Complainant is Schering Corporation of Rahway, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
The Panel has determined it is appropriate to redact Respondent’s identity from this Decision. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2012. On April 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 2012, the Registrar 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 April 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. The Center received an email communication from Respondent on April 27, 2012.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on May 16, 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 Domain Name was registered on March 10, 2012. 5. Parties’ Contentions A. Complainant
Complainant’s has stated, as summarized by the Panel, the following.
Complainant is the owner of all right, title and interest in and to the CLARITIN trademark (hereinafter referred to as: “CLARITIN Mark”), as well as the larger family of marks to which the CLARITIN trademark belongs, which also includes CLARITYNE, CLARITINE and CLARITYN, referred to by Complainant jointly as the “CLARITIN Family of Marks”. Complainant owns hundreds of trademark registrations for the CLARITIN Family of Marks in countries all over the world.
The website on the Domain Name contains images of CLARITIN-branded coupons. When the Internet user clicks on one of these coupons, the user is redirected to another website. Upon Complainant’s information and belief, Respondent profits financially whenever a user is redirected to this website.
The Domain Name is confusingly similar to Complainant’s CLARITIN Mark, Respondent lacks rights or legitimate interests in the Domain Name and the Domain Name was registered and is being used in bad faith. In support of the latter, Respondent uses the Domain Name to divert Internet traffic of end users seeking to locate websites owned or authorized by Complainant, to capitalize on consumers’ assumption that the Domain Name is Complainant’s domain name or that of one of Complainant’s authorized resellers, and/or to suggest to potential customers that Complainant is somehow related to or affiliated with Respondent. B. Respondent
Respondent failed to submit a Response in this proceeding. By email of April 27, 2012, Respondent claims to have been a victim of identity theft, stating that Respondent’s personal information must have somehow been stolen with the evident purpose to use this for illegal activities. Further to this information, the Panel has decided to redact Respondent’s identity from this Decision. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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.”
Whereas Respondent has failed to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Under the Policy, the complainant must prove that:
“(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the 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”. A. Identical or Confusingly Similar
Complainant has provided sufficient evidence of its rights in the CLARITIN Mark and, less relevant, of its rights in the CLARITIN Family of Marks.
The Domain Name combines the CLARITIN Mark with the generic word “coupons” and appends the generic top-level domain suffix (gTLD) “.net”. The addition of the generic word “coupons” does not alter the fact that there is similarity between the Domain Name and the CLARITIN MARK.
The Panel refers to The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113: “The words “clothing”, “fashion”, “coupon” and “big” are in the context of Complainant's goods generic, and do not generally affect a finding of similarity where a registered trademark is incorporated into a domain name. As a matter of fact, the combination of “gap” or “baby gap” with “clothing”, “fashion”, “coupon” or “big” creates an immediate potential for false association with the GAP trademark and brand name, and a high degree of initial confusion. See adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson,WIPO Case No. D2006-0748.”
For all these reasons, the Panel concludes that the Domain Name is confusingly similar to the CLARITIN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainant has undisputedly stated that Respondent lacks all rights and legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii) of the Policy.
If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to come forward with conclusive evidence demonstrating its rights or legitimate interests. The Panel finds that Complainant has established a prima facie case and Respondent has failed to respond in these proceedings.
Complainant alleges that Respondent is neither commonly known by nor licensed to register the Domain Name. Respondent’s WhoIs information does not reflect that Respondent is commonly known by the Domain Name, nor does it appear to the Panel from the website to which the Domain Name resolves that Respondent is using the name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
As Respondent has failed to come forward with any evidence of rights or legitimate interests, the Panel finds that Complainant has satisfied its burden of proof under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that the Domain Name is confusingly similar to its well-known CLARITIN Mark and that it is being used primarily to divert Internet traffic for commercial gain, profiting from the initial confusion on the part of the public.
The Panel finds that the entity that registered the Domain Name, be it the named Respondent or an unknown third party who has used the named Respondent’s identity without his permission, knew or must have known of the existence of Complainant and the CLARITIN Mark at the time the Domain Name was registered. The Panel has ascertained that Respondent uses the CLARITIN Mark on its website on which it at the same time advertises with treatments for allergies.
In addition, a deliberate concealment of identity and contact information may in itself indicate bad faith. See TTT Moneycorp Limited. v. Diverse Communications,WIPO Case No. D2001-0725.
For the reasons set out above, the Panel also finds that the Respondent has registered and used the Domain Name in bad faith.
The Panel also refers to a highly similar case, as Complainant referred to, Staples, Inc. and Staples the Office Superstore, LLC v. Cpn Now, NAF Claim No. 1257595: “Respondent is intentionally attempting to attract Internet users for commercial gain by taking advantage of the confusing similarities between Complainant’s STAPLES mark and Respondent’s and domain names. Respondent creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain names presumably to profit from obtaining Internet users’ personal information. Therefore, the Panel finds Respondent’s use of the and domain names constitute bad faith registration and use pursuant to Policy 4(b)(iv).”
The Panel therefore finds that Policy 4(a)(iii) has been satisfied as there is sufficient evidence of registration and use 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 domain name be transferred to Complainant.
Willem J. H. Leppink
Sole Panelist
Dated: May 29, 2012
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