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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Cameron Jackson

Case No. D2005-0909

 

1. The Parties

The Complainant is Pfizer Inc., New York, United States of America, represented by Kaye Scholer, LLP, United States of America.

The Respondent is Cameron Jackson, New South Wales, Australia.

 

2. The Domain Name and Registrar

The disputed domain name <pfizeraustralia.info> is registered with Direct Information Pvt Ltd. dba Directi.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2005. On August 25, 2005, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On August 26, 2005, Direct Information Pvt Ltd. dba Directi.com 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 August 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2005.

The Center appointed David Taylor as the sole panelist in this matter on October 5, 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 companies in the world with global operations in more than 150 countries. In 2003, it reported revenues of US$45.2 billion.

The Complainant owns several registered trademarks for the mark PFIZER throughout the world, including U.S. Trademark Registration No. 501,762 (issued on August 24, 1948) and U.S. Trademark Registration No. 626,088 (issued on May 1, 1956).

The Complainant also has various subsidiary and affiliated companies located in other countries, including Australia. Its Australian affiliate uses the trade name Pfizer Australia and operates a website at the domain name <pfizer.com.au>, to which <pfizeraustralia.com> and <pfizeraustralia.com.au> (also owned by the Complainant) both resolve.

The Respondent, based in Australia, registered <pfizeraustralia.info> (the “Disputed Domain Name”) on May 2, 2005, although it does not currently point to a website.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Disputed Domain Name incorporates the PFIZER mark in its entirety, replicates identically the “Pfizer Australia” trade name and mark, and takes advantage of a common internet practice for finding local subsidiaries of well known worldwide companies by merely adding the country name to the company name. Thus, the Disputed Domain Name is identical to the Complainant’s PFIZER trademark, except that the country name Australia has been added. Internet users who seek, in accordance with common Internet practice, to find the Complainant’s Australia-related website, may well type in the Disputed Domain Name.

Numerous decisions have held that a domain name is identical or confusingly similar to a trademark where a country name is added after a well-known trademark.

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant has no information about the Respondent and has never authorized the Respondent to register or use the Disputed Domain Name or the PFIZER mark.

The Respondent has no rights or legitimate interests in the mark PFIZER (or any variant spelling), in any Australian subsidiary or affiliate of the Complainant, or in the Disputed Domain Name. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the name “Pfizer” or “Pfizer Australia,” or any variation thereof.

The Complainant’s adoption and registration of the mark PFIZER, and use of the PFIZER and PFIZER AUSTRALIA trade names and marks by the Complainant and its affiliates long precedes the Respondent’s registration of the Disputed Domain Name. Before the Disputed Domain Name was registered, the Respondent did not carry on any business under any name containing the PFIZER trademark.

To the best of the Complainant’s knowledge, the Respondent has intentionally registered the Disputed Domain Name explicitly for the purpose of making illegitimate or unfair use of the Complainant’s trademarks. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain. Since registering the Disputed Domain Name, the Respondent has made no use of it to host an active website.

Based upon the above, it is clear that the Respondent has no rights or legitimate interests in the domain name <pfizeraustralia.info>.

(c) The Disputed Domain Name was registered and is being used in bad faith.

(i) Bad Faith Registration

The Respondent, in common with the public, is well aware of the vast and valuable goodwill and reputation represented and symbolized by the PFIZER and PFIZER AUSTRALIA trade names and marks. As used by the Complainant and its affiliates, these marks and names are recognized and relied upon by medical professionals and the public throughout the world as the sole means to identify and distinguish the Complainant, its affiliates and their goods and services from the goods and services of others. The Complainant and its affiliates have also registered and are using the domain names <pfizer.com>, <pfizer.com.au> and <pfizeraustralia.com.au>, amongst others.

