WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Schering-Plough Corporation, Schering Corporation, Schering Plough Ltd. v. Stementali Quemistas Case No. D2009-0841 1. The Parties
Complainant is Schering-Plough Corporation, Schering Corporation and Schering Plough Ltd. of Kenilworth, New Jersey, United States of America; represented by Lowenstein Sandler PC, United States.
Respondent is Stementali Quemistas of Costa Azul, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with Decentdomains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2009. On June 25, 2009, the Center transmitted by email to Decentdomains, LLC a request for registrar verification in connection with the disputed domain name. On July 1, 2009, Decentdomains, LLC transmitted by email to the Center its verification response advising the Center that the disputed domain name had expired on June 22, 2009. The Registrar informed the Center that in accordance with Paragraph 3.7.5.7 of ICANN's Expired Domain Deletion Policy that either Party is invited to contact the Registrar to pay the renewal fee of the disputed domain name. On July 22, 2009 Complainant informed the Center that it had paid the renewal fee for the disputed domain name. The disputed domain name was renewed by the Registrar with an expiry date of June 22, 2010 subject to the provisions of ICANN's Expired Domain Deletion Policy. 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 July 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on August 17, 2009.
The Center appointed Ross Carson as the sole panelist in this matter on August 28, 2009. 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
Complainant is the owner of over 14 U.S. federal trademark registrations on the principal register in the United States for the trademark CLARITIN or trademarks including CLARITIN as the distinctive element. The trademark registrations for or including CLARITIN as the distinctive element were registered in relation to the goods antihistamine preparations and/or related pharmaceutical preparations prior to June 22, 2008 the date of registration of the disputed domain name. The earliest CLARITIN trademark is registered as United States Reg. No. 1,498,292, registered on August 2, 1988 in relation to the goods antihistamine preparations in Class 5. Complainant is also the owner of hundreds of trademark registrations throughout the world for the trademark CLARITIN or trademarks including CLARITIN as the distinctive element.
Complainants have used the CLARITIN trademarks since at least as early as 1998, as trademarks and trade names for allergy medications known as loratadine. In 2006, more than 40 million units of Claritin preparations were sold in the United States alone. In 2007, more than 43 million units of Claritin preparations were sold in the United States alone. In 2006 and 2007, Complainant spent over USD 150,000,000 and USD 190,000,000, respectively, on the marketing and promotion of the CLARITIN preparations.
Complainants currently own numerous top-level and country code domain names incorporating the CLARITIN trademark, including, but not limited to, , , , , , , , , , , and . In 2006, there were approximately 576,000 visitors to the website, averaging 1,578 visitors per day. In 2007, there were approximately 954,000 visitors to the website, averaging 2,613 visitors per day.
Respondent registered the disputed domain name on June 22, 2008. Respondent currently uses the disputed domain name to operate a website titled “Www - wwwclaritin Resources and Information.” This website is a landing page featuring product categories and links to third party competitor sites. 5. Parties' Contentions A. Complainant A.1 Identical or Confusingly Similar
Complainant states that as found in paragraph 4 above it is the owner of many trademark registrations throughout the world for or including the trademark CLARITIN registered in relation to antihistamine and related pharmaceutical preparations. The trademark has been widely used in many countries throughout the world and is a well- known trademark in relation to the goods for which it is registered and used.
Complainant submits that Respondent's domain name is confusingly similar to Complainant's registered trademarks for or including CLARITIN. The disputed domain name consists of Complainant's well-known registered trademark, CLARITIN preceded by the common abbreviation for World Wide Web “www”. Complainant submits that the absence of a period after “www” is an obvious misuse of the abbreviation for “world wide web”. Complainant states that the use of obvious typos and misspellings increases, rather than prevents, confusion. See Harrah's Las Vegas, Inc. v. Dotsan, NAF Claim No. FA109715 (finding confusingly similar to the HARRAH'S mark and stating that “an obvious misspelling of the famous and distinct HARRAH'S mark does not defeat a confusingly similar claim”); Scholastic Inc. v. Applied Software Solutions, Inc.,WIPO Case No. D2000-1629 (minor one-letter changes do not prevent confusion). A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that there is no evidence to suggest that, before any notice to Respondent of the dispute, Respondent made use of the domain name in connection with a bona fide offering of goods or services.
Complainant further states that there is absolutely no evidence that Respondent is or has ever used the domain name in any legitimate noncommercial or fair use basis. There is no evidence that Respondent, as an individual, business, or other organization, has ever been known by the name “Claritin” or any name similar thereto.
