Complainant is Merck Sharp & Dohme Corp. of New Jersey, United States of America, including its affiliates and subsidiaries, (the “Complainant”), represented by Lowenstein Sandler PC, United States of America.
Respondent is Egidio Colecchia of New Jersey, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2011. On February 11, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 12, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.. The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on February 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2011. The Response was filed with the Center on February 28, 2011.
The Center appointed Richard W. Page as the sole panelist in this matter on March 16, 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 the owner of all right, title and interest in and to the MERCK Mark, including a larger family of marks to which the MERCK Mark belongs, as well as trade names incorporating the MERCK name (collectively “The MERCK Family of Marks”). Complainant has longstanding and extensive use of the MERCK Family of Marks, and had used the MERCK Mark since at least as early as 1887.
Complainant is one of the world’s largest pharmaceutical companies. In 2009, Complainant had sales of over 27 billion dollars (USD), selling products worldwide. Complainant has over 100,000 employees worldwide. Complainant focuses its research efforts in the therapeutic areas of cardiovascular, diabetes, obesity, bone, respiratory, immunology, dermatology, infection, infectious disease, oncology, neuroscience, ophthalmology, women’s health and endocrine, spending 5.8 billion dollars (USD) on research and development in 2009.
Complainant currently owns 12 United States (“U.S.”) federal trademark registrations (and one pending trademark application) within the MERCK Family of Marks. Complainant owns approximately 400 worldwide trademark registrations incorporating the MERCK Mark. Complainant currently owns of 700 top-level and country code domain names incorporating the MERCK Family of Marks, including but not limited to, , and .
From January 1, 2009 through November 30, 2009, there were more than 3,746,141 unique visitors to Complainant’s website, averaging over 11,215 unique visitors per day.
Respondent registered the Disputed Domain Name on August 24, 2008, well after Respondent was terminated from Complainant’s employ on or about February 16, 2006.
Respondent currently uses the Disputed Domain Name as a landing page featuring pay-per-click links to third party sites. A header at the bottom of the website indicates that the Disputed Domain Name is “parked FREE, courtesy of GoD.” Several of the pay-per-click links on the website are to the website of Complainant’s competitors, such as the pharmaceutical company Teva, and none of the links leads to websites that are authorized by or affiliated with Complainant. According to GoDaddy’s website, GoDaddy’s CashParking service display ads on the website to which the Disputed Domain Name resolves which earn money for the Respondent when the ads are clicked.
Respondent is a former employee of Complainant. By email dated November 10, 2010, Complainant requested that Respondent transfer the Disputed Domain Name to Complainant. Respondent never responded to this email. By letter dated December 8, 2010, Complainant again attempted to resolve this matter amicably by requesting Respondent transfer the Disputed Domain Name to Complainant. Again, Respondent did not respond. 5. Parties’ Contentions A. Complainant
Complainant alleges that it has enforceable rights in the MERCK Mark and in the MERCK Family of Marks. Given such extensive world wide operations and sales, the MERCK Family of Marks has acquired substantial world wide recognition. Complainant vigorously polices its rights to the MERCK Family of Marks. As indicated above, the MERCK Family of Marks includes strong marks with considerable goodwill. Indeed, as a result of this strength, worldwide use and high consumer recognition, many of the MERCK Family of Marks are famous.
Complainant further alleges that the Disputed Domain Name is confusingly similar to the MERCK Family of Marks. The only difference between the Disputed Domain Name and the MERCK Mark is the addition of the phrase “research” at the end of the trademark. Complainant argues that the addition of descriptive words to a complainant’s mark will not preclude a finding of confusing similarity. Nor does the addition of the “.com” gTLD remove the confusing similarity between the Disputed Domain Name and the MERCK Mark.
Complainant asserts that Respondent can establish no legitimate interest in the Disputed Domain Name. Respondent registered the Disputed Domain Name well after Complainant had established its rights in the MERCK Family of Marks. Respondent is not commonly know by the Disputed Domain Name and has never conducted a legitimate off line business under the name “Merckresearch.”
Respondent has been granted no license or other right to use Complainant’s MERCK Family of Marks or the MERCK Mark as part of any domain name or for any other purpose. Complainant is in no way associated or affiliated with Respondent, other than that Respondent was once an employee of Complainant.
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. Complainant further alleges that Respondent registered the Disputed Domain Name solely for deceptive purposes.
