WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Merck Sharp & Dohme Corp v. 唐王中拓科技（北京）有限责任公司 Case No. D2009-1782 1. The Parties
The Complainant is Merck Sharp & Dohme Corp of New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
The Respondent is唐王中拓科技（北京）有限责任公司 of Beijing, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2009. On December 28, 2009, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp. a request for registrar verification in connection with the disputed domain name. On January 4, 2010 and January 7, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On January 7, 2010, the Center transmitted by email a communication to the parties regarding the language of proceedings in both Chinese and English. On January 8, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings. In response to a notification by the Center, the Complainant filed an amended Complaint on January 12, 2010. The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on January 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2010. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on February 3, 2010.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on February 9, 2010. 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
The Complainant is a United States (“U.S.”) company and is one of the world's largest pharmaceutical companies. The Complainant focuses its research efforts in the therapeutic areas of cardiovascular, diabetes, obesity, bone, respiratory, immunology, dermatology, infection, infectious disease, oncology, neurosciences, ophthalmology, women's health and endocrine, spending 4.8 billion (USD) on research and development in each of 2006, 2007 and 2008. In 2008 alone, the Complainant had net sales of over 23 billion dollars (USD), selling products in over 140 different countries.
The Complainant is the owner of 12 U.S. federal trademark registrations and approximately 400 worldwide trademark registrations for the trademark MERCK and trademarks incorporating the MERCK mark. The Complainant also owns trade names incorporating the MERCK name. The Complainant has produced the United States Patent and Trademark Office database printouts evidencing its U.S. registrations and a list of its foreign registrations as exhibit.
In addition, the Complainant currently owns over 700 top-level and country code domain names incorporating the MERCK family of marks, including ,, and . The Complainant has produced a list of various domain name registrations as exhibit.
The disputed domain name was registered on December 16, 2008. The Respondent is an entity with an address in China.
The website at the disputed domain name is titled as “Where Patients Come First.” This phrase itself is a marketing slogan which the Complainant has used in connection with its business and the Complainant also owns several trademark registrations around the world for the slogan including the United States.
The Respondent's website provides pay-per-click (“PPC”) advertising links based on well-known trademarks relating to products offered by the Complainant, such as “Propecia” (a hair restoration medication for men), as well as related ailments such as “Alopecia” (a health condition causing hair loss). When users click on any of these links, the site provides further links to the sites of third parties unrelated to Complainant. 5. Parties' Contentions A. Complainant
The Complainant identifies itself one of the world's largest pharmaceutical companies. MERCK is a famous brand for pharmaceutical products and scientific and medical reference materials.
The Complainant contends that the disputed domain name is virtually identical and confusingly similar to the Complainants' famous MERCK marks. The Respondent appropriated the disputed domain name with the intent of causing confusion, mistake, and deception as to the Complainant and Respondent.
The Complainant further contends that the Respondent has no legitimate interest in the disputed domain name. The reason is that the Respondent registered the disputed domain name well after the Complainant had established its rights in the MERCK marks. The Respondent is not commonly known by the disputed domain name and the Respondent has never conducted a legitimate offline business under the name “Merkc.” The Respondent has been granted no license or other rights to use Complainant's marks and is not making a legitimate non-commercial or fair use of the disputed domain name.
With regard to use and registration in bad faith, the Complainant argues that this is a classic case of typosquatting, which is inherently parasitic and of itself evidence of bad faith. The Respondent's registration and use of the disputed domain name is disrupting and diverting the Complainant's business and such registration and use constitutes bad faith. The Complainant contends that the Respondent's prominent use of the Complainant's slogan “Where Patients Come First” as the title of the landing page on the Respondent's site as well as trademarks associated with the Complainant's products was deliberately calculated to divert consumers searching for the Complainant and its products to the Respondent's unauthorized site. The Complainant further argues that this is a classic case of initial-interest confusion.
Moreover, upon information and belief, the Complainant contends that the Respondent is an established and repeated transgressor in this field and has registered over 400 domain names that are misspelled versions of well-known brands, including , and .
The Complainant further contends that the Respondent has no authorization from the Complainant to use the Complainant's famous trademarks, which is not bona fide. B. Respondent
The Respondent did not file any formal response by the due date. 6. Discussion and Findings 6.1 Language of the proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
It is noted that the language of the registration agreement for the disputed domain name is Chinese and the default language of the proceedings would have been Chinese. The Complainant asserts that English should be the language of the proceeding and mainly relies on the following arguments with references of prior UDRP decisions to support the request:
(1) The Respondent's website that bears the disputed domain name is entirely in English. Moreover, the Registrar in this case, provides its registration agreement in English.