Complainant further submits that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, and the only possible use of the disputed domain name is to misleadingly attract users to its website for its own commercial gain. Respondent's website is a landing page featuring product categories and pay-per-click links to third party competitor sites. Each time a user is redirected by Respondent's website via a pay-per-click link, Respondent receives a payment. Complainant further states that Respondent's behavior constitutes “typosquatting,” by registering a domain name that is confusingly similar to Complainants trademark CLARITIN and this use does not constitute a legitimate business use under the Policy. See e.g., JELD-WEN, Inc. v. Texas International Property Associates, NAF Claim No. FA 882053; PHE, Inc. v. Chris Calnek,WIPO Case No. D2006-1612; and ESPN, Inc. v. XC2,WIPO Case No. D2005-0444.
Complainant further states that where, as here, Complainant's marks and name are so widely recognized, and have been used in connection with pharmaceuticals for so many years, there can be no legitimate use by Respondent. See, Nike Inc. v. B.B. de Boer,WIPO Case No. D2000-1397, where the panel concluded that the respondent had no legitimate rights, noting that it was difficult to see how the respondent could not have known about the trademark NIKE. See also, Victoria's Secret, et al. v. Atchinson Investments LTD., NAF Claim No. 96496 (finding respondent could not have been unaware that VICTORIA'S SECRET was a famous mark and thus respondent had no legitimate rights to register a domain name using the mark. A.3 Registration in Bad Faith
Complainant is the owner of numerous trademark registrations in the United States, Mexico and throughout the world for trademarks for or including CLARITIN registered in relation to antihistamine preparations and related pharmaceutical preparations. The registration dates extend as far back as August 22, 1988. Complainants state that as a result of extensive advertising and use of the trademark CLARITIN in association with antihistamine and related pharmaceutical preparations prior to the date of registration of the disputed domain name on June 22, 2008, Respondent must have been aware of Complainant's trademarks for CLARITIN prior to registration of the disputed domain name.
Complainant further states that Respondent currently uses the disputed domain name to operate a website titled “Www wwwclaritin Resources and Information.” This website is a landing page featuring product categories and pay-per-click links to third party competitor sites. Respondent receives payment for every user that is directed through the pay-per-click links. Complainant further submits that evidence that a third party “rips off” or “steals” a trademark owner's mark is evidence of secondary meaning. See, Osem Food Ind., Ltd. v. Sherwood Foods, Inc., 917 F.2d 161; 16 U.S.P.Q. 2d 1646 (United States Court of Appeals for the Fourth Circuit November 20, 1990) (copying creates not only a presumption of secondary meaning, but a presumption of likelihood of confusion). Complainant states that it precisely because of the association with Complainant's CLARITIN trademarks that Respondent registered the disputed domain name. A.4 Used in Bad Faith
Complainant states that Respondent uses the disputed domain name to divert Internet users to a pay-per-click landing page associated with the disputed domain name featuring pharmaceutical preparations of Complainant's competitors. Bad faith is found when “it appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned website for commercial gain due to confusion with Complainant's mark.” I v. Tenenbaum Ofer,WIPO Case No. D2000-0075.
Complainant further submits this is a classic case of typosquatting. “Typosquatting is inherently parasitic and of itself evidence of bad faith”. National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011 (involving a misspelling of “league” in ); see also, Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039; Identigene, Inc. v. Genetest Laboratories,WIPO Case No. D2000-1100. The disputed domain name includes Complainant's trademark CLARITIN, with the letters “www” added before the mark. Because most domain names begin with “www” followed by a period followed by the name of the Web site, the disputed domain name is calculated to divert Internet traffic of end users seeking to find the website of Complainant, who accidentally omit the period after the “www” prefix. Respondent's registration is intended to disrupt and divert Complainant's business and such registration was undertaken in bad faith.
Complainant states that all of these facts indicate that the Respondent has clearly registered the disputed domain name in bad faith within the meaning of paragraph 4(b)(iii) and (iv) of the Policy, and establish that this Complaint satisfies the requirements under paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the 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) 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 Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which the Complainant has rights.
Complainant has established that that it is the owner of registered trademarks for and including CLARITIN registered on the Principal Register in the United States in relation to the goods described in paragraph 4 above. Complainant is the owner of United States Registration No. 1498292 for the trademark CLARITIN registered in relation to antihistamine preparations on August 2, 1988 Complainant is also the owner of trademark registrations for or including CLARITIN registered in many other countries including the Mexico where Respondent is located. Complainant's registered trademarks were registered many years prior to the date of registration of the domain name in dispute on June 22, 2008.
