Ramzan Arif, Vertex Medical (pvt) Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2020. On September 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.
On September 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 14, 2020.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2020.
On October 5, 2020, the Respondent requested the extension of the due date for Response. The Center granted the extension of the due date for Response to October 18, 2020. The Respondent submitted its response on October 17, 2020.
The Complainant is a corporation incorporated under the laws of the Commonwealth of Massachusetts, United States. It is a manufacturer of pharmaceutical products, publicly traded on the NASDAQ exchange and a member of the NASDAQ-100 Index. The Complainant’s cystic fibrosis drug, Orkambi, was reported in the media to be on target to generate sales of USD 1 billion in 2016.
The Complainant has used the VERTEX mark in connection with pharmaceutical research since November 4, 1989 and in connection with pharmaceutical preparations since July 13, 1994.
The disputed domain name consists of two common dictionary words. “vertex” is a generic medical term meaning “the highest point; the topmost point of the vault of the skull; the crown of the head”. “Medical” is a broad category relating to the Respondent’s products. The Respondent was the first to use this unique combination. The Complainant has no exclusive rights to the use of said generic words and no standing in this proceeding. The Respondent’s use is protected under paragraph 4(c)(ii) of the Policy.
The VERTEX mark is not highly distinctive, given it is a generic word defined in a medical dictionary. It was adopted in good faith by the Respondent and no license or permission from the Complainant is needed. The decision in Vertex Pharmaceuticals Incorporated v. Abdul Gafoor, Sunshine Cargo, supra, is not relevant as the domain name concerned was similar to the Complainant’s name and the Complainant owned a trademark in the Respondent’s jurisdiction. Here, the Complainant has no presence or active business in Pakistan even after 20 years of the Respondent’s business using the name “Vertex”.