1.1 The Complainant is Schering Corporation a subsidiary of Merck & Co., Inc., New Jersey, United States of America, (the “Complainant”) represented by Lowenstein Sandler PC, United States of America (the “United States”).
1.2 The Respondent is Oleg Sokolov, Moscow, Russian Federation (the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed Domain Name is registered with eNom (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2012. On January 10, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed Domain Name. On January 10, 2012, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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”).
3.3 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, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2012.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on February 23, 2012. 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
4.1 The Complainant in these administrative proceedings is Schering Corporation, a subsidiary of Merck & Co., Inc. organized and existing under the laws of New Jersey, United States. The Complainant is the owner of the CLARITIN trademark and other trademarks including the CLARITYNE, CLARITINE and CLARITYN trademarks and trade names collectively known as the “CLARITIN Family of Marks”. The Complainant is said to have used the Claritin Family of trademarks since early 1994 for allergy medications such as loratadine also known as “Claritin” and currently owns approximately thirty (30) U.S. federal trademark registrations and applications for the CLARITIN trademark and related marks in the United States. The Complainant also owns hundreds of trademark registrations for the CLARITIN Family of trademarks and related trademarks in countries all over the world. The Complainant currently owns numerous top-level and country code domain names incorporating the CLARITIN Mark such as , , , and etc. In 2011, the Complainant’s gross sales of Claritin products in the United States alone was approximately US $ 440 Million due to what the Complainant describes as effective marketing and promotion arising from an approximate market spend of US $ 150 Million in 2011.
4.2 The Respondent in these administrative proceedings is located in Moscow and registered the disputed Domain Name on November 23, 2011. 5. Parties’ Contentions A. Complainant
5.1 The Complainant asserts that the disputed Domain Name should be transferred to the Complainant because within the meaning of paragraph 4 of the Policy, the disputed Domain Name is confusingly similar to the Complainant’s CLARITIN mark since Internet users are likely to believe that the disputed Domain Name is related to, associated with, or authorized by the Complainant. The Complainant submits that the mere addition of the word “medd” which is a variation on the descriptive term “med” a generic abbreviation for pharmaceuticals does not prevent a finding of confusing similarity, in so far as the disputed Domain Name wholly incorporates the Complainant’s registered CLARITIN trade mark. In support of this contention, the Complainant refers to a previous WIPO UDRP decision in the case of Sanofi-Aventis v. A,WIPO Case No. D2006-0859. In addition the Complainant submits that the inclusion of a dash in the disputed Domain Name does not affect the confusing similarity analysis because as previously held in Guinness UDV North America, Inc. v. UKJENT,WIPO Case No. D2001-0684, the addition of dashes between letters of a single word does not alter the way the domain name is pronounced. Equally, the addition of the gTLD “.com” does not dispel the notion of confusing similarity between the disputed Domain Name and the Complainant’s CLARITIN trademark. The Complainant in this regard, relies on Deutsche Lufthansa AG v. Nadeem Qadir,WIPO Case No. D2009-0003.
5.2 The Complainant submits that the Respondent has no rights or legitimate interests in the disputed Domain Name on the following grounds. Firstly, the Respondent has no connection or affiliation with the Complainant who has not consented to the Respondent’s use of the disputed Domain Name. Secondly, the Respondent is not commonly known as the disputed Domain Name. Thirdly, the Respondent is not making a legitimate noncommercial or fair use of the disputed Domain Name. The Complainant therefore argues that where as here the Complainant’s trademark is so widely recognized and has been used in connection with pharmaceuticals for so many years there can be no legitimate use by the Respondent. The Complainant cites a number of cases in support of this contention including Nike Inc. v. B.B.de Boer,WIPO Case No. D2000-1397.
5.3 With reference to registration and use in bad faith, the Complainant asserts that the Respondent clearly registered the disputed Domain Name with the intention of diverting Internet traffic of end users seeking to locate websites owned or authorized by the Complainant, to capitalize on consumer’s assumption that the disputed Domain Name is the Complainant’s domain name or that of the Complainant’s authorized resellers, and or to suggest to potential customers that the Complainant is somehow related to or affiliated with the Respondent. The Complainant submits further that in any event the Respondent’s registration of the disputed Domain Name is disruptive and has the effect of diverting the Complainant’s potential clients and therefore such registration was undertaken in bad faith. The Complainant refers to a previous UDRP decision in Sanofi –Aventis v. Health Care Marketing Company,WIPO Case No. D2007-0475 to submit that it has been established by numerous decisions made under the Policy that the unauthorized use of the Complainant’s trademark in a domain name used to point to and further, by that means, to promote the sale of pharmaceuticals is per se bad faith use. The Complainant further submits that the use of the disputed Domain Name by the Respondent further constitutes initial interest confusion and refers to the case of Charles Schwab & Co., Inc. v. Polanski,WIPO Case No. D2001 -0959 to submit that initial –interest confusion in itself is further evidence of bad faith as the state of confusion in the Internet user’s mind with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, necessary for the application of paragraph 4(b)(iv) of the Policy, will already exist.
