WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck & Co. Inc. v. Ekansh, Ekansh Patel, Divyesh Patel
Case No. D2008-1075
1. The Parties
Complainant is Merck & Co. Inc., Whitehouse Station, New Jersey, United States of America, represented by D.P. Ahuja & Co., India.
Respondents are Ekansh, Ekansh Patel, and Divyesh Patel, Surat, Gujarat, India (collectively, “Respondent”).
2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2008. On July 15, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 15, 2008, Registrar transmitted by email to the Center its verification response, advising of the name of the registrant of the Disputed Domain Name. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 30, 2008. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 21, 2008.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on August 25, 2008. 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
For the mark JANUVIA (the “JANUVIA Trademark”), Complainant has many trademark registrations worldwide in association with pharmaceutical preparations including: Registration No. 1352493 issued on April 21, 2005 in India; and Registration No. 3261637 issued on July 10, 2007 in the United States of America.
Respondent registered the Disputed Domain Name on August 4, 2006.
Complainant registered the domain names and on May 4, 2005.
5. Parties’ Contentions
A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar with the JANUVIA Trademark in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and uses the Disputed Domain Name in bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions and is in default.
6. Discussion and Findings
One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules, and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it and a reasonable opportunity to respond (see e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Section 3, Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that “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.” Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.
To succeed in accordance with paragraph 4(a) of the Policy, Complainant must prove that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name is registered and is being used in bad faith. Each requirement will be considered in turn below.
A. Identical or Confusingly Similar
Complainant contends that it has rights in the JANUVIA Trademark and that the Disputed Domain Name is confusingly similar thereto.
Complainant contends as follows:
“...an internationally reputed, research driven pharmaceutical company based in [t]he United States of America and is engaged in the business of inter alia, developing, manufacturing and marketing of vaccines and medicines in over 20 therapeutic categories....The Complainant is a worldwide leader in vaccine production and is the third largest US pharmaceutical company....The Complainant is a worldwide leader in vaccine research and has major research centres located in the United States, Europe, and Japan, and has 25 manufacturing plants in the United States, Europe, Central and South America, the Far East, and the Pacific. The Complainant’s products are marketed in practically every country of the world. The Complainant has a long and distinguished record of scientific excellence, discovering drugs and vaccines that have transformed the practice of medicine and saved and improved the lives of millions....The mark/name JANUVIA was adopted by the Complainant to distinguish a once-daily prescription pill which helps lower blood sugar levels in people with type 2 diabetes. It is a prescription diabetes medicine called a DPP-4 inhibitor, which enhance the body’s own ability to control blood sugar levels. and subsequently, the mark/name JANUVIA has become distinctive of the Complainant all over the world because of its extensive use. Any reference to the mark JANUVIA in most countries of the world would draw an immediate reference to the Complainant or its subsidiaries and associate companies and none else....JANUVIA is sold in more than 39 countries, and the world wide sales for the Complainant’s JANUVIA for the year 2007 amounted to US$667.5 million. The mark JANUVIA of the Complainant is registered as a trade mark in over 100 countries of the world, including in the USA, the UK, France, Germany, Benelux, Russian Federation, Singapore, Africa, Australia, and also as a CTM trademark....With a view to providing its consumers and the public at large accurate and correct information about itself as well as information about its products and services under the mark JANUVIA, the Complainant hosts and maintains the websites www., and “www.” where JANUVIA has been extensively promoted.”
These last two websites are what Complainant calls its “official websites.”
Complainant further contends that the word JANUVIA “...forms an essential part...” of the Disputed Domain Name and that “[a] man of average intelligence and imperfect recollection would be confused between [the Disputed Domain Name and the JANUVIA Trademark] as they are identical.”
The Panel prefers, in Complainant’s immediately preceding contention, to replace “…as they are identical” with – as they are confusingly similar because the only difference is the additional term “buy” that does not alter the distinctive character of the JANUVIA Trademark–, and otherwise, the Panel accepts Complainant’s contentions, as reasoned and as supported by its evidence.
The Panel concludes that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends (and the Panel accepts as uncontroverted and convincing) that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant contends that Respondent “[is] not doing any business under the name JANUVIA” and that it has no trademark rights or legitimate interests in the Disputed Domain Name due to Complainant’s long prior use of the JANUVIA Trademark. On this last contention, Complainant is presumably referring to its contentions (accepted by the Panel) in Section 4 above (the registration of its JANUVIA Trademark in India, where Respondent is domiciled, more than one year before Respondent registered the Disputed Domain Name) and Section 6A above (the worldwide distinctiveness of its JANUVIA Trademark).
Respondent has provided no arguments or evidence of rights or legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal rights in the JANUVIA Trademark (and in particular, those provided by its aforesaid trademark registrations), Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any Response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, regarding the circumstances in which Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name, do not exist either.
The Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
Complainant contends that Respondent is “…deliberately and intentionally attempting to create a strong likelihood of confusion for the Internet users as to the source, sponsorship, affiliation, and endorsement to get financial gains”.
Complainant further contends that a study of Respondent’s website, “www.” (i.e., using the Disputed Domain Name) clearly shows its mala fide intent: “The design and contents of the offending website have been carefully conceived to resemble that of the Complainant’s official websites for JANUVIA. All the pages also prominently display the well-known and very visible ‘Januvia’ logo”.
Complainant further contends that Respondent made false representations to Registrar when it stated that registering the Disputed Domain Name would not infringe or violate the trademark rights of others (and especially that of Complainant’s trademark registration in India, the domicile of Respondent, more than one year before the Disputed Domain Name was registered).
Complainant further contends that, notwithstanding Respondent’s constructive notice of Complainant’s prior rights in the JANUVIA Trademark and probable actual knowledge thereof, Respondent registered the Disputed Domain Name to intentionally attract Internet users to its website “www.” in an unlawful attempt to attract Internet visitors from Complainant’s official websites (being evidence of bad faith under paragraph 4(b)(iv) of the Policy).
The Panel accepts that Respondent registered and is using the Disputed Domain Name in bad faith, as reasoned and as supported by Complainant’s evidence.
The Panel concludes that the third requirement of the Policy is met.
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 Disputed Domain Name be transferred to Complainant.
Mark Ming-Jen Yang
Sole Panelist
Date: September 3, 2008
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