WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Mau Lio

Case No. D2017-0242

1. The Parties

The Complainant is Pfizer Inc. of New York, New York, United States of America (“US”), represented by Arnold & Porter Kaye Scholer LLP, US.

The Respondent is Mau Lio of Nansha, Guangdong Sheng, China.

2. The Domain Name and Registrar

The disputed domain name <pfizerencompass.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2017. On February 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 February 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2017.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on March 27, 2017. 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 Pfizer Inc., a corporation existing under the laws of the State of Delaware, US, is one of the world’s largest pharmaceutical manufacturers and sellers with global operations in more than 150 countries.

The Complainant owns several trademark registrations in multiple jurisdictions for the trademark PFIZER, including the US trademark registration dated from 1956 in class 05 (registration No. 626.088, filed on April 27, 1953, and granted on May 1, 1956 - Annexes 4 and 5), in addition to the US trademark application No. 87103874 filed on July 14, 2016 for the mark PFIZER ENCOMPASS, in classes 35, 36 and 44.

The Complainant is the owner of the domain name <pfizer.com> since April 28, 1992.

The disputed domain name was registered on July 19, 2016 and the website is currently inactive, displaying the text “pfizerencompass.com is coming soon.”

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Respondent registered the disputed domain name on July 19, 2016 without authorization, seeking to capitalize on the fame of the Complainant’s PFIZER’s mark.

The Respondent’s domain name combines the famous mark PFIZER with the term ENCOMPASS that is being used by the Complainant.

According to the Complainant, the disputed domain name is likely to cause confusion among the Complainant’s customers and the consuming public, since it is confusingly similar to the Complainant’s domain name <pfizer.com> and is clearly similar to the marks PFIZER and PFIZER ENCOMPASS.

According to the Complainant, the Respondent is not authorized to register and use the disputed domain name.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of the trademark registration for PFIZER and the trademark application for PFIZER ENCOMPASS in the US and of the domain name <pfizer.com>.

The Complainant’s trademarks and domain name predate the disputed domain name.

The disputed domain name comprises the Complainant’s trademarks PFIZER and PFIZER ENCOMPASS.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademarks or to register domain names containing the trademarks PFIZER and PFIZER ENCOMPASS.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademarks, does not correspond to a bona fide use of domain names under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark PFIZER is registered by the Complainant in several jurisdictions, including the US, and has been used since a long time. The trademark application for PFIZER ENCOMPASS was filed by the Complainant in the US on July 14, 2016 and this trademark is also currently in use.

The disputed domain name is comprised by both trademarks and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s PFIZER mark is extremely distinctive and widely known. Thus, a domain name that comprises such a well-known mark is itself evidence of the Registrant’s bad faith.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademarks by misleading Internet users to believe that its website belongs to or is associated with the Complainant.

This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark PFIZER as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

7. Decision

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, <pfizerencompass.com>, be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: March 30, 2017