Complainant alleges that Respondent is using the Disputed Domain Name that is confusingly similar to the MERCK Family of Marks in order to drive traffic to a website and generate revenue. Complainant asserts that this is evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy. As a former employee of Complainant, Respondent was fully aware of Complainant’s extensive trademark rights at the time of registration of the Disputed Domain Name and selected the Disputed Domain Name because it included Complainant’s famous trademark. Complainant alleges that Respondent had actual knowledge of its trademark rights and committed bad faith in the registration and use of the Disputed Domain Name.
Complainant argues that it is impossible to conceive of a good faith reason for Respondent’s registration and use of the Disputed Domain Name. B. Respondent
From the somewhat disjointed Response filed by Respondent, the Panel has concluded that the following objections are being made to the positions advanced by Complainant:
(1) The rights in the MERCK Mark asserted by Complainant apply only in the United States of America (“United States”) and may not be asserted by Merck Sharp & Dohme Corp. outside the United States , thus the filing of the Complaint in this action with the Center in Geneva, Switzerland is an improper assertion of U.S. trademark rights outside the United States of America;
(2) There is no confusing similarity between the MERK Mark and ;
(3) Respondent’s intention is to operate a non-profit website for the purpose of historical education regarding the seizure of Merck AG assets by the United States government at the end of World War II;
(4) The only links in the current website are to service providers in the pharmaceutical industry not to companies that sell drugs and Respondent has evidenced no bad faith. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
For Complainant to prevail in this matter, it must demonstrate that the essential elements of the claims are met. Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that 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
Complainant alleges that it has enforceable rights in the MERCK Mark and in the MERCK Family of Marks. Given such extensive world wide operations and sales, the MERCK Family of Marks has acquired substantial world wide recognition.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (March 24, 2000).
Respondent argued that Complainant in this matter has no ability to assert its rights in the MERCK Mark outside the United States, including the filing of this Complaint with the Center in Geneva, Switzerland. The Panel finds Complainant including its affiliates and subsidiaries as defined in this matter has the right to administer its worldwide marks in the manner it deems appropriate and that the owner of a trademark registered in the United States has the right to file an action with the Center in Geneva, Switzerland.
Respondent has not contested the assertions by Complainant that it has valid registrations of the MERCK Family of Marks and the MERCK Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the MERCK Family of Marks and in the MERCK Mark.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.
Respondent asserts that the Disputed Domain Name is not confusingly similar to the MERCK Mark. Presumably Respondent views the addition of the term “research” and “.com” as being distinctive.
The Panel notes that the entirety of the MERCK Mark is included in the Disputed Domain Name. Neither the addition of the term “research” nor the “.com” gTLD are sufficiently distinctive to avoid a finding of confusing similarity. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the MERCK Mark pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights as indicated in paragraph 4(c) applies, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has sustained its burden of coming forward with allegations that Respondent lacks rights to or legitimate interests in the Disputed Domain Name.
Respondent asserts that his intention is to operate a non-profit website for the purpose of historical education regarding the seizure of Merck AG (a German corporation) assets by the United States government at the end of World War II. The only evidence in this file is that Respondent has parked the website to which the Disputed Domain Name resolves with the Registrar on a pay-per-click basis. Regardless of whether actual revenues have been generated, this suggests a commercial intent.
The Panel finds that the case record contains no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant alleges that Respondent is using the Disputed Domain Name that is confusingly similar to the MERCK Family of Marks in order to drive traffic to a website and generate revenue. Complainant asserts that this is evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy. As a former employee of Complainant, Respondent was fully aware of Complainant’s extensive trademark rights at the time of registration of the Disputed Domain Name, and selected the Disputed Domain Name because it included Complainant’s famous trademark. Complainant alleges that Respondent had actual knowledge of its trademark rights and committed bad faith in the registration and use of the Disputed Domain Name.
Complainant argues that it is impossible to conceive of a good faith reason for Respondent’s registration and use of the Disputed Domain Name.
Respondent counters that none of the links on the existing website to which the Disputed Domain Name resolves are competitors of Complainant because they provide pharmaceutical services and not drugs.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(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
The Panel finds that Complainant has made a sufficient showing under paragraph 4(b)(iv) of the Policy and that this paragraph does not require that Respondent be in direct competition with Complainant. Therefore the Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under paragraph 4(b)(iv) of the Policy and 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 Disputed Domain Name be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: March 30, 2011
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