The Complainants are Pfizer Inc. and Wyeth LLC of New York, United States of America (“US”) represented by Kaye Scholer, LLP, United States of America.
The Respondent is Intdomain, Apexed of Burgenland, Austria.
The disputed domain name <prevenar.biz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2015. On February 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2015.
The Center appointed Mr. Gold as the sole panelist in this matter on March 16, 2015. 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 Complainants are Pfizer Inc. (“Pfizer”) and its subsidiary, Wyeth LLC (“Wyeth”). For the purpose of these proceedings there is no need to draw any distinction between Pfizer and Wyeth and they are collectively referred to below as “the Complainant”.
The Complainant is one of the world’s largest pharmaceutical manufacturers and sellers with operations in over 150 countries. The Complainant owns registered trade marks for PREVENAR in over 140 countries and registered trade marks for PREVENAR 13 in over 100 countries. Its trade marks include Community Trade Mark No. CTM002499556, registered on November 23, 2001, and US Trade Mark No. 2,413,934, registered on December 19, 2000, each for PREVENAR. It also owns US trade mark registrations for PREVNAR and PREVNAR 13. These trade marks are used as the brand names for the Complainant’s family of pneumococcal conjugate vaccines aimed at protecting individuals from a variety of infections, each of which is caused by the bacterium Streptococcus pneumoniae. Information about the Complainant’s vaccines is available from its websites at “www.prevenar.com”, “www.prevenar13.com” and “www.prevnar13.com”.
The disputed domain name was registered by the Respondent on October 17, 2014. As at January 30, 2015 it pointed to a webpage containing links to a variety of goods and services, mainly relating to vaccines and vaccinations but also to self storage. On December 20, 2014 a person claiming to be the manager of the disputed domain name contacted the Complainant offering to sell it to Pfizer.
The Complainant explains that it has spent extensive resources on research and development of its PREVENAR and PREVNAR family of vaccines The Complainant’s vaccine was first approved for use in the US by the US Food and Drug Administration (“FDA”) in 2000 and since that time, vaccines marketed under the PREVENAR/PREVNAR brands have generated billions of dollars in revenue for the Complainant.
The Complainant says that the disputed domain name is identical to a trade mark which it has rights. In this respect it draws attention to its extensive portfolio of PREVENAR trade marks described above. The Complainant says that both PREVENAR and PREVNAR are coined terms with no meaning and that it is widely recognized as the sole source of PREVENAR and PREVNAR vaccines.
The Complainant says that the disputed domain name is identical to its PREVENAR trade marks because the top level domain suffix, “.biz”, should be disregarded for the purposes of comparing the disputed domain name with its trade marks. It adds that the disputed domain name is also similar to its PREVNAR mark and to some of the names of some of the websites which it operates.
The Complainant asserts that the Respondent has no right or legitimate interest in the PREVENAR mark. It says that it is not affiliated in any way with the Respondent and has never authorized it to register the disputed domain name or use its trade marks. It says that the Respondent is not known by either of the names “Prevenar” or “Prevenar.biz” or by any similar name. It claims that the Respondent’s offer to sell it the disputed domain name shows that it had knowledge of the Complainant’s trade marks prior to registration of the disputed domain name. Moreover, the Respondent’s use of the disputed domain name does not comprise a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Rather, it says, the Respondent has registered the disputed domain name in order to profit from visitors drawn to its website by the use of the Complainant’s mark in the disputed domain name who then click on sponsored links to third-party websites, thereby generating “click-through” revenue for the Respondent.
Lastly, the Complainant says that the Respondent registered and is using the disputed domain name in bad faith. It asserts that the Respondent registered the disputed domain name having been well aware of the valuable goodwill and reputation represented and symbolized by the Complainant’s PREVENAR trade marks. Because the Complainant’s PREVENAR and PREVNAR trade marks are very distinctive the Respondent will have recognized the potential of the disputed domain name to generate a substantial amount of Internet traffic to its website and therefore acted with bad faith intent.
The Complainant draws attention to the non-exhaustive list of factors pointing to bad faith set out at paragraph 4(b) of the Policy and refers to paragraph 4(b) (i) which provides that a registration is in bad faith if it is “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the registrant’s] documented out-of-pocket costs directly related to the domain name.” The Complainant draws attention to the decision of the panel in Mag Instrument, Inc. v. Richard Larkins Sets&Reps, WIPO Case No. DME2013-0001, which held that “Registering a domain name with knowledge of a trade mark owner’s existing rights and with a blatant intention of making a profit on its sale by selling it back to the trade mark owner is clearly registration in bad faith and a case of classic cybersquatting”.
The Complainant says that the Respondent has registered and is using the subject domain name to misdirect and divert customers looking for information about the Complainant and its PREVENAR products to a website that earns income for the Respondent through the generation of click-through fees. The Complainant says that the example of bad faith set out at paragraph 4(b) (iv) of the Policy is also applicable to the Respondent’s conduct in that the disputed domain name was registered and used in order to intentionally attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. In support of its contentions the Complainant refers to the finding of the panel in Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285 that the respondent’s receipt of click-through fees from links on its web site is “clear evidence of bad faith”.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
The Complainant has produced extensive evidence of its trade mark rights in PREVENAR. As the Complainant says, it is well established that the applicable generic Top-Level Domain (“gTLD”) suffix, “.biz” in the present case, in the disputed domain name is usually disregarded for the purpose of making a comparison between the Complainant’s trade marks and the disputed domain name.
The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
Paragraph 4(c) of the Policy provides non-exhaustive examples of how a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods or services, if a respondent has been commonly known by the domain name or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.
There is nothing to suggest, on the basis of the evidence and submissions provided by the Complainant that any of these grounds, nor any other basis by which the Respondent might contend that it has rights or legitimate interests, are applicable. The Respondent has chosen not to explain why it might have rights or legitimate interests in the disputed domain name. Having regard to all of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The vaccine marketed and sold under the Complainant’s PREVENAR trade mark was approved for use by the FDA in February 2000 and since that time the Complainant’s vaccines have been widely sold worldwide under both the PREVENAR and PREVNAR brands. Both words are, as the Complainant asserts, distinctive and the disputed domain name is very unlikely to have been registered by the Respondent without any knowledge or awareness on its part of the Complainant’s trade marks and products. This is particularly the case having regard to fact that an offer was made by the Respondent to sell the disputed domain name to the Complainant in December 20, 2014, that is a little over two months after the Respondent had registered the disputed domain name. The evidence points strongly to the disputed domain name having been registered in bad faith.
The use to which the disputed domain name has been put since the date of registration confirms the Respondent’s bad faith intent. First, the Respondent’s offer to the Complainant to sell it the disputed domain name for an undisclosed sum might, in theory at least, not fall within precisely the ambit of paragraph 4(b) (i) of the Policy which stipulates that the consideration sought by the Respondent needs to be “valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name”. But the Respondent is very unlikely to have made an offer to sell the domain name on any other terms.
Moreover, the use of the disputed domain name to point to a website which hosts links to third party websites in order that the Respondent can derive pay-per-click income from its website is in the circumstances bad faith use. Such conduct is close to, and arguably falls within, the circumstances outlined at paragraph 4(b) (iv) of the Policy namely that the Respondent, by its use of the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
The Panel accordingly finds that the disputed domain name was registered and is being used 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 <prevenar.biz> be transferred to the Complainant, Pfizer.
Antony Gold
Sole Panelist
Date: March 30, 2015