WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Schering-Plough Corporation, Schering Corporation v. Dan Myers Case No. D2008-1641 1. The Parties
Complainants are Schering-Plough Corporation and Schering Corporation, of Kenilworth, New Jersey, United States of America, represented by Day Pitney LLP, United States of America.
Respondent is Dan Myers, London, the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2008. On October 29, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On October 29, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2008.
The Center appointed Nathalie Dreyfus as the sole Panelist in this matter on December 5, 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
Complainants own the CLARINEX and CLARITIN trademark and trade names.
Clarinex is a prescription-only antihistamine used to help relieve the symptoms and year-round allergies caused by exposure to indoor allergens. Clarinex is marketed by a wholly owned subsidiary of Schering-Plough Corporation namely Schering Corporation.
Complainants have been used the CLARINEX marks in the United States of America (“US”) since at least as early as September 2000. CLARINEX products are widely distributed in United States of America. Complainants own several US Trademark Registrations for CLARINEX, and inter alia US Trademark Registration 2,455,742 of May 29, 2001.
Complainants own the domain name incorporating the mark CLARINEX.
Claritin is a nonsedating antihistamine marketed by a wholly owned subsidiary of Schering-Plough Corporation, namely Schering-Plough HealthCare Products Inc.
CLARITIN marks have been used in the US and international commerce since at least as early as November 1987. Complainants own US trademarks CLARITIN, as well as other national trademark registrations for CLARITIN.
Complainants own numerous domain names incorporating the mark CLARITIN, among which .
The disputed domain names and were registered by Respondent on February 20, 2003 and on April 19, 2002, respectively. 5. Parties' Contentions A. Complainants
Complainants contend that Respondent uses the domain names to provide links to third-party vendors of Claritin and Clarinex, as well as a variety of third-party pharmaceutical products. Respondent is the owner of numerous domain names. The domain names are identical or confusingly similar to the marks. Respondent has no rights or legitimate interests in the domain names. Respondent registered and is using the domain names in bad faith. B. Respondent
Respondent did not reply to Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainants have established rights in their CLARITIN and CLARINEX trademarks through registration and use.
The disputed domain names differ from Complainants' marks by the elimination of a single letter in each case.
It is clear that they are not identical to Complainants' trademarks. However, the disputed domain names may be confusingly similar with Complainants' trademarks.
As the disputed domain names only differ from Complainants' trademarks by a single letter, they may be regarded as common mispelling of Complainant's marks. See Wachovia Corporation v. American Consumers First,WIPO Case No. D2004-0150, A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517.
The aural and visual comparison of the domain names with a complainant's trademark is an important part of the issue of confusing similarity. In addition, the content of a website may provide indication as to a respondent's targeting of a specific trademark through the domain name chosen. Accordingly, the context in which the domain names are being used may be helpful to assess confusing similarity (see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441). Here, the disputed domain names direct to webpages displaying commercial links reproducing Complainants' trademarks. The Panel thus considers that Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainants' websites, a practice known as “typosquatting” and condemned in a number of WIPO panel decisions. (See Playboy Enterprises International Inc. v. SAND WebNames - For Sale,WIPO Case No. D2001-0094, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587, and Pig Improvement Company, Inc. v. Platinum Net, Inc.,WIPO Case No. D2000-1594, and The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM,WIPO Case No. D2001-1492).
Given the foregoing, the Panel finds that the disputed domain names and the Complainants' marks are confusingly similar for purposes of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is commonly understood that a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names. However, as such information is primarily within the knowledge of the respondent, once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests.
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights and interests in a contested domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use or demonstrable preparations to use, the contested domain names or names corresponding to contested domain names in connection with a bona fide offering of goods or services before any notice to them of the dispute; or
(ii) they (as individuals, a business, or other organizations) have been commonly known by the contested domain names, even if they acquired no trademark or service mark rights; or
(iii) they are making a legitimate non-commercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, Respondent does not appear to be known by the disputed domain names and is not operating any business under the domain names.
The domain names direct to websites displaying commercial links providing click-through revenue to Respondent and offering Internet users to purchase Complainants' Clarinex and Claritin products, as well as other pharmaceuticals.
Given the foregoing, the Panel concludes that Complainants have made a prima facie showing under paragraph 4(a)(ii) of the Policy, requiring Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain names. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; and Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020. As indicated previously, Respondent did not reply to Complainants' contentions.
For all the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names in dispute under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
Complainants have demonstrated that their registration and use of the marks CLARINEX and CLARITIN were prior to the registration of the disputed domain names. Complainants have also underlined their extensive use of both Clarinex and Claritin.
The Panel finds that the circumstances of this case indicate that it is likely that the Respondent registered the domain names in dispute with actual knowledge of Complainants' trademarks. The Panel thus concludes that Complainants have established that Respondent registered the domain names in dispute in bad faith.
The disputed domain names direct to commercial links offering the products of Complainants, as well as the products of Complainants' competitors. These commercial links provide click-through revenues to Respondent. The Panel finds that the proximity between the disputed domain names and Complainants' trademarks, as well as the links on the litigious websites are likely to divert the traffic to Complainants' websites, to create confusion for Internet users, and evidence the intention of Respondent to unduly benefit from the reputation of Complainants' trademarks.
Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 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 names and be transferred to Complainants.
Nathalie Dreyfus
Sole Panelist
Dated: December 19, 2008
Full & Egal Universal Law Academy