The domain name in dispute is comprised of the generic acronym “www” for “world wide web” and Complainants' trademark CLARITIN. The acronym “www” is normally followed by a period, but is absent in the disputed domain name.
A number of previous UDRP panels have found that the addition of common terms to a complainants trademark is not sufficient to negate confusing similarity between the domain names and that mark. See, Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yong Li, WIPO Case No. D2004-0296 (“the Complainant's trademark `COSTCO' is embodied in the disputed domain name and the addition of the generic term such as ‘tires' is descriptive and does not mitigate the phonetical and visual confusing similarity.”).
The absence of the “.” following the acronym “www” is an obvious typo of the descriptor “www.”. See Harrah's Las Vegas, Inc. and Scholastic Inc. v. Applied Software Solutions, Inc., supra.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. WIPO UDRP panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see, Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The disputed domain name comprised of Complainants trademark CLARITIN in combination with the descriptive term “www” and the top level domain descriptor “.com” is confusingly similar to Complainant's CLARITIN trademark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant's registered trademark.
The unauthorized use by Respondent of the disputed domain name which is confusingly similar with Complainant's trademark CLARITIN in association with a landing page featuring related pharmaceutical preparations of Complainant's competitors is not a legitimate use of the domain name. Respondent's action evidences a clear intent to deceive consumers, and trade off of Complainant's goodwill by creating an unauthorized association between it and Complainant's CLARITIN trademark. See, Sanrio Company Ltd. And Sanrio v. Neric Lau, WIPO Case No. D2000-0172 (“Respondent cannot be said to have legitimately chosen the SANRIOSURPRISES.COM domain name unless it was seeking to create an impression of an association with Complainants. Since there is no such authorized association, Respondent's interests in the domain name cannot be said to be legitimate”).
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is met, the burden of proof shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the disputed domain name has been registered and used in bad faith. C. 1 Registered in Bad Faith
Complainant is the owner of numerous trademark registrations in the United States, Mexico and throughout the world for trademarks for or including CLARITIN registered in relation to antihistamine preparations and related pharmaceutical preparations. The registration dates for the trademark CLARITIN extend as far back as August 22, 1988. As a result of extensive advertising and use of the trademark CLARITIN in association with antihistamine and related pharmaceutical preparations for many years, the trademark CLARITIN was a well known trademark in relation to Complainant's antihistamines and related pharmaceutical preparations prior to registration of the disputed domain name by Respondent on June 22, 2008.
The disputed domain name, , consists of Complainant's registered trademark CLARITIN in combination with the generic term “www” and the top level domain descriptor “.com”. The home page associated with the disputed website features a series of links to websites of competitors of Complainant offering competitive pharmaceutical preparations. It is difficult to conceive how Respondent could have created the disputed domain name without prior knowledge of Complainant's registered trademark for CLARITIN. Respondent was invited to file a Response. Respondent's failure to explain any reason for choosing the domain name strengthens the Panel's inference that Respondent registered the disputed domain name with knowledge of Complainant's antihistamine and related pharmaceutical preparations being offered in association with Complainant's trademark CLARITIN.
The Panel finds that Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Respondent uses the disputed domain name to divert Internet users to a pay-per-click landing page associated with the disputed domain name featuring competitive pharmaceutical preparations of Complainant's competitors. Bad faith is found when “[it] appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned web site for commercial gain due to confusion with Complainant's mark.” Info S, Inc. v. Tenenbaum Ofer,WIPO Case No. D2000-0075.
The disputed domain name includes Complainants' trademark CLARITIN, with the letters “www” added before the mark. Because many domain names begin with “www” followed by a period followed by the name of the web site, the disputed domain name is calculated to divert Internet traffic of end users seeking to find the website of Complainant, who accidentally omit the period after the “www” prefix. This is a classic case of typosquatting. See, National Association of Professional Baseball Leagues, Inc., d/bla Minor League Baseball ; Lexar Media, Inc.; and Identigene, Inc., supra. Respondent's registration is intended to disrupt and divert Complainant's business and such registration was undertaken in bad faith.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has clearly registered the disputed domain name in bad faith within the meaning of paragraph 4(b)(iii) and (iv) of the Policy, and that Complaint satisfies the requirements under 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 name, be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: September 8, 2009
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