The Respondent, recognizing the value of the internet to the Complainant in enhancing its ability to communicate with its target audience, registered <pfizeraustralia.info>, which incorporates the Complainant’s PFIZER trademark in its entirety but merely adds a country name so as to attract web users who mistakenly guess that the Complainant’s Australian affiliates maintain a site at <pfizeraustralia.info>. Given the lack of a legitimate basis for such use of the Complainant’s name and mark, the only reasonable inference is that the Respondent acted with bad faith intent in order to profit from the Complainant’s name and reputation.

This bad faith registration is exemplified by the following:

The Respondent, aware of the fame and goodwill associated with the PFIZER and PFIZER AUSTRALIA trade names and marks worldwide, registered a domain name that was intended to be and is substantially confusingly similar to the Complainant’s trade names and marks, both visually and aurally.

The Respondent has engaged in a pattern of registering domain names consisting of or incorporating the well known trademarks of others. For example, the Respondent has registered the following such domain names:

<gatorade.info>
<campbellsoups.info>
<fox-studios.info>
<fisherpaykel.info>
<hiltonsydney.info>

In Diners Club Int’l v. Cameron Jackson, NAF No. 0502782, dated August 4, 2005, the Respondent was found to have violated the Policy with respect to three domain names incorporating the well known DINERS CLUB mark: <dinersclubgolf.com>, <dinersclubgolf.info> and <dinersclubcorporation.info>. It was held that the Respondent registered those domain names in bad faith for his own commercial gain.

The Respondent recently contacted the Complainant’s Australian affiliate and threatened that he was going to launch a website at the Disputed Domain Name – presumably similar to the bad faith, confusingly similar, for-profit commercial websites that the Respondent operated at the domains <dinersclubgolf.com>, <dinersclubgolf.info> and <dinersclubcorporation.info>, referred to above. The Respondent undoubtedly did so in the hope that the Complainant would purchase the subject domain names from him at a price in excess of his out-of-pocket costs.

The registration of the Disputed Domain Name prevents the Complainant from using it to reflect the name by which its Australian affiliates are sometimes known, another factor suggestive of bad faith.

The Respondent is not, and has never been, a representative of the Complainant or licensed to use the PFIZER mark. The Respondent’s domain name was registered intentionally to misdirect customers looking for the Complainant’s Australian affiliate sites, or to hold the domain name hostage in order to sell it to the Complainant at an inflated price exceeding the Respondent’s out of pocket costs. This conduct is bad faith and violates the Policy.

Finally, the Complainant contends that the Respondent’s lack of rights or legitimate interests in the use of the Disputed Domain Name means that it is not necessary to consider the issue of bad faith registration, following Arthur Guinness Son & Co.(Dublin) Limited. v. Steel Vertigogo, WIPO Case No. D2001-0020 (which found that, because the Respondent had no rights or legitimate interests in the domain names at issue, it was unnecessary to even consider whether the Complainant had established bad faith use in registration).

(ii) Bad Faith Use

The Respondent’s bad faith use of a domain name is determined, not by whether the Respondent is making a positive action in bad faith, but instead by whether all of the other circumstances of the case indicate bad faith by the Respondent (Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Although the Respondent is not actively using the Disputed Domain Name to resolve to any website, it is still engaging in bad faith use. It is well settled that warehousing of domain names which do not resolve to a “website or other on-line presence” constitutes bad faith use. The Panel in the Telstra case mentioned above specifically explained that the concept of a domain name “‘being used in bad faith’ is not limited to positive action; inaction is within the concept.”

As the Panel held in the Diners Club Int’l UDRP decision against the respondent, referred to above, “[r]egistration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights in tantamount to bad faith registration and use pursuant to Policy, paragraph 4(a)(iii)”. As set forth above, the Respondent undoubtedly had actual and constructive knowledge of the Complainant’s rights in the PFIZER and PFIZER AUSTRALIA marks and names.

Bad faith use is further confirmed by the fact that the Respondent’s warehousing of a domain name that is confusingly similar to the PFIZER mark, and the name of the Complainant’s Australian affiliates, may prevent or hinder internet users from accessing the Complainant’s informational and educational services on the Complainant’s own official websites by confusing and/or frustrating prospective users. Once confused or frustrated, internet users may stop searching for the Complainant’s Australian websites altogether.

