The Complainant is Pfizer Inc., New York, New York United States of America, represented by Kaye Scholer, LLP, United States of America.
The Respondent is Fizer Inc., Web Master, TK, TK, KG, Japan.
2. The Domain Name and Registrar
The disputed domain name <fizer.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2005. On March 22, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 22, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2005.
The Center appointed Nathalie Dreyfus as the sole
panelist in this matter on April 27, 2005. 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 largest pharmaceutical enterprises in the world. It discovers, develops, manufactures and markets leading prescriptions medicines for human and animals, as well as many of the world’s best-known consumer products.
The Complainant had used the PFIZER mark since 1849, and owns rights over the name Pfizer in the United States of America since August 24, 1948. Pfizer has registered the sign PFIZER as a trademark throughout the world, and holds several U.S. trademark registrations for PFIZER such as:
- U.S. Trademark Registration No. 501,762, issued August 24, 1948, for PFIZER,
- U.S. Trademark Registration No. 626,088, issued May 1, 1956, for PFIZER and design.
The PFIZER mark has become well-known throughout the world. In addition, Pfizer widely uses and is well-known for its corporate trade name, PFIZER INC. Pfizer also owns and uses the domain name <pfizer.com>, which was registered on April 28, 1992, to communicate with the public about itself and its products.
The Respondent registered the disputed domain name
<fizer.com> on March 26, 2002, and is using the domain name to resolve
to a for-profit search engine site containing pre-set links to variety of websites
relating to pharmaceutical products and to general business research.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is identical or confusingly similar to its trademark. The omission of the letter “p” is likely to cause confusion among consumer’s and Internet users. Slight misspellings are not sufficient to distinguish a challenged domain from the Complainant’s trademark.
Respondent has no right or legitimate interest in the trademarks. It is not affiliated in any way with the Complainant. It uses the domain name without authorization for a profit generating search portal with links to online pharmacies selling competitors’ products. The use of the domain name generates profit from popup advertising and from click through traffic to the links by Internet users. There is no bona fide offering of goods and services.
Complainant contends that Respondent has registered and is using the domain name in bad faith. The contested domain name incorporates a well known widely recognized trademark, which constitutes bad faith registration. Respondent provided incomplete and false contact information. Respondent furthermore tried to create a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation and to capitalize on the fame of Complainant. This constitutes bad faith registration.
The <fizer.com> domain name is used to host Respondent’s for profit search portal featuring a revenue-generating pop up advertisement and pay per click links to online pharmacies. Complainant contends that this constitutes bad faith use.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in thisproceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) The 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 in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:
“A Panel shall 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.”
Consequently, failure on the part of a Respondent to file a Response to the Complaint permits an inference that Complainant’s allegations are true.
A. Identical or Confusingly Similar
First, it has to be determined whether the Complainant has rights in the name in order to allow it to initiate the present procedure.
According to the Panel, Complainant has provided sufficient evidence of its trademark rights over the sign “Pfizer”.
The Panel notices that the trademarks rights of the Complainant have been fully recognized through several previous UDRP decisions, such as:
The identical or confusingly similar character has to be examined. The comparison between the domain name and the Complainant’s trademarks shows two main differences between them:
- <fizer.com> includes the whole Complainant’s trademark with the omission of the silent letter “p”.
- The domain name includes the “.com” suffix.
With regard to the first
difference, the Panel considers that the domain name clearly relates to the
Complainant’s name, as the suppression of a single letter, which is besides
silent, as far as the pronunciation is concerned, is not significant enough
to differentiate both words, as other decisions have pointed-out regarding similar
situations. Such omission is considered as typosquatting. See Stokes Seeds,
Ltd. v. Peter Carrington, WIPO Case No.
D2004-0526.
The second of the above-mentioned differences between PFIZER trademark and
the domain name is the inclusion of the “.com” suffix in the latter
one. Such an inclusion is due to the current technical specificities of the
Domain Name System (DNS). Therefore, said difference should not be taken into
account in order to evaluate the identity or similarity between the domain name
and the Complainant’s trademark (See, for example, A & F Trademark,
Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co.,
Inc. v. Party Night, Inc., WIPO Case No.
