WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pfizer Inc. v. ZJ Case No. D2007-0050
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 ZJ, of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <phizer.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2007. On January 16, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 16, 2007, Intercosmos Media Group d/b/a directNIC.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 January 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2007.
The Center appointed Keith Gymer as the sole panelist in this matter on February 21, 2007. 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, Pfizer Inc. (“Pfizer”), is one of the world’s largest pharmaceutical manufacturers and sellers and maintains global operations in more than 150 countries. Pfizer owns numerous trademark registrations for the mark PFIZER, including U.S. Trademark Registration No. 501,762, issued August 24, 1948, U.S. Trademark Registration No. 626,088, issued May 1, 1956, and other registrations throughout the world. Pfizer uses the PFIZER mark in connection with the sale of a wide variety of pharmaceutical products. Pfizer operates a website at the domain name <pfizer.com>, which it uses to provide information about itself and its products.
The registrant for the Domain Name <phizer.com> is identified only as “ZJ”, although the administrative and technical contacts are named as “ZHANG” at the same street address as given for the registrant. The Domain Name <phizer.com> is shown on the Registrar’s Whois record as having been most recently created on April 14, 2005.
It is noted that the same Domain Name has previously been the subject of WIPO Case No. D2002-0410, dated July 3, 2002, also brought by same the Complainant as in the present case. The Complainant was awarded transfer of the domain name in the earlier decision, but has not retained control of it.
5. Parties’ Contentions
The Complainant made substantial submissions in support of its claims. Relevant extracts are reproduced here: The Complainant contends:
Pfizer owns the famous and well-known PFIZER Trademark.
Pfizer is among the largest pharmaceutical enterprises in the world with global operations in more than 150 countries. In 2003, Pfizer reported revenues of $45.2 billion. Pfizer has been known by and has used the PFIZER mark since 1849 and has owned a United States trademark registration for the mark PFIZER since August 24, 1948. Pfizer has registered the PFIZER name as a trademark throughout the world. Pfizer also owns the domain name <pfizer.com>, which it uses to host a website to communicate with the public about Pfizer and its products.
By virtue of the extensive sales and advertising throughout the world under the PFIZER mark, the PFIZER mark has become and is extremely well-known and famous throughout the world.
Respondent’s Domain Name is identical or confusingly similar to Pfizer’s PFIZER Trademark.
Respondent, seeking to capitalize on the fame of the Complainant’s PFIZER trademark, registered without authorization the domain name <phizer.com>. [T]he domain name resolves to a for-profit search engine site which contains pre-set links to a variety of websites relating to the pharmaceutical industry, to pharmaceutical products (including products in direct competition with Pfizer’s products), and to a variety of other for-profit sites. The site also contains links to numerous online pharmacies, among other websites, including sites that sell pharmaceutical products that directly compete with Pfizer’s products (for example, the LEVITRA and CIALIS products which compete with Pfizer’s VIAGRA product).
“A typical cyberpirate trick is to register common misspellings of a trademark as a domain name in order to lead the casual Internet user to the cyberpirate’s website . . .” [2 Gilson at § 7A.06[f] at page 7A-107 (2004)].
The Complainant contends that Respondent has engaged in this “cyberpirate’s trick” with respect to the <phizer.com> domain name.
Respondent’s <phizer.com> domain name (1) takes advantage of a common misspelling of Complainant’s name (i.e. spelling “Pfizer” with the letters “Ph” rather than “Pf”); (2) takes advantage of a common Internet typing error (i.e., accidentally typing the letter “H” rather than the nearby letter “F” on the computer keyboard) when typing Pfizer’s trademark PFIZER and domain name <pfizer.com>, (3) is confusingly similar to Complainant’s own domain name <pfizer.com> and (4) is so clearly similar to Complainant’s PFIZER mark that it is likely to cause confusion among Complainant’s customers and the consuming public.
Pfizer’s name is so commonly preyed upon by typosquatters such as registrant who seek to advance their interests by confusing Pfizer’s patrons, that Pfizer is frequently compelled to bring UDRP actions against domain names that attempt to capitalize on similar types of misspellings that Respondent has exploited here.
Indeed, as noted above, Pfizer has previously prevailed in a UDRP proceeding against another party who had registered this same domain name <phizer.com>, and who similarly tried to take advantage of this common misspelling or mistyping of Pfizer’s name. See Pfizer Inc. v. Phizer’s Antiques, WIPO Case No. D2002-0410 (July 3, 2002) (holding that previous registration and use of <phizer.com> domain name was in violation of the Policy). In that case, the Panel held that:
“[C]onfusion would unquestionably arise – and in fact is so intended – as a result of the Respondents’ current use of the contested domain name.”
“Further, merely substituting “f” in the mark “PFIZER” with “h” to yield the contested domain name, that is phonetically equivalent to the mark, is a change that is so de minimus that the only purpose which the Panel envisions behind the Respondents having done so is to cause and opportunistically exploit inevitable user confusion. There can be no question that this is the Respondents’ goal. Otherwise, why would the Respondents have chosen a domain name that, given its slight alteration, remains phonetically equivalent to the Complainant’s mark “PFIZER”?
Such confusion would undoubtedly cause Internet users intending to access the Complainant’s website, but who reach the Respondents’ travel website through the contested domain name, to think that an affiliation of some sort exists between the Complainant and the Respondents, when, in fact, no such relationship would exist at all.”
Other UDRP decisions concerning similar manipulations of Pfizer’s marks have included:
Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285 (transferring <fizer.com> to Pfizer); Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299 (transferring <pfzer.com> to Pfizer); Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (transferring <pfizerforwoman.com> and <wwwwpfizerforwomen.com> to Pfizer); Pfizer Inc v. Peter Carrington a/k/a Party Night Inc., WIPO Case No. D2003-0622 (transferring <pfiezer.com>, <pfiserforliving.com>, <pfzerforliving.com> and <pfizerliving.com> to Pfizer); Pfizer Inc. v. Medlink Telecom GmbH, WIPO Case No. D2002-0547 (transferring <pfeizer.com> to Pfizer; Pfizer Inc. v. Lorna Kang, WIPO Case No. D2002-0480 (transferring <pheizer.com> to Pfizer); Pfizer Inc., v. RE THIS DOMAIN FOR SALE – EMAIL, WIPO Case No. D2002-0409 (transferring <phiser.com> to Pfizer); Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 (transferring <wwwpfizer.com> to Pfizer); Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791 (transferring <pfizre.com> to Pfizer).
Numerous other decisions have held that the substitution of a single letter, or letters, in the domain name, or the slight misspelling or mistyping of a trademark, are not sufficient to distinguish a challenged domain from a Complainant’s mark.
Because Respondent’s domain name typosquats the PFIZER mark, the domain name is identical and confusingly similar to Complainant’s PFIZER mark.
Respondent has no rights or legitimate interests in the Trademarks.
Complainant Pfizer is not affiliated in any way with Respondent and has never authorized Respondent to register or use the domain name at issue or the PFIZER mark. Respondent has no right or legitimate interest in the mark PFIZER or in the subject domain name. Upon information and belief, Respondent is not commonly known by the name PFIZER, PHIZER or any variation thereof. Respondent has no trademark rights in the mark PFIZER or the word “PHIZER.
Complainant’s adoption and registration of the marks PFIZER in the United States of America and elsewhere precedes Respondent’s registration of the domain name at issue on April 14, 2005. Moreover, as set forth more fully below, given the widespread publicity and fame of the PFIZER mark and given Respondent’s repeated references to PFIZER brand products (e.g., Pfizer’s well-known VIAGRA product) on Respondent’s website, it is indisputable that the Respondent had knowledge of Complainant’s famous PFIZER mark prior to the registration of the disputed domain name.
The Complainant contends that [t]here is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain. Rather, Respondent has been misleading and diverting Pfizer’s customers to Respondent’s for-profit website, which site misuses and infringes the PFIZER mark and features revenue-generating links and pop-up ads relating to a wide variety of goods and services. These include links to online pharmacies that sell the CIALIS and LEVITRA products that compete directly with Pfizer’s well-known VIAGRA product.
As the Panel held in a prior proceeding involving this same domain name, there can be no conceivable bona fide or legitimate use of a domain name so confusingly similar to Complainant’s well known PFIZER mark. Thus, as the Panel stated in Pfizer Inc. v. Phizer’s Antiques [WIPO Case No. D2002-0410, dated July 3, 2002], the respondent’s use of <phizer.com> “a domain name that at its essence is phonetically identical and hence confusingly similar to the Complainant’s mark ‘PFIZER’”, is “intentionally seeking to opportunistically exploit user confusion . . . for [Respondent’s] own pecuniary benefit . . . by simply relying on expected user misspelling of the Complaint’s mark “PFIZER” to directly capitalize on the reputation and fame of that mark – to the Complainant’s ultimate detriment and the Respondents’ financial gain”. “Such parasitic use”, the Panel held, “can not and does not constitute bona fide commercial or fair use.”
Respondent’s lack of rights or legitimate interests is confirmed by Respondent’s use of the <phizer.com> domain name for a for-profit website linking to various online pharmacies that sell products that compete directly with Pfizer’s products. Such a use does not constitute a use in connection with the bona fide offering of goods or services.