The Respondent’s threat to launch a website at the Disputed Domain Name, presumably in the hope of receiving an offer from the Complainant to purchase the Disputed Domain Name at an inflated price, further constitutes bad faith use.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In the case of default by a Party, Rules, paragraph 14 states that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate. In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

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

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

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

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

Based on the evidence put forward by the Complainant, the Panel finds that the Complainant has rights in the trademark PFIZER.

The Panel considers that, as previously held in numerous Panel decisions, the generic top level domain suffix (such as .com or, in this case, .info) is without legal significance and has no effect on the issue of similarity. In addition, the Panel agrees with the Complainant’s submission that a domain name is confusingly similar to a well known trademark when it merely consists of the trademark and the name of a country, in this case Australia. In support of its contention, the Complainant cites several cases decided under the Policy, notably Pfizer Inc. v. Tahar Aoudia, WIPO Case No. D2004-0958, where the domain name <pfizerfrance.com> was held to be confusingly similar to the PFIZER mark and was transferred to Complainant.

On the basis of these considerations, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (Policy, paragraph 4(a)(ii)). Policy, paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in the domain name, as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making 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 has considered the evidence put forward by the Complainant and considers that the Complainant has presented a clear prima facie showing of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name. As a result of its default, the Respondent has failed to rebut that showing.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The third element that the Complainant must prove is that the Disputed Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). The Panel would respectfully disagree with the Complainant’s submission that the Respondent’s lack of rights or legitimate interests renders the issue of bad faith registration unnecessary to consider, as the Complainant must prove all three elements of the Policy. Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out –of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”

It should be noted at this point that although paragraphs (i) to (iii) above refer primarily to the act of registration of a domain name and paragraph (iv) refers to use, according to the wording of the Policy, conduct falling into any one of these four circumstances is evidence of bad faith registration and use.

On the basis of the evidence put forward by the Complainant, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(ii). The Respondent has clearly been engaging in a pattern of registering domain names containing famous trademarks in order to prevent the owners of the relevant trademarks from registering them. This is evidenced by the Complainant’s list of five other domain names registered by the Respondent and its citing of a previous panel decision against the Respondent, Diners Club Int’l v. Cameron Jackson, NAF No. 0502782, dated August 4, 2005. Though a previous decision does not automatically mean that the Respondent has acted in bad faith in the present case, it is a further indication of the Respondent’s state of mind in registering the Disputed Domain Name, particularly as the Respondent has not provided the Panel with any indication of its reasons for registering the Disputed Domain Name.

On balance of probabilities the Panel also finds it likely that the Respondent’s conduct falls within paragraph 4(b)(i), even though an offer for sale was never made. However it is regrettable that the Complainant did not include evidence of the Respondent’s correspondence with the Complainant’s Australian affiliate, sent from the Respondent’s email address as included in the WHOIS record.

The evidence does not support a finding under paragraph 4(b)(iii), as the Respondent is clearly not a competitor of the Complainant, nor paragraph 4(b)(iv), as the Disputed Domain Name is not being used. However, it should be noted that the circumstances outlined in paragraph 4(b) are without limitation. Even if none of them had been present, the Panel would still have found that the Disputed Domain Name had been registered and used in bad faith, on the basis of the decision in Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, cited by the Complainant. Given the Complainant’s numerous trademark registrations for, and its wide reputation in, the distinctive word PFIZER, as demonstrated by the facts evidenced by the Complainant, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Disputed Domain Name. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.

The Panel, therefore, concludes that the Complainant has succeeded in proving that the Disputed Domain Name has been registered and is being used in bad faith.

 

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 <pfizeraustralia.info> be transferred to the Complainant.


David Taylor
Sole Panelist

Dated: October 19, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0909.html

 

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