WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc., Pfizer Deutschland GmbH v. Drik Van
Case No. DEU2020-0022
1. The Parties
The Complainants are Pfizer Inc., United States of America (“United States”), and Pfizer Deutschland GmbH, Germany, represented by Arnold & Porter Kaye Scholer LLP, United States.
The Respondent is Drik Van, Netherlands.
2. The Domain Name, Registry, and Registrar
The Registry of the disputed domain name <pfizersupply.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is PDR Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2020. On October 27, 2020, the Complainant filed an amended Complaint adding the second Complainant, Pfizer Deutschland GmbH. On October 28, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On November 5, 2020, the Registry 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 Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on November 12, 2020.
The Center verified that the amended Complaint, together with the second amended Complaint, satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was December 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021.
The Center appointed Zoltán Takács as the sole panelist in this matter on January 18, 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complainants in this administrative proceeding are Pfizer Inc. (the First Complainant) and Pfizer Deutschland GmbH (the Second Complainant).
The First Complainant is one of the world’s largest pharmaceutical manufacturers and sellers present in more than 125 countries.
The First Complainant owns a number of trademark registrations for the mark PFIZER, among others the European Union Trademark (“EUTM”) Registration No. 000374611, registered on September 29, 1998, for goods in classes 5, 10, 16, 18, 36, and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
Since April 28, 1992, the First Complainant owns the domain name <pfizer.com> which links to its principal corporate website.
The Second Complainant is the First Complainant’s German subsidiary, employing around 2,500 people.
The Respondent has registered the disputed domain name on September 2, 2020, and used it to operate a phishing scheme designed to persuade the Complainants’ business partners to make fraudulent payments.
5. Procedural Matters
A. Multiple Complainants
Neither the Commission Regulation (EC) No. 874/2004 (the “Regulation”) nor the ADR Rules expressly contemplate the possibility of an ADR complaint filed jointly by multiple complainants.
However, prior domain name disputes decided pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) have shown that under certain circumstances a single complaint filed by more than one complainant against a single respondent may be accepted. Given the similarities between the ADR Rules and the UDRP, this Panel will refer to both previous UDRP decisions and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) when relevant.
According to section 4.11.1 of the WIPO Overview 3.0, “[when] assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”. See also Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law, WIPO Case No. DEU2017-0001, and Take-Two Interactive Software, Inc. and Take-Two Interactive GmbH v. Auyhgf Awgega, WIPO Case No. DEU2020-0006.
The Second Complainant is the First Complainant’s German subsidiary. Furthermore, registration and use of the disputed domain name clearly targets both Complainants, not just their intellectual property rights but their business in general. These facts and circumstances are in view of the Panel sufficient to establish common interest in the disputed domain name and common grievance against the Respondent and warrant permitting consolidation in this proceeding.
B. Language of the Proceeding
The language of this administrative proceeding is English, that being the language of the registration agreement.
6. Parties’ Contentions
The Complainants contend that the disputed domain name <pfizersupply.eu> is confusingly similar to the First Complainant’s famous PFIZER trademark, since it reproduces the trademark in its entirety. The addition of term “supply” is not sufficient to distinguish the disputed domain name from the First Complainant’s trademark.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraph B(11)(e) of the ADR Rules.
The Complainants claim that the Respondent’s use of an email address associated with the disputed domain name and sending of deceptive emails to solicit payment of fraudulent invoices constitute bad faith.
The Complainants request that the disputed domain name be transferred to the Second Complainant.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
In order for the Complaint to succeed, the Complainants must show, in accordance with Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules, that:
(i) The domain name is identical of confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either
(ii) The domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) The domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law
The First Complainant holds registered rights in the trademark PFIZER, and for the purpose of this proceeding, the Panel establishes that the First Complainant’s EUTM Registration No. 000374611 for the word mark PFIZER satisfies the requirement of having a right recognized by the European Union law.
The disputed domain name <pfizersupply.eu> fully incorporates the First Complainant’s inherently distinctive PFIZER trademark. The only element in the disputed domain name that differs from the PFIZER trademark of the First Complainant is the descriptive and dictionary word “supply”, which does not prevent finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).
The applicable country code Top-Level Domain (“ccTLD”) suffix in the disputed domain name “.eu” should in relation to this administrative proceeding be disregarded, as it is a technical requirement, and the Panel finds that the disputed domain name is confusingly similar to the First Complainant’s trademark and that the requirement of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules is satisfied.
B. Rights or Legitimate Interests
Under Paragraph B(11)(e) of the ADR Rules, a respondent may demonstrate its rights or legitimate interests to the domain name for purposes of Paragraph B(11)(d)(1)(ii) by showing any of the following circumstances, in particular but without limitation:
(1) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or European Union law;
(3) the Respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, 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 often within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the requirement to prove that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name.
The Complainants have established that they have no relation to the Respondent and have never authorized the Respondent to use the First Complainant’s PFIZER trademark in any way, whose prior rights in the trademark long precede the date of registration of the disputed domain name.
The Respondent failed to respond to the Complainant’s contentions, and by doing so failed to offer to the Panel, any type of evidence set forth in Paragraph B(11)(e) of the ADR Rules, or otherwise counter the Complainants prima facie case.
Furthermore, Article 22 (10) of the Regulation provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty”.
Lastly, according to section 2.13 of the WIPO Overview 3.0, panels have categorically held that the use of a domain name for illegal activity (i.e. the Respondent’s phishing scheme of sending emails impersonating the Complainants) can never confer rights or legitimate interests on a respondent.
In accordance with Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules the Panel finds that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name.
C. Registered or Used in Bad Faith
Under Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules lack of rights or legitimate interests is an alternative requirement to registration and use of the domain name in bad faith.
While this Panel found that the Respondent lacks any rights or legitimate interests in the disputed domain name and there would be no need to separately address the bad faith registration or use requirement, the Panel will nevertheless address the third element.
Numerous UDRP panels have found that the PFIZER trademark is famous, universally recognized (See e.g. Pfizer Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; Pfizer Inc., G.D. Searle LLC Inc. v. Samir Kumar, WIPO Case No. D2009-0429; Pfizer Inc. v. Mau Lio, WIPO Case No. D2017-0242).
In the Panel’s view, there can be no doubt that Respondent has registered the disputed domain name fully incorporating the First Complainant’s famous PFIZER trademark with actual knowledge of and intent to target it, which amounts to opportunistic bad faith under the ADR Rules.
Furthermore, the Respondent’s use of the disputed domain name to send deceptive emails and solicit payment of fraudulent invoices by the Complainants’ actual or prospective business partners is a behavior that is manifestly considered evidence of bad faith under the ADR Rules (see section 3.1.4 and 3.4 of the WIPO Overview 3.0 and ICADE & ICADE Promotion v. Icade Marianne, WIPO Case No. DEU2020-0007; Yoox Net-a-porter Group v. Josef Huber, WIPO Case No. DEU2020-0004).
Based on the uncontested evidence and circumstances of this case, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <pfizersupply.eu> be transferred to the Second Complainant, Pfizer Deutschland GmbH. As the Second Complainant is established and located within the European Union it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of the Regulation (EC) No 733/2002.
Date: January 25, 2021