The Complainant is Merck Sharp & Dohme Corp., MSD Consumer Care, Inc., and their affiliates and subsidiaries of New Jersey, United States of America (“USA”), represented by Lowenstein Sandler LLP, USA.
The Respondent is PrivacyP of Queensland, Australia / ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2013. On November 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 4, 2013.
The Center verified that the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 6, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 9, 2014. 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 paragraph 7 of the Rules.
The language of the proceeding is English. 4. Factual Background
The Complainant is the owner of the trademark MERCK used since 1887 in the pharmaceutical field. Currently, the Complainant holds a large family of trademarks for or containing the word “merck”, namely 15 USA federal trademark registrations, 400 international trademark registrations and 1,065 top-level domain names.
The disputed domain name was registered on November 14, 2012, and at the time of filing the Complaint, it was used in relation to a pay-per-click webpage redirecting Internet users to third-party websites. The corresponding webpage also displayed an announcement stating that the disputed domain name was for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademark MERCK, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and uses the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
In view of the default and the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in 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
The Complainant holds numerous worldwide trademark registrations for the MERCK mark in the pharmaceutical field. The disputed domain name includes the Complainant’s distinctive trademark and the descriptive term “vaccines” misspelled, with an additional “c”. This Panel agrees with the majority view of UDRP panels 1, that the addition of merely generic, descriptive terms to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark MERCK. B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use its trademarks, that the Respondent is not commonly known by the disputed domain name and that it has not conducted legitimate business under the name “merckvacccines”. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name . C. Registered and Used in Bad Faith
The disputed domain name was registered in 2012 and incorporates the Complainant’s well-known mark used since 1887 in the pharmaceutical industry together with the word “vaccines” (misspelled), a term which is generic for the Complainant’s business.
Further, the disputed domain name resolves to a webpage containing advertising links, from which the Respondent likely benefits through the Registrar’s “Cash Parking” monetization program, and this fact supports the inference that the purpose of the Respondent’s diversion of traffic from the Complainant to itself is for the Respondent’s own commercial gain. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not respond to the Complaint, nor provide accurate contact details to the Registrar. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 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.
Marