Intellectual Property Update - Pfizer gives domain squatter the jab

Now, more than ever, Pfizer Inc. (Pfizer) is a household name. The celebrated “Pfizer vaccine” used to combat the spread of Covid-19 is the subject of (almost) every news broadcast and water cooler chat across the globe.

On 2 December 2020, Pfizer announced that its vaccine (developed in collaboration with partner BioNTech SE (BioNTech)) had been granted temporary emergency authorisation in the United Kingdom. That same day, WhoisGaurd Inc. (WhoisGuard) registered the domain name  (Domain) without obtaining either Pfizer or BioNTech’s permission.

Pfizer took issue with WhoisGaurd’s registration of the Domain. Relying on the terms of the Uniform Domain-Name Dispute-Resolution Policy (Policy), Pfizer applied to the WIPO Arbitration and Mediation Center (Center) for an order that the Domain be transferred from WhoisGuard to Pfizer.

Pfizer’s complaint relied upon, in part, its registered trade marks for the word “Pfizer”, including in the United States of America.

To succeed in its claim, Pfizer had to persuade the appointed panellist (Panellist) that:

  • the Domain was identical or confusingly similar to Pfizer’s trade marks or service marks;
  • that WhoisGuard had no rights or legitimate interest in respect of the Domain; and
  • the Domain was registered and used in bad faith.

Despite the Domain including the word “BioNTech”, over which Pfizer did not have rights, the Panellist ruled that the Domain was confusingly similar, as it included the whole of Pfzier’s trade mark “Pfizer”.

WhoisGuard could not establish that it had rights or a legitimate interest in the Domain. The Domain directed users to a parked page offering to sell the Domain. Although WhoisGuard argued that it had intended to use the Domain to create a blog providing information in relation to the “Pfizer vaccine”, the Panellist was not persuaded. Accordingly, WhoisGuard could not establish a legitimate interest in the Domain.

Further, given the conspicuous timing of the Domain registration, Pfizer’s global prominence and the clear intention to sell (rather than use) the Domain, resulted in a finding that the Domain’s registration had been in bad faith.

The final consideration was whether the Panellist could order transfer of the Domain to Pfizer, in circumstances where the Domain also included the name of a third party (BioNTech). The Panellist decided that the transfer could be made, and that such transfer would not prejudice any rights BioNTech may have to bring a claim against Pfizer, be it under the Policy or otherwise.

Lavan comment

Although Pfizer was able to obtain a transfer of the Domain, it was required to file a complaint and incur legal fees in doing so. For many businesses, this might not be a commercial option, with the best solution being to purchase the domain in question from the squatter.

Prevention is the best cure in respect to domain disputes. It is imperative to purchase any desired domains in a timely fashion and keep across any upcoming domain renewals. The Policy is available, however, to obtain a transfer where a negotiated option is not viable.

If you require assistance in this area, do not hesitate to contact Iain Freeman or Andrew Sutton.