WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / MichKingson, don comm
Case No. D2021-0312
1. The Parties
Complainant is Pfizer Inc., United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / MichKingson, don comm, South Africa.
2. The Domain Name and Registrar
The disputed domain name <pfizerglobalsupplies.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 February 2, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2021, 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 February 4, 2021, 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 February 8, 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 Respondent of the Complaint, and the proceedings commenced on February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 3, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on March 9, 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
Complainant is a major global pharmaceutical company, with operations in over 125 countries. Complainant has operated under the PFIZER mark since at least 1956. Complainant owns numerous trademark registrations globally, including in South Africa, where Respondent lists an address of record. These include, among others, United States Registration No. 2,951,026 (registered May 17, 2005); European Union Registration No. 00374611 (registered October 3, 1996); and South Africa Registration No. 978/55/3 (registered March 28, 1955).
Complainant also owns domain names that incorporate its PFIZER mark, and variations thereof. These include <pfizer.com> (registered 1996). Complainant uses the URL associated with this domain name to connect with consumers, and to inform them of its pharmaceutical products and services.
The disputed domain name <pfizerglobalsupplies.com> was registered on January 26, 2021. Although it appears to resolve to a currently inactive webpage, Respondent has used an email address associated with the disputed domain name to engage in potentially fraudulent behavior whereby Respondent posed as an official representative of Complainant, seeking to obtain sensitive personal and financial information from prospective global suppliers. Respondent has no affiliation with Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name 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.
Specifically, Complainant contends that it owns the PFIZER mark, and that the mark is “extremely
well-known and famous throughout the world. Complainant contends that Respondent has incorporated the well-known PFIZER mark into the disputed domain name, and added the generic or descriptive wording “global” “supplies,” which would likely be perceived as a reference to the supplies used for Complainant’s global pharmaceutical operations.
Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith to profit from the good will of Complainant’s mark for Respondent’s own commercial gain. In particular, Complainant contends that Respondent has acted in bad faith in sending out fraudulent emails, that reference and refer to Complainant and Complaint’s chief executive officer, in an apparent attempt to confuse prospective global suppliers into providing sensitive personal and financial information.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel must first determine whether the disputed domain name 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 incorporates in full Complainant’s PFIZER mark, with the addition of the wording “global” and “supplies.”
Numerous UDRP panels have agreed that supplementing or modifying a trademark with words 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; General Electric Company v. Recruiters, WIPO Case No. D2007-0584; Microsoft Corporation v. Step-Web, WIPO Case No. D2000‑1500; CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065.
The Panel therefore finds that Complainant has satisfied the first UDRP element, in showing that the disputed domain name is identical or 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 Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute. 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 an email account associated with the disputed domain name to engage in apparent phishing scheme. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted. In addition, the Panel notes that the use of the disputed domain name whereby Respondent posed as an official representative of Complainant, seeking to obtain sensitive personal and financial information from prospective global suppliers is use that cannot confer rights or legitimate interests on a respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.
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, although the disputed domain name resolves to an inactive web page, Respondent has used the disputed domain name to set up an email account in a manner apparently calculated to confuse potential suppliers for Complainant into providing Respondent their sensitive personal and financial information.
Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. The Panel thus finds that despite the disputed domain name does not resolve to an active website, Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, thereby evidencing bad faith. This is particularly so, given the extensive global renown of Complainant’s Pfizer mark and the Respondent’s use posing as a representative of the Complainant. See, for example, Pfizer, Inc. v. WhoIs Guard, Inc./Susan Watson, WIPO Case No. DCO2019-0019; Pfizer, Inc. v. Mau Lio, WIPO Case No. D2017-0242; Pfizer, Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256.
Overall, the Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
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 <pfizerglobalsupplies.com> be transferred to Complainant.
Date: March 11, 2021