[T]he fact that some of the linked online pharmacies might also sell Pfizer products does not give Respondent any rights or legitimate interests in Pfizer’s PFIZER mark. Moreover, a registrant has no right or legitimate interest in a domain that is confusingly similar to a manufacturer’s mark, even where the domain is being used for online sales of the manufacturer’s product.
Respondent also cannot claim that its use of the domain name is a bona fide use or a legitimate noncommercial fair use for the additional reason that it is using the domain name for a for-profit site that collects fees for click-through traffic by Internet users. Paragraph 4(c) of the [Policy] states that legitimate rights can be established through a showing that respondent is making “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers”. Numerous [UDRP Panel] decisions have held that directing Internet users to websites featuring revenue generating advertisements or search portals does not constitute “bona fide offering of goods or services” and is “not a legitimate or noncommercial fair use”.
Based upon the above, it is clear that the Respondent has no right or legitimate interest in the domain name <phizer.com>.
Respondent has registered and is using the Domain Name in bad faith.
The Complainant contends that [t]he Respondent, like the public generally, is well aware of the vast and valuable goodwill and reputation represented and symbolized by the PFIZER trademark. As used by Pfizer, the PFIZER mark is recognized and relied upon by medical professionals and the public throughout the world to identify and distinguish Pfizer medications from the goods and services of others. Pfizer also currently has registered and utilizes as a website the domain <pfizer.com>. Respondent, recognizing the world famous renown of the PFIZER mark, recognizing the value of the Internet to Pfizer in enhancing its ability to communicate with its target audience, and recognizing the potential of the PFIZER mark to generate an enormous amount of Internet traffic, registered and has used the domain name <phizer.com>, which typosquats on Pfizer’s PFIZER mark so as to attract to Respondent’s website Internet users who are searching for information about Pfizer and its products, to profit from the Internet traffic through collection of the click-through revenue, and to mislead and confuse consumers as to the origin, source or sponsorship of Respondent’s website and goods. Given the lack of a legitimate basis for such use of Pfizer’ PFIZER mark (or a minor variation thereof) in a domain name, the only reasonable inference is that Respondent has acted with a bad faith intent to profit from Pfizer’s name and reputation.
The Complainant contends that Respondent’s bad faith registration is exemplified by the following:
Respondent, aware of the fame and goodwill associated with the PFIZER mark worldwide, registered a domain name that is intended to be and is substantially confusingly similar to Pfizer’s marks and company name, both visually and aurally. Numerous cases have held that the registration of a domain name that is similar to the well-known PFIZER mark is itself evidence of bad faith registration. Should there be any doubt about Respondent’s prior awareness of and bad faith intent to trade on the PFIZER mark, such awareness and bad faith are confirmed by the references to Pfizer and other pharmaceutical companies on the home page of the “phizer.com” website, as well as the references to Pfizer brand products such as VIAGRA, and other misleading references to “Pfizer Pharmaceuticals”, “Job Search” and “Pharmaceutical Sales Job”. The various links are clearly intended to mislead and confuse patients who are interested in Pfizer, but have mistakenly typed “phizer” rather than “pfizer” in their attempts to reach Pfizer’s “www.pfizer.com” website.
The domain name <phizer.com> deliberately and misleadingly includes almost wholesale Pfizer’s registered mark PFIZER, and consists of a common mistyping of PFIZER (that is, using the letter “H” rather than “F”).
Respondent is not, nor ever has been, a representative of Pfizer or licensed to use the PFIZER mark.
The fourth of the identified “bad faith” factors enumerated in paragraph 4(b)(iii) of the Policy applies with particular force here. The rule states that it is bad faith to register and use a domain name to intentionally attract Internet users to the Respondent’s sites for commercial gain “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of Respondent’s site or “of a product or service” on Respondent’s site. Here, as set forth above, Respondent has registered and is using the <phizer.com> domain name intentionally to misdirect and divert customers looking for information about Pfizer and its products to Respondent’s for-profit portal which links to various on-line pharmacies selling Pfizer’s products as well as non-Pfizer products that are in direct competition with Pfizer’s products. This creates a likelihood of confusion with Pfizer’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s search portal, the on-line pharmacies to which Respondent’s site links, the non-Pfizer products sold on those sites.
Respondent has registered the subject domain name with a manifestly false name, “ZJ”, to conceal its true identity. Respondent’s use of such incomplete and false registration information is further evidence of its bad faith registration of the domain name.
Finally, Respondent’s lack of rights or legitimate interest in the use of these domain names renders the issue of bad faith registration unnecessary to even be considered.
The Complainant contends that [t]he 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.
Respondent’s bad faith use is exemplified here by the following:
(a) PFIZER is a world famous mark that is recognized worldwide by consumers and professionals.