(2) From the fluent English displayed on the Respondent's website it appears that the Respondent is capable of communicating in English. Further, the Respondent was adequately familiar with English to target a U.S. based company and register as a domain name. On the other hand, the Complainant is not in a position to participate in these proceedings in Chinese without a great deal of additional expense, burden and delay should translation be required.
Having considered the above, the Panel is reluctant to accept the Complainant's argument that the Registrar in this case, provides its registration agreement in English. There was insufficient information to determine whether the English version of the registration agreement was made available by the Registrar to the Respondent or even known to the Respondent. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293. In addition to the arguments and views canvassed by the Complainant, the Panel notes that:
On January 7, 2010, the Center notified the parties in both English and Chinese that the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Chinese and provided the parties with detailed instructions on the language of the procedure. The Respondent did not object to the language of the procedure being English.
The Complainant claims that upon information and belief, the Respondent has registered over 400 domain names that are misspelled versions of well-known brands, including , and . A search through the WhoIs database of Xiamen eName Network Technology Corporation Limited dba eName Corp., which is the same registrar with the disputed domain name, shows that the Respondent indeed owns domain names and . The Panel infers that the Respondent is familiar with English to target U.S. based companies and register domain names incorporating the names of such companies.
The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. See Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Pa,WIPO Case No. D2003-0989. And it is recognized that the UDRP should provide an inexpensive and expeditious avenue for resolution of domain name disputes. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. Ltd.,WIPO Case No. D2008-0293.
Paragraph 11(a) reserves to the Panel the authority to determine the language. In view of all the above circumstances and the Complainant's request, the Panel finds that there will be no prejudice caused to the Respondent if the proceedings are conducted in English. A selection of Chinese language as the language of proceedings in the present case would be a burden to the Complainant in terms of translation expenses, and would also cause undue delay to the procedure.
As a result, the Panel determines that English shall be the language of the proceeding and decides to render the decision in English under the Policy. 6. 2 The Panel's decision in relation to the disputed domain name
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has adduced evidence before this Panel to show that the Complainant has rights in the trademark MERCK.
In this case, the disputed domain name differs from the Complainant's trademark only by changing the order of the last two letters “c” and “k” at the end of the word. The specific nature of Internet domain names is to type a keyboard to insert words into a browser. The close misspelling or a typo graphical error by only changing the order of two letters of a trademark can in general not prevent a finding of confusing similarity.
Here, the Panel holds that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to register or use the trademark MERCK. The Respondent is not commonly known by the disputed domain name.
The Complainant asserts that the 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 would be to misleadingly use it to attract customers to its website for its own commercial gain.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Respondent has failed to file a Response to prove its rights or legitimate interests under paragraph 4(c) of the Policy, to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. 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, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name: or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Given the extensive operations and sales, the MERCK mark has acquired substantial recognition in its field. It is noted that the website at the disputed domain name provides links relating to products offered by the Complainant such as “Propecia” and “Alopecia” as well as links to pages providing competing products to the Complainant's products. The fact that the website uses these terms and other registered trademarks which the Complainant has used in connection with its business indicates the Respondent's prior knowledge with respect to the Complainant and the Complainant's trademark rights. This deliberate use of the Respondent of a domain name confusingly similar to the Complainant's trademark indicates bad faith.
When users click on any of the links displayed on the website at the disputed domain name, the site provides further links to sites of third parties unrelated to the Complainant. The Respondent is presumed to operate pay-per-click (“PPC”) advertising links on the web site to intentionally attract Internet users to its website and third party's websites for commercial gain, which falls under paragraph 4(b)(iv) of the Policy.
The failure of the Respondent to make a response to the Complaint further supports an inference of bad faith.
The fact that the Respondent registered the disputed domain name as well as other domain names, which appear to be close misspellings of famous brands, indicates the Respondent's engagement in a pattern of conduct in registering domain names comprising famous brands. This and the typosquatting itself in this Panel's view both constitute bad faith.
In light of the above reasons, the Panel therefore finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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.
Jacob (Changjie) Chen
Sole Panelist
Dated: February 22, 2010
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