WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. WhoisGuard, Inc. / Susan Watson
Case No. DCO2019-0019
1. The Parties
The Complainant is Pfizer Inc., United States of America, represented by Arnold & Porter Kaye Scholer LLP, United States of America.
The Respondent is WhoisGuard, Inc. Panama / Susan Watson, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <pfizercommodities.co> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2019. On May 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 22, 2019, 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 May 27, 2019 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 May 29, 2019
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 June 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on July 5, 2019. 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.
The language of this administrative proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant operates a life sciences business with operations in more than 150 countries in the year 2018 exceeding USD 53 Billion1 . The Complainant holds registrations for the trademark PFIZER in a number of countries including in the United States (“U.S.”) registration No. 626,088, for example, has been in effect since May 1, 1956.
The Complainant is also the owner of, inter alia, the domain name <pfizer.com>, which resolves to the company’s main website containing information about the company’s business and operations and has done so since 1996.
The Disputed Domain Name <pfizercommodities.co> was registered on February 14, 2019. According to the evidence provided by the Complainant, the Disputed Domain Name is connected to a fraudulent email scheme that uses the Complainant’s mark and a “pfizercommodities.co” email address to impersonate Complainant’s departments and employees in communications with various prospective employees and job applicants in an effort to ultimately gain their personal information.
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark PFIZER in various countries as prima facie evidence of ownership.
The Complainant submits that the mark PFIZER is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <pfizercommodities.co>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the PFIZER trademark and that the similarity is not removed by the addition of the word “commodities” and addition of the country code Top-Level Domain (“ccTLD”) “.co”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to perpetrate an email scam, and contends that such a Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademark, and that it was being used to further the perpetration of a fraud as part of a ‘phishing’ scheme.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark PFIZER in the United States and in many and various countries throughout the world. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark PFIZER.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the PFIZER trademark, the Panel observes that the Disputed Domain Name comprises: (a) a reproduction of the Complainant’s trademark; (b) followed by the word “commodities”; (c) followed by the ccTLD suffix “.co”. It is well established that the Top-Level designation used as part of a domain name should typically be disregarded when considering identity or confusing similarity: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made in these circumstances is therefore with the second level portion of the Disputed Domain Name, “pfizercommodities”, which is plainly confusingly similar to the trademark.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Panel finds that the Disputed Domain Name is therefore confusingly similar to the PFIZER trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,
WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the mark PFIZER is not a dictionary word but rather a highly distinctive name. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant submits that the Respondent “is using emails incorporating and utilizing the subject domain name to fraudulently mislead third-parties in an effort to perpetrate fraud. Additionally, Respondent incorporates the names of current or former Pfizer employees and affiliates as part of its fraudulent scheme.”
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an online phishing scam using email communications pretending to be from employees of a corporate entity operating under the brand PFIZER to seek from the recipient of those communications their private and sensitive personal details with the purpose of misleading the consumer based on the wide recognition of the Complainant’s mark PFIZER. The Complainant further contend that the Respondent is also using the logo, physical address of the Complainant and names of legitimate employees of the Complainant to reinforce the false impression that the fraudulent emails are legitimate. In this respect, the Panel notes that the Disputed Domain Name does not resolve to a website. Naturally too, in view of the Complainants’ allegations, the example of scam email provided in uncontested evidence does not accurately nor prominently disclose the unauthorized nature of the Respondent’s relationship with the Complainant. It could therefore be inferred that the Respondent was opportunistically using the Complainant’s mark in the furtherance of the perpetration of a fraud.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’oreal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The Panel finds that the trademark PFIZER is so well-known internationally that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
Further, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by approximately 63 years.
Further, the Panel notes that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use” (See WIPO Overview 3.0, section 3.3).
The Panel accepts the Complainants’ submission that the most likely reason for the Respondent registering the Disputed Domain Name and using it to send fictitious emails, is that the Respondent was attempting to perpetrate a fraud.
Basically, the Respondent seeks to generate revenue from the Complainants’ goodwill by attempting to deceive some recipients of the emails into believing they had received a legitimate communication from a domain name associated with the Complainants’ PFIZER brand (see paragraph 4(b)(iv) of the Policy). Moreover, given the obvious risk of consumers being confused as to the origin of the emails, or affiliation of the emails with the Complainants, this Panel regards such conduct as constituting bad faith.
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark PFIZER and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by creating email addresses comprised of the Disputed Domain Name then has used those email addresses to impersonate the Complainant’s employees, to putatively provide fake job opportunities for the purpose of obtaining sensitive and personal information from prospective employees, an activity sometimes referred to as ‘phishing’. Numerous previous UDRP Panelists have held that the registration and the use of a disputed domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy (see Pfizer Inc. v. Sarthak Kapoor, WIPO Case No. D2019-0292; Pfizer Inc. v. Registration Private, Domains By Proxy, LLC / Jenny Tran, WIPO Case No. D2016-2067; Pfizer Inc v. Michael Chucks / Whoisguard Protected, Whoisguard Inc, WIPO Case No. D2014-0887; Pfizer Inc. v. Freda Atagamen, Michael Chucks, WIPO Case No. D2014-2207; Asos PLC v. Francis King, WIPO Case No. D2017-2235; Republic Services, Inc. v. Stacy Monday, WIPO Case No. D2014-1440).
Accordingly, the Panel finds that the Complainant has satisfied the requirements 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, <pfizercommodities.co> be transferred to the Complainant.
Date: July 15, 2019
1 According to its United States SEC Form 10-K filing for 2018 located here: https://s21.q4cdn.com/317678438/files/doc_financials/Quarterly/2018/q4/6b8a74bb-3702-4c0a-a181-70df2b0e5cfb.pdf