Complainant is Pfizer Inc. of New York, New York, United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States / Chris White, www.stollimachinary.com of Brooklyn, New York, United States.
The disputed domain name <pfizerbio.com> is registered with Web4Africa Inc. (“Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on October 10, 2018. On October 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from that in the Complaint, as well as confirming other details of the registration. The Center sent an email communication to Complainant on October 15, 2018, 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 October 15, 2018.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 6, 2018.
The Center appointed Debra J. Stanek as the sole panelist in this matter on November 8, 2018. 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.
Complainant owns United States federal trademark registrations for several “Pfizer” marks, including a registration for PFIZER as a stylized word mark (Reg. No. 626,088), registered May 1, 1956. The PFIZER marks are used in connection with pharmaceuticals, medications, and related goods and services.
Respondent registered the <pfizerbio.com> domain name on May 11, 2018. It does not appear that Respondent actively used the disputed domain name for a website (it redirected to Complainant’s “www.pfizer.com” website). Instead, it appears that it has been used in email addresses used to communicate with third parties.
Complainant is one of the largest pharmaceutical companies in the world. Its PFIZER mark has been used since 1849 and it owns a number of trademark registrations for the PFIZER mark in the United States and throughout the world. Complainant also owns and uses the domain name <pfizer.com> for its website as well as for email addresses of its employees.
The disputed domain name merely adds the generic term “bio” to the PFIZER mark and domain name and is confusingly similar to Complainant’s mark and domain name.
Complainant is not affiliated with Respondent and has not been authorized to register or use the disputed domain name or the PFIZER mark. Respondent is not commonly known by the name “Pfizer,” or a variation of the name. Respondent cannot demonstrate any rights or legitimate interests in the domain name. Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services within the meaning of the Policy.
Respondent is using the disputed domain name in email addresses. Respondent then uses the email address to impersonate Pfizer employees in communications with third-party law firms. The messages are part of a fraudulent scheme in which a third-party law firm is instructed by “Pfizer’s” “Human Resources Chief” to resolve a legal claim made by a former employee. In connection with the settlement, Complainant believes that Respondent instructs the law firm to advance a settlement payment on behalf of “Pfizer,” defrauding the law firm of money.
The email messages include Complainant’s website “www.pfizer.com”. Further, Respondent redirected the website associated with the disputed domain name to Complainant’s website.
Respondent did not reply to Complainant’s contentions.
Complainant has established its rights in the PFIZER mark through its United States trademark registrations.
The disputed domain name is not identical to Complainant’s mark. The question then becomes whether it is confusingly similar to the mark (disregarding the top-level domain). This typically involves a straightforward side-by-side comparison with the textual components of a mark to assess whether the mark is recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel subscribes to the consensus view that, for purposes of the first element, it is generally sufficient to establish that a mark is recognizable within a disputed domain name, either because it has been incorporated into the disputed domain name or a because a dominant feature of a mark is recognizable within the disputed domain name. WIPO Overview 3.0, sections 1.7 and 1.8. Here the entirety of Complainant’s mark is incorporated into the disputed domain name.
The Panel finds the disputed domain name confusingly similar to a mark in which Complainant has rights.
The Panel also shares the consensus view that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing. See WIPO Overview 3.0, section 2.1 (once complainant makes a prima facie case, burden of showing rights or legitimate interests in the domain name shifts to respondent). The Panel finds that Complainant has made a prima facie showing under this element.
There is no indication Respondent is commonly known by the disputed domain name; Respondent is identified as Chris White, “www.stollimachinary.com”. Respondent’s use is not in connection with a bona fide offering and is not a legitimate noncommercial or fair use of the disputed domain name. Under these circumstances, redirecting the disputed domain name to Complainant’s website does not establish rights or legitimate interests. It is evident that the redirection was part of a scheme to mislead recipients of the messages sent using the disputed domain name.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name.
Complainant must establish that the disputed domain name was registered and is being used in bad faith.
The documentary evidence submitted by Complainant consists of copies of email messages using the disputed domain name as part of the sender’s email address.1 The messages identify the sender as “[name]@pfizerbio.com” and underneath the individual’s name, the title “Human Resource Chief,” and the sender’s email address, followed by Complainant’s “www.pfizer.com” web address. This use, along with redirection of the disputed domain name to Complainant’s website, evidences Respondent’s registration and use of the disputed domain name as part of a scheme to defraud. Those actions also show that Respondent actually knew of Complainant’s mark and domain name and adopted and used it in the email addresses intending the recipients to believe that the communications were from Complainant.
In light of these facts and the adverse inferences that arise from Respondent’s failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the disputed domain name in bad faith.
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 <pfizerbio.com> be transferred to Complainant.
Debra J. Stanek
Date: November 10, 2018
1 The Complaint is signed only by Complainant’s outside counsel and does not include any information that suggests that the assertions in the Complaint are based on his personal knowledge; nor are the assertions supported by an affidavit or declaration of one of Complainant’s representatives. Nonetheless, Complainant provided documentary evidence in the form of copies of the email messages described above and is certified by Complainant’s counsel on behalf of Complainant.
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