Complainant is Merck Sharp & Dohme Corp. of Rahway, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
Respondent is Ignitee Digital Solutions Pvt. Ltd., Amit Debnath of Mumbai, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Pvt Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2011. On November 21, 2011, the Center transmitted by email to BigRock Solutions Pvt Ltd. a request for registrar verification in connection with the disputed domain name. On November 23, 2011, BigRock Solutions Pvt Ltd. 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 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2011.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on December 28, 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 Merck Sharp & Dohme Corp., a corporation based in the United States of America.
Complainant, together with its affiliated companies, is the owner of all rights to the mark MERCK, as well as a large family of marks formed by the mark MERCK. Complainant has been using the mark since 1887. Complainant is one of the world’s leading pharmaceutical companies and owns more than 400 trademark registrations worldwide, for marks incorporating the expression MERCK. It also is part of more than 700 domain names. Proofs of these allegations were presented.
As evidence the documents attached to the Complaint, Complainant's mark MERCK was extensively promoted, without limitation, in print advertisements, in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings.
The mark MERCK has acquired fame and celebrity, symbolizing the goodwill that Complainant has created in its mark. Evidence of such fame in the form of unsolicited media attention, including newspaper and magazine articles, was duly presented. 5. Parties’ Contentions A. Complainant
Complainant is the owner of the trademark MERCK, which is part of more than 400 trademark registrations and more than 700 domain names worldwide. Due to Complainant’s operations throughout the world, trademark MERCK has acquired international recognition and is clearly linked to Complainant.
Trademark MERCK is associated to the pharmaceutical business, being this Complainant’s core business. The use of the MERK mark has started more than a hundred years ago, either alone, or associated with other elements, forming the “MERCK family of marks”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is, indeed, confusingly similar to the MERCK trademark, as it contains the entirety of the mark together with words of common use in relation to Complainant’s line of business.
Complainant, on its turn, has presented evidence of use and ownership of the mark MERCK worldwide, as well as evidence of the renown of the MERCK mark.
Given the above, the Panel concludes that the disputed domain name is confusingly similar with the registered mark of Complainant, pursuant to the first element of the Policy. B. Rights or Legitimate Interests
Given the clear evidence that the MERCK mark is widely known as identifying Complainant’s business and products, the Panel finds that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name. Hence, the Panel finds that the Respondent cannot claim to have been using the trademark MERCK without knowing Complainant’s rights to it.
Besides, the words “consumer health care”, instead of distinguishing the disputed domain name from Complainant, makes even more confusion for Internet users, as these words are descriptive and refer to Complainant’s business. In fact the choice of these words leaves the impression that Respondent intended to cause confusion with Complainant’s mark. This, among other facts, leads the Panel to conclude that Respondent’s interests cannot have been legitimate.
Complainant has not licensed or authorized Respondent to use its trademark or to register it as a domain name. In the circumstances of this case, the fact that the website associated with the disputed domain name is inactive is a further indication that Respondent has not rights or legitimate interests.
The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
The facts outlined in items A and B above can be considered as further evidence of Respondent’s bad faith in obtaining the disputed domain name.
The Respondent did not respond to Complaint. This behavior has been considered as a further evidence of bad faith in registering and using a domain name in several previous disputes insertion. In this case, it also supports a finding that the disputed domain name was registered and used in bad faith.
The association of the mark MERCK with the descriptive words “consumer health care” can be seen as clear evidence that Respondent wishes to give an overall impression that the disputed domain name leads to an official web site, which is not true. Even if the disputed domain name is currently not directed to any web site in particular, this attempt to mislead consumers is also evidence of bad faith from Respondent.
All the points above lead to the conclusion by this Panel that Respondent must have been aware of Complainant and that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Complainant has also proved the third element of the Policy 7. Decision
For 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 the Complainant.
Alvaro Loureiro Oliveira
Sole Panelist
Dated: January 16, 2012
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