5.4 The Complainant argues that it is impossible to conceive of a good faith reason for the Respondent’s registration and use of the disputed Domain Name and reiterates that the Respondent has no authorization from the Complainant to use the Complainant’s trademark. The Complainant relies on the case of Guerlain S.A. v. PeiKang,WIPO Case No. D2000-0055 where it was held that no actual or contemplated bona fide or legitimate use of a disputed domain name can be claimed by a Respondent in the absence of any license or permission from the Complainant to use any of its trademarks or to use any domain name incorporating those trademarks. Finally, the Complainant states that the Respondent has had years of constructive notice of the Complainant’s registered trademark, under U.S. law 15 U.S.C., section 1072 thereof. B. Respondent
5.5 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark which the Complainant has rights; (ii) that the 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.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings. A. Identical or Confusingly Similar
6.3 The Panel finds from the uncontroverted facts that the disputed Domain Name, namely, is confusingly similar or identical to the Complainant’s well-known trade mark, CLARITIN; and indeed other top-level and country code domain names incorporating the CLARITIN trademark currently owned by the Complainant. Clearly, the disputed Domain Name wholly incorporates the Complainant’s trademark. The Panel finds that the mere addition of the descriptive word “medd” preceded by a dash or hyphen, and the gTLD “.com” does absolutely nothing to preclude a finding of confusing similarity. The Panel relies on the following previous UDRP decisions cited by the Complainant in this regard. First is the case of Sanofi-Aventis v. A, supra where the addition of the word “meds” a generic abbreviation for pharmaceuticals to the disputed domain name was found to heighten the risk of confusion. The second case is Guinness UDV North America, Inc. v. UKJENT, supra where the addition of dashes between letters of a single word S-M-I-R-N-O-F-F, and the gTLD “.com” was found not to alter the visual or phonetic identity of the word SMIRNOFF as it appeared in the disputed domain name .
6.4 The Panel is accordingly satisfied that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s CLARITIN trademark. B. Rights or Legitimate Interests
6.5 The Panel also finds that the Respondent has failed to provide any concrete evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant succinctly asserts, the Respondent registered the disputed Domain Name well after the Complainant had acquired exclusive rights in its CLARITIN trademark, the Respondent has not been granted any license or authority to use the Complainant’s trademark as part of any domain name or for any purpose. The Panel has found no evidence to suggest that the Respondent is connected or affiliated to the Complainant or that the Respondent is commonly known by the disputed Domain Name.
6.6 The Panel is satisfied that the Respondent is using the disputed Domain Name to misleadingly attract Internet users and potential customers of the Respondent to its website for its own commercial gain as the Respondent advertises for sale on its website pharmaceutical products including the Complainant’s products as clearly shown on a printout of the Respondent’s website. The Panel therefore finds that such unauthorized usage by the Respondent cannot be said to constitute a bona fide offering of goods of services nor a legitimate noncommercial or fair use of the disputed Domain Name. In this regard, where as here, the Complainant’s mark is so widely known, the Complainant has correctly relied on the case of Nike Inc. v B.B. de Boer, supra; where the panel held that the respondent in that case had no legitimate rights as it would be difficult to understand how the respondent or anyone else for that matter could not have known of the complainant’s NIKE trademark with regards to the disputed domain name, . Also, see generally, Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903.
6.7 Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.8 On the question of bad faith registration and use, the Panel finds that the Respondent without a doubt registered the disputed Domain Name in bad faith and continued to engage in bad faith use. The Panel has considered a number of irrefutable factors in arriving at this conclusion. Firstly, the Panel finds that the Respondent must have known or ought to have known of the existence of the Complainant’s well-known and world–wide exclusive rights in the “CLARITIN” trademark since 1994 considering that the Respondent registered the disputed Domain Name in November 2011. Secondly, and in any event a printout from the Respondent’s website indicates that the Respondent purportedly advertised for sale pharmaceutical products including the Complainant’s pharmaceutical products bearing the CLARITIN trademark. Therefore, the Panel finds that not only has the Respondent registered the disputed Domain Name in bad faith, but that the Respondent continued to engage in bad faith use by seeking to derive commercial gain or illegal monetary advantage by deliberately misleading Internet users and or potential customers of the Complainant into believing that the Respondent is part of or affiliated to the Complainant. See in this regard, Sanofi- Aventis v. Health Care Marketing Company, supra, where the use of a complainant’s trademark in a disputed domain name to promote the sale of pharmaceuticals was held to be per se bad faith use.
6.9 Thirdly, the Panel finds that the Respondent’s use of the disputed Domain Name constitutes initial–interest confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location. See in this regard Charles Schwab & Co., Inc. v. Polanski, supra. Fourthly, as alluded to in paragraph 5.5 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to challenge the evidence and submissions provided by the Complainant in these proceedings. 7. Decision
7.1 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 the Complainant.
Ike Ehiribe
Sole Panelist
Dated: March 12, 2012
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