The Complainant is Schering Corporation, a subsidiary of Merck & Co., Inc. of Kenilworth, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States.
The Respondent is Private Whois of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
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 I Corp. a request for registrar verification in connection with the disputed domain name. On January 11, 2012, I Corp. 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 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, 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 3, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on February 8, 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
The Complainant owns approximately thirty (30) United States federal trademark registrations and applications for the CLARITIN trademark and related trademarks, and owns hundreds of trademark registrations around the world for the larger family of trademarks to which the CLARITIN trademark belongs. It has been using these trademarks since at least as early as 1994 as trademarks and trade names for allergy medications known as loratadine.
The Complainant also currently owns numerous top-level and country code domain names incorporating the CLARITIN trademark including, but not limited to , , , and . In 2011 there were over 3 million visits to the “www.” website.
In 2011 the Complainant’s gross sales of Claritin products in the United States alone were approximately USD 440 million, and its expenditure on marketing of its Claritin products in the United States was USD 150 million.
The disputed domain name was registered on November 29, 2011. It resolves to a website that purports to describe a pharmaceutical product described variously as “Generic For Claritin”, “Generic Claritin Loratadine” and “Generic Claritin”, and that provides links to another website that purports to sell a product described, amongst other ways, as “Claritin 10mg” and “Claritin (Loratadine)”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its CLARITIN trademark because the CLARITIN trademark is included in the disputed domain name in its entirety. The addition of the word “generic” and of the gTLD signifier “.com” does not remove the confusing similarity. The Complainant contends that Internet users are likely to believe the disputed domain name is related to, associated with, or authorized by the Complainant, and that this is precisely why the Respondent registered the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent: (i) registered the disputed domain name well after the Complainant had established its rights in its CLARITIN trademark; (ii) is not commonly known by the disputed domain name and, to the Complainant’s knowledge, has never conducted a legitimate offline business under the disputed domain name; (iii) has been granted no license or other rights to use the Complainant’s CLARITIN trademark as part of any domain name or for any purpose, and is in no way associated or affiliated with the Complainant; (iv) is not making a legitimate noncommercial or fair use of the disputed domain name and is using it to misleadingly attract customers to its website for its own commercial gain; (iv) has registered the disputed domain name solely for deceptive purposes; and (v) must have been aware of the Complainant’s famous CLARITIN mark at the time of registration of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent clearly registered it with the intent of diverting Internet users seeking to locate websites owned or authorized by the Complainant, to capitalize on consumers’ assumption that the disputed domain name is the Complainant’s domain name or that of an authorized reseller, and/or to suggest to potential customers that the Complainant is somehow related to or affiliated with the Respondent; (ii) the Respondent’s registration of the disputed domain name is disrupting and diverting the Complainant’s business; (iii) it is established by numerous decisions under the Policy that the unauthorized use of a complainant’s trademark in a domain name used to promote the sale of pharmaceuticals, is per se bad faith use; (iv) use by the Respondent of the disputed domain name constitutes initial interest confusion by which a junior user adopts a senior user’s mark to gain attention in a crowded field in the hope of attracting “a first look”; (v) it is impossible to conceive of a good faith reason for the Respondent’s registration of the disputed domain name; (vi) no actual or contemplated bona fide or legitimate use of the disputed domain name can be claimed by the Respondent if the Complainant has not given permission for the use of its well-known trademark; and (vii) the Respondent has had years of constructive notice of the Complainant’s registered trademark. 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 incorporates the whole of the Complainant’s trademark CLARITIN, and adds the descriptive word “generic”. The addition of the word “generic” does not lessen the inevitable confusion of the disputed domain name with the Complainant’s CLARITIN trademark. The word “generic” when used in the context of a pharmaceutical substance means a non-trademarked version of the pharmaceutical substance – that is, the pharmaceutical substance to which the relevant International Nonproprietary Name (INN) attaches (which, in the case of the pharmaceutical substance to which the Complaint’s trademark CLARITIN is applied, is loratadine). As has been noted in Lilly Icos LLC v. Silagra World,WIPO Case No. D2005-0211, and other cases, “An important body of WIPO UDRP decisions conclude that adding the word ‘generic’ alone or in combination with other generic terms to certain famous drug names, to which pharmaceutical companies have trademark rights, and registering the resulted combinations as domain names […] does not exclude the confusing similarity of such domain names to such trademarks”. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has not provided any evidence it has been commonly known by the disputed domain name. The Respondent is not a licensee of, or otherwise affiliated with, the Complainant. The disputed domain name was registered many years after the Complainant’s CLARITIN trademark was first registered. The Respondent is using the disputed domain name to resolve to a website that provides links to another website at which is offered for sale a pharmaceutical product described, among other ways, as “Claritin 10mg” and “Claritin (Loratadine)”. As has been held in numerous cases under the Policy (including those cases cited in Lilly Icos LLC v. Silagra World, supra), such a use of the disputed domain name is not a use in connection with a bona fide offering of goods and services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The evidence on the record provided by the Complainant with respect to the use of its trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that the Respondent must have known of the Complainant’s trademark at the time of registration of the disputed domain name and that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. Accordingly, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith 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 the Complainant.
Andrew F. Christie
Sole Panelist
Dated: February 22, 2012
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