WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Registration Private, Domains By Proxy, LLC / Juan Beltran
Case No. D2021-0094
1. The Parties
The Complainant is Pfizer Inc., United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Juan Beltran, Mexico.
2. The Domain Name and Registrar
The disputed domain name <pfizermx.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2021. On January 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 14, 2021, 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 January 20, 2021 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 January 21, 2021.
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 January 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2021.
The Center appointed Gregor Vos as the sole panelist in this matter on March 4, 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 is one of the world’s largest biopharmaceutical manufacturers and sellers and maintains global operations in more than 125 countries. The Complainant and/or its wholly-owned subsidiary Pfizer-Products Inc. own numerous trademark registrations for the trademark PFIZER, inter alia United States Trademark Registrations Nos. 626088 (registered on May 1, 1956), 2951026 (registered on May 17, 2005), 3125531 (registered on August 8, 2006), 3932037 (registered on March 15, 2011), 4245996 (registered on November 20, 2012), and 5082880 (registered on November 15, 2016).
The Domain Name was registered on December 28, 2020 by the Respondent and it currently resolves to a pay-per-click (PPC) website displaying links related to the Complainant’s services. According to the evidence in the Complaint, it used to resolve to a website that offered the Complainant’s COVID-19 vaccine for sale.
Further, it is undisputed that the Complainant is the holder of the domain name <pfizer.com>, which the Complainant has used since 1996 to host a website to communicate with the public about the company Pfizer and its products.
5. Parties’ Contentions
With the complaint, the Complainant seeks that the Domain Name is transferred to the Complainant. The complaint is based on the following factual and legal grounds: the Domain Name is identical of confusingly similar to the trademark PFIZER of the Complainant, the Respondent has no rights or legitimate interests in the Domain Name and the Domain Name has been registered and is being used in bad faith and in violation of applicable laws regarding intellectual property.
Firstly, according to the Complainant, the Domain Name is identical or confusingly similar to its distinctive and famous trademark PFIZER. The Domain Name merely adds the geographic descriptor “mx” (the country code for Mexico) to the trademark PFIZER and the domain name <pfizer.com>. The Domain Name is confusingly similar to the Complainant’s domain name <pfizer.com> and the Domain Name is likely to cause, and intended to cause, confusion among members of the public and others. According to the Complainant, a domain name incorporating the entirety or dominant feature of the relevant mark – even with the addition of other terms – is sufficient to establish confusing similarity, including whether the added term is merely geographically descriptive.
Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name. The Complainant is not affiliated with the Respondent and has never authorized the Respondent to register or use the Domain Name or the trademark PFIZER. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. According to the Complainant, the Respondent has intentionally registered the Domain Name for the purpose of misleading users and making an illegitimate and fraudulent impression that the Respondent’s website and products are authorized by the Complainant. This conclusion would follow from the Respondent’s use of the trademark PFIZER, the mirroring of the Complainant’s website on “www.pfizer.com”, the creation of a likelihood of confusion by suggesting to consumers that the Domain Name relates to the Complainant’s activities and services in the United States, and the fact that the Respondent falsely purports to offer the Complainant’s recently developed COVID-19 vaccine for sale.
Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. This would follow from the international fame of the trademark PFIZER, which renders it inconceivable that the Respondent has registered the Domain Name without knowledge of the trademark PFIZER, which leads to opportunistic bad faith under the Policy. This registration in bad faith would further be illustrated by the intentional copying of the Complainant’s website design, content and images. According to the Complainant, the Respondent has registered and is using the Domain Name intentionally to misdirect and divert customers looking for information about the Complainant, its trademark PFIZER and its COVID-19 vaccine, to a for-profit website that offers apparent counterfeits of the COVID-19 vaccine. This would create a likelihood of confusion with the Complainant’s trademark PFIZER as to the source, sponsorship, affiliation, or endorsement of the website to which the Domain Name resolves, and the nonaffiliated products sold on those websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations.
For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Domain Name is identical or confusingly similar to a trademark or a 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.
Only if all three elements have been fulfilled, the Panel is able to grant the remedies requested by the Complainant. The Panel will deal with each of the requirements in turn.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of the trademark PFIZER, as can be seen from the list of active trademark registrations (Annex 7). Consequently, the Panel finds that the Complainant has proven that it has right in the trademark PFIZER.
With regard to the assessment of identity or confusing similarity of the Domain Name with the trademark PFIZER, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s trademark PFIZER and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark PFIZER. 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 disputed domain name, the disputed domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (WIPO Overview 3.0, section 1.7). Further, where 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 (WIPO Overview 3.0, section 1.8). This is confirmed in earlier Panel decisions, where the mere addition of a geographical term does not detract from the confusing similarity of the disputed domain name to the relevant trademark (BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284 (<bhpbillitonusa.com>); Philip Morris Brands Sàrl v. Registration Private, Domains By Proxy, LLC / Gabriel Guzman Sanchez, Hosting Titan, S.A. de C.V., WIPO Case No. D2019-2335 (<pmi-mx.com>)).
In the present case, the Domain Name incorporates the Complainant’s trademark PFIZER in its entirety, with the mere addition of the term “mx”, which is a geographical indication of the country Mexico. Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g. WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).
Paragraph 4(c) of the Policy lists three non-limitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.
The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to address the prima facie case thus established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present.
In addition, the Complainant has made sufficiently clear that the Respondent does not make fair use of the Domain Name, since the Respondent’s use falsely suggests sponsorship or endorsement by the Complainant. This is illustrated by the fact that the Respondent has merely added the geographic term “mx to the Domain Name, which tends to suggest sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(a)(ii) is thereby fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.
In the present case, the trademark PFIZER is registered by the Complainant in several jurisdictions and has been used for many years. The Complainant’s rights to the trademark PFIZER predate the registration date of the Domain Name. The Complainant’s trademark PFIZER is distinctive and has a strong online visibility. The trademark PFIZER is widely known, and has gained significant additional fame with the announcement of the COVID-19 vaccine. Based on this information, the Panel agrees with the Complainant that it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its trademark PFIZER under which the Complainant is doing business (see Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035). Also, it is held by previous Panels that the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark can be evidence of opportunistic bad faith (see Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
The Panel finds, on these facts, that the Respondent targeted the Complainant and its trademark PFIZER by registering the Domain Name. These facts show bad faith registration of the Domain Name.
With regard to use of the Domain Name in bad faith, the Panel finds that opportunistic bad faith is further evidenced by the fact that the website that is linked to the Domain Name mirrors the Complainant’s website “www.pfizer.com” and by the fact that Respondent falsely purports to offer the Complainant’s COVID-19 vaccine for sale on the website that is linked to the Domain Name. This leads to the finding that the Respondent intentionally attracts Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark PFIZER as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website that is linked to the Domain Name (paragraph 4(b)(iv) of the Policy; see WIPO Overview 3.0, section 3.1).
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.
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 <pfizermx.com> be transferred to the Complainant.
Date: March 18, 2021