WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Legal Dept, Barry McMahon andPfizer ltd, Sys Admin

Case No. D2013-2046

1. The Parties

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

The Respondents are Legal Dept, Barry MacMahon, and Pfizer ltd, Sys Admin all of New York, New York, USA.

2. The Domain Names and Registrar

The disputed domain names <pfizerlegaldept.com> and <pfizerltd.com> (the “Domain Names”) are registered with Misk.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 30, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 3, 2013.

The Center verified that the Complaint together with the amended 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 amended Complaint, and the proceedings commenced on December 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2013. On December 5, 2013, the Center received an informal communication from the Respondent. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of the panel appointment process on December 27, 2013.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 8, 2014. 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 a corporation organized under the laws of the State of Delaware and headquartered in New York, New York, USA. Its stock is publicly traded on the New York Stock Exchange. The Complainant is one of the world’s largest pharmaceutical companies, operating in more than 150 countries, with an online presence including a corporate website at “www.pfizer.com”.

The Complainant and its predecessors have operated a chemical and pharmaceutical business under the Pfizer name since 1849. The Complainant’s products include many widely distributed medications and health products, which are typically packaged and labelled with the Complainant’s PFIZER marks, as well as with the brand names of the individual products.

The Complainant or its wholly owned subsidiary Pfizer Products Inc. own numerous registered trademarks throughout the world consisting of, or incorporating, the “pfizer” name. These include the following United States Trademark Registrations:

The Domain Names were both created on November 4, 2013. The Domain Name <pfizerlegaldept.com> is registered to the Respondent Barry MacMahon for the organization “Legal Dept”. The Domain Name <pfizerltd.com> is registered to “Sys Admin” for the organization “Pfizer ltd.” Both use the same email address, “[…]@macbusa.com”, while each shows a slightly different street address in New York, USA.

The Panel notes that the online database operated by the New York Department of State, Division of Corporations, does not list any entity named “Legal Dept” or “Pfizer ltd” that is registered to do business in New York, USA. There is no evidence in the record that the “organizations” listed in the Registrar’s WhoIs database for the Domain Names are in fact legal entities. Hence, the Panel presumes that these are fictitious names used by Mr. MacMahon or unknown persons and will refer to all three named Respondents collectively as the “Respondent”.

The Domain Names do not currently resolve to an active website, and there is no archived version of an associated website available through the Internet Archive’s Wayback Machine at “www.archive.org”.

On the same day that the Center sent the notification of Complaint to the email address given in the contact details for both Domain Names, an American law firm sent an email to that address, advertising its UDRP legal services. This prompted an email to the Center from “Jason” at the Respondents’ email address, forwarding the law firm’s advertisement and inquiring whether the law firm was associated with the Center. The Center promptly replied that it was not associated with that law firm and repeated information included in the Notification of Complaint document about the procedure and timing for filing a Response in this UDRP proceeding. There were no further communications from the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its PFIZER marks and that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant asserts that the Respondent selected the Domain Names, using the Complainant’s well-known and distinctive PFIZER mark, to mislead Internet users for commercial gain, most likely with the intention of selling counterfeit products or competing generic products.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed 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 disputed domain name; and

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

Under paragraph 15(a) of the Rules, “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.”

A. Identical or Confusingly Similar

The Complainant holds registered PFIZER trademarks, and both Domain Names incorporate that mark in its entirety. The mark is distinctively derived from a German-American family name, which is not a dictionary word in English or German. The addition of generic material – respectively, “legaldept” (“dept” is a common abbreviation for “department”) and “ltd” (a common indicator of a “limited” company) – do not avoid confusion with the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9 (“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.”). These generic additions may actually elevate the likelihood of confusion, for persons seeking corporate or legal information about the Complainant or receiving what appears to be a corporate email from an address using one of the Domain Names.

UDRP panels customarily treat the first element of the Policy as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview 2.0, paragraph 1.2. The Panel finds that these tests are met in this case and concludes that both Domain Names are confusingly similar to the Complainant’s PFIZER marks for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.

In this proceeding, it is undisputed that the Complainant did not give permission to use its PFIZER mark in the Domain Names, and also that the Respondent is not associated with the Complainant. There is no evidence in the record that the Respondent has made demonstrable preparations for a bona fide commercial use of the Domain Names, has been known by a corresponding name, or has made or planned a legitimate noncommercial fair use of the Domain Names. The Respondent has not come forward with any claimed rights or legitimate interests in the Domain Names. The Panel concludes, therefore, that the Respondent has not rebutted the Complainant’s prima facie case.

The Complainant prevails on the second element of the Policy.

C. Registered and Used in Bad Faith

As discussed in the previous section, the record does not reveal any possible legitimate reason for the Respondent’s registering and using the Domain Names, which incorporate the Complainant’s well known and long established PFIZER mark. The Complainant observes some similarities in the domain name servers listed for the Domain Names and for the domain name <ozpills.com>, which is used for a website selling putative generic pharmaceuticals that compete with some of the Complainant’s most popular products. This evidence is inconclusive, however, concerning the Respondent’s associations and intentions.

UDRP panels have entered findings of bad faith in cases where, as here, the respondent has not yet made any known use of the domain names at issue, following the “passive use” reasoning of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”). See WIPO Overview 2.0, paragraph 3.2. These decisions typically concern a domain name based on a well-known trademark lacking any other, generic signification; attempts to conceal the identity and business of the respondent; and a failure to respond to the complaint. UDRP panels examine such facts to determine, in the words of the Telstra decision, “not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.”

The Panel reaches this conclusion on the present facts. The Complainant’s PFIZER mark is strongly established and highly distinctive. It is used in connection with regulated pharmaceutical products, which are sometimes counterfeited to harmful effect. The Respondents use apparently fictitious names and cannot be linked to an actual, bona fide business. The Domain Names in this case have the potential of being used for misleading or fraudulent emails as well as websites, as they appear by their terms to relate to the Complainant’s corporate functions. And while someone using the Respondent’s contact email address communicated briefly with the Center, no Response was filed suggesting any legitimate reason for selecting the Domain Names.

The Panel finds here, as the panel did in the Telstra decision cited above, that “it is not possible to conceive of any plausible actual or contemplated active use of the [Domain Names] by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” The Panel does not believe that the Policy requires the Complainant, in these circumstances, to await actual harmful or infringing use in order to seek a transfer based on the Respondent’s probable bad faith in registering and holding the Domain Names with no plausible legitimate purpose.

The Panel finds for the Complainant on the third element of the Policy.

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 Domain Names <pfizerlegaldept.com> and <pfizerltd.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: January 22, 2014