D2003-0172).
It is now established that the gTLD “.com” is of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark.
Consequently, the above mentioned uncontested evidences provided by the Complainant satisfies the Panel that the domain name <fizer.com> registered by the Respondent is identical or confusingly similar to the Complainant’s registered trademark.
Therefore, the condition set out by Paragraph 4(a)(i) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name. In this regard, Paragraph 4(c) of the Policy foresees a set of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:
- To have used the domain name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and services; or
- To have been commonly known by the domain name, even when no trademark or service mark right has been acquired; or
- To make a legitimate non-commercial 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.
The Panel considers, in accordance with the Complainant’s statement and
with previous decisions that a registrant has no legitimate interest in a domain
name that is similar to a pharmaceutical manufacturer’s mark and that
is being used to link consumers to such online pharmacy. (See Yahoo Inc.
v. Carrington, NAF N° 308000184899, The Sportman’s guide, Inc.
v. Asia Ventures, Inc., WIPO Case No.
D2002-1116). The present case meets all these elements.
The Respondent is not affiliated with the Complainant and the Complainant has not authorized the Respondent to register any domain name incorporating the Complainant’s mark PFIZER. The Complainant has not granted any license or otherwise permitted the Respondent to use its trademark and the Respondent is not known under the name “Pfizer”, “Pfizer Inc” or any similar term.
The Panel notes that the Respondent did not contest any of the Complainant’s allegations. The Respondent seems to have knowledge of the Complainant’s famous products and is interested in taking advantage of this reputation.
The Panel considers that the Respondent, generating revenue from a search portal
with links to online pharmacies that sell competitor’s products, is not
making any legitimate use without intent for commercial gain. It has been previously
held in Banque Transatlantique S.A. v. DOTSCOPE, WIPO
Case No. D2004-1100, that “the linkage of the domain name with
a website which serves only to redirect users to a search engine and unrelated
third-party vendors cannot be considered as a bona fide offering of goods
or services in the sense foreseen by the Policy”.
Therefore, the condition set out by Paragraph 4(a)(ii) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The last of the elements foreseen by Paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the Domain Name in bad faith.
First of all, previous UDRP panels have recently considered
that Respondent’s bad faith could be indicated by the fame of the Complainant
(See for example: AT&T Corp. v. LaPorte Holdings, Inc., WIPO
Case No. D2004-1088,“Bad faith can be presumed based on the
fame of Complainant’s marks, such that the Respondent was aware or should
have been aware of Complainant’s well-known marks and claims of rights
thereto”. This is applicable to the present case.
Respondent’s action is in violation of Paragraph 4(b)(iv) of the Policy
as the Respondent is intentionally attempting to attract Internet users for
commercial gain to “www.fizer.com” website by creating a likelihood
of confusion with Complainant’s mark as to the source, sponsorship, affiliation
or endorsement of Respondent’s website and services which are not in any
way affiliated with Complainant. See The Toronto-Dominion Bank v. Boris Karpachev,
WIPO Case No. D2000-1571; NCRAS Management
LP v. Cupcake City, WIPO Case No. D2000-1803;
Disney Enterprises Inc. v. John Zuccarini, d/b/a Cupcake City and Cupcake
Patrol, WIPO Case No. D2001-0489.
In fact, it appears that the Respondent makes profit out of the presence of
pop-up ads and receives click through fees from the links on the search engine.
See COMSAT Corporation v. Ronald Isaacs, WIPO
Case No. D2004-1082. This is, among others, a clear evidence of bad
faith.
Besides, the contact details provided on the Whois for the Respondent of the
domain name <fizer.com> appears to be false and incomplete. It has been
held in previous decisions that such an element may indicate bad faith registration
(The Football Association Premier League Limited v. Trademark, WIPO
Case No. D2005-0014.
This Panel is of the opinion that there is ample evidence for a finding of bad faith in this case.
Therefore, the condition set out by Paragraph 4(a)(ii) of the Policy has been
met by the Complainant.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fizer.com> be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Dated: May 11, 2005
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