(b) Respondent, with knowledge of Pfizer’s rights in the PFIZER mark, is using the <phizer.com> domain name to host Respondent’s for-profit search portal featuring revenue-generating advertisements and pay-per-click links to online pharmacies that sell Pfizer’s and its competitors’ products, as well as to other for-profit sites.
(c) UDRP panels also repeatedly hold that use of a mark in a domain name to promote the sale of products in competition with the mark owner’s products, as the Respondent here is doing, constitutes bad faith.
(d) As a direct consequence of the Respondent’s conduct, the public will be misled as to the source, sponsorship or origin of the information and products offered on the links connected to Respondent’s website. The Respondent’s purposefully deceptive domain name anticipates, relies on and profits from this consumer confusion or mistake and constitutes bad faith use of the domain name.
(e) The Respondent’s actions are intentional, willful and in bad faith, and were committed with full knowledge of the ownership by the Complainant of the PFIZER trademark and the Complainant’s exclusive rights to use and license such marks.
The Complainant requests that the Domain Name <phizer.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to the Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under Paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under Paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate”. It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the name and mark PFIZER. By way of formal proof, the Complaint includes factual evidence of longstanding trademark registrations.
The question, therefore, is whether the use of the variant “phizer” in the Domain Name <phizer.com> renders this confusingly similar to the PFIZER trademark.
In the Panel’s view, the use of the Domain Name for a website “www.phizer.com”, with prominent links headed “On Line Pharmacy”, “Prescription Medication”, Prescription Discount”, demonstrate that the Domain Name has been chosen precisely for that reason. “Phizer” is a predictable spelling error away from “Pfizer”. The surfer looking for “www.pfizer.com” might not even realize if they mistyped and arrived at “www.phizer.com”. Confusion, in the Panel’s view, is intended and intended to be exploited.
The Panel has no doubt that, for the purposes of the Policy, the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights; and the requirements of Paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a Respondent’s rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial 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 Respondent itself has offered no explanation to justify any claim to legitimate or fair use of the Domain Name.
The Panel observes that this is in fact the second occasion on which the Complainant has filed a Complaint involving the Domain Name <phizer.com>. In the Decision in the earlier case, as noted above, the Complainant was given transfer of the Domain Name, but evidently did not maintain it, leaving it open once again for registration and use by another party.
The Panel concedes that the Complainant might be considered careless to have renounced its earlier control of the Domain Name. It must surely have been entirely predictable that the temptation for a would-be cyberpirate to re-register and mis-use the Domain Name for its close similarity with <pfizer.com>, would be too great to ignore.
However, although with hindsight the Complainant may be thought to have carelessly discarded this Domain Name, this oversight clearly cannot be used to excuse deliberate abuse of the resultant opportunity by the subsequent registrant. By analogy, if one mislaid a key to a side-gate to one’s premises, it would not excuse the finder of that key using it to gain unauthorized access or to steal or divert property from the premises.
In the present case, the evidence clearly suggests that this analogy matches what the Respondent has done. It has found the discarded Domain Name <phizer.com>, recognized it as opening a side-door into the Pfizer business, and used it like a key to profit by diverting customers and business away from the rightful owner of that business.
Consequently, the Panel agrees with the Complainant’s submissions that the evidence can only lead one to conclude that the Respondent has no rights or legitimate interests in respect of the Domain Name; and the requirements of Paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
It is for the Complainant to prove, for the purposes of the Policy, that the Domain Name “has been registered and is being used in bad faith”.
Under Paragraph 4(b) of the Policy, the following are relevant examples of the sort of conduct which a Panel may take (without limitation) as evidence of registration and use in bad faith:
“(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] 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 [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”
The Panel considers the example of paragraph 4(b)(iv) of the Policy most directly applicable in the present case.
In this respect, the Panel finds the following factors from the Complainant’s evidence persuasive:
(a) the longstanding and extensive prior use and registration of the PFIZER mark well before the registration of the Domain Name, and before domain names were even thought of;
(b) the apparent intention of the Respondent “ZJ” to conceal its true identity;
(c) the manifestly misleading exploitation of the Domain Name for its similarity to the PFIZER name and mark;
(d) the use of the Domain Name in a website with pharmaceutical related links to (mis)-direct potential customers seeking Pfizer products at “www.phizer.com” away to competing sources and competing products.
In the Panel’s view the Respondent’s conduct would also be potentially actionable for passing-off and unfair competition in many jurisdictions. It could not reasonably be considered to be bona fide commercial practice.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that Paragraph 4(a)(iii) of the Policy is also met.
For the foregoing reasons, and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <phizer.com> be transferred to the Complainant.