Complainant is Merck Sharp & Dohme Corp. and its affiliates and subsidiaries of New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
Respondent is M, Privacy--P of Shanghai, the People’s Republic of China / Rampe Purda of Hailuoto, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2011. On January 26, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2011, 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 Complainant on February 1, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 1, 2011. On February 1, 2011, the Center also transmitted an email to the parties in both Finnish and English language regarding the language of proceedings. On February 3, 2011, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on February 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 1, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on March 15, 2011. 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 one of the world’s largest pharmaceutical companies and has used its MERCK mark since at least 1887. According to the files and to the information provided, Complainant owns 12 trademark registrations for the MERCK family of marks in United States of America and one pending trademark application. There is evidence in the files confirming that the first registration for the MERCK mark in United States was granted on February 15, 1916.
Complainant is the owner of almost 400 trademark registrations incorporating the MERK marks all over the world. Complainant owns over 700 top-level and country code domain names incorporating the MERCK family of marks, including, but not limited to, , , and .
The disputed domain name was registered on October 20, 2009 and has been used to host a website that features pay-per-click links, including links related to the pharmaceutical industry. 5. Parties’ Contentions A. Complainant
Complainant alleges that it is one of the world’s largest pharmaceutical companies and informs that it has used its MERCK mark since at least 1887 to identify its services and products.
Complainant informs that it is the owner of almost 400 trademark registrations incorporating the MERK marks all over the world. Complainant owns over 700 top-level and country code domain names incorporating the MERCK family of marks, including, but not limited to, , , and .
Complainant alleges that, from January 1, 2009, through November 30, 2009, there were more than 3,746,141 unique visitors to its website, averaging over 11,215 unique visitors per day.
Complainant also alleges that MERCK is a well-known and famous mark for pharmaceutical products all over the world.
Complainant states that the disputed domain name is confusingly similar to its MERCK trademark, since this domain name reproduces it integrally, with the mere addition of the phrase “edtrials”. Complainant completes, affirming that the addition of the “.com” gTLD does not remove the confusing similarity between the disputed domain name and its MERCK mark.
Complainant also alleges that Internet users are likely to believe that the disputed domain name is related to, associated with, or authorized by it. Complainant also affirms that Respondent registered this domain name with the intent of misleading Internet users.
Complainant contends that Respondent is not commonly known by the disputed domain name and that it is not making a legitimate noncommercial or fair use of the disputed domain name. So, Complainant concludes that the only possible use of the disputed domain name would be to misleadingly use it to attract customers to Respondent’s website for its own commercial gain.
In this scenario, Complainant affirms that Respondent's current use of the disputed domain name as a page featuring pay-per-click links, including links relating to the pharmaceutical industry, is evidence of Respondent's intent to mislead.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith, since Respondent is using it, which is confusingly similar to trademark (in this case, a Complainant’s trademark), in order to drive traffic to a website and generate revenue. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Complainant requested that the language of these proceedings should be English, notwithstanding the fact that the language of the registration agreement is Finnish. The Panel refers to previous UDRP decisions to which Respondent was a party, notably The RueDuCommerce Company v. Rampe Purda/Privacy--P,WIPO Case No. D2010-1632. This Panel concurs with the opinions articulated in that decision. Taking into account also he circumstances of the present case, the Panel decides that the language of the proceeding should, as requested by Complainant, be English. B. Substantive Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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 has been registered and is being used in bad faith, Policy, paragraph 4(a). B.1. Identical or Confusingly Similar
According to Complainant’s arguments and the exhibits attached to the Complaint, it is proved that Complainant has intellectual property rights over the expression MERCK once this company has registered this mark. This trademark registration sufficiently proves Complainant’s rights over the MERCK mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that Complainant had established rights in the PAISLEY PARK mark under paragraph 4(a)(i) of the Policy through registration of the mark with the USPTO.
Moreover, in accordance with the information contained in the files, Complainant undoubtedly owns several domain names that contain or reproduce the MERCK family of marks.
It is also true that Complainant began using the MERCK mark more than 120 years before Respondent registered the disputed domain name.
Besides that, there is no doubt that Respondent registered the disputed domain name that integrally reproduces the MERCK mark, with the mere addition of the phrase “edtrials” after it, which is not enough to escape a finding of confusingly similarity.
The Panel finds that the disputed domain name is confusingly similar to the MERCK mark. The disputed domain name incorporates Complainant’s identical MERCK trademark. 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 (4th Cir. 1990) (copying creates not only a presumption of secondary meaning, but a presumption of likelihood of confusion).
So, in view of the above and because the disputed domain name incorporates the MERCK mark and is confusingly similar to it, Complainant satisfies the requirements under paragraph 4(a)(i) of the Policy. B.2. Rights or Legitimate Interests
According to the Policy, Complainant has to make a pima facie showing that Respondent has no rights and/or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, and then the burden shifts to Respondent to show it does have rights or legitimate interests. In this case, Complainant’s mission to do that was accomplished.
As Respondent failed to file a Response, it did not demonstrate any rights or legitimate interests in the domain name subject of this procedure. As analyzed above, Complainant began using the MERCK mark more than 120 years before Respondent registered the disputed domain name.
Also, there is no evidence that Respondent is commonly known as “Merckedtrials”, “merck” or “m”. It looks as though the only interest that Respondent had in the moment of the registration of the disputed domain name was to gain benefits, as a result of the pay-per click links.
Finally, Complainant has never authorized Respondent to use its MERCK mark.
In view of the above, the Panel is convinced that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
So, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. B.3. Registered and Used in Bad Faith
The Panel finds that Respondent is using the disputed domain name, which integrally reproduces the well-known Complainant’s registered MERCK mark, as a monetary source arising from the pay-per-clinks links contained in the webpage hosted.
As set forth above, Complainant has never permitted the use of its MERCK mark by Respondent. In this way, besides the unauthorized use of this mark, Respondent is fraudulently obtaining profits as a result of this attitude. The Panel finds that it constitutes bad faith.
Besides that, there is enough evidence in the files that the MERCK trademark is well-known over the world. And, as informed by Complainant, in cases when a mark is well-known “in the absence of any license or permission from Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name [can] be claimed by Respondent.” Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055.
So, in view of the above, the Panel finds Complainant has satisfied paragraph 4(a)(ii) 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 Complainant.
Eduardo Machado
Sole Panelist
Dated: March 28, 2011
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