferred to the Complainants.
Pablo A. Palazzi
Date: February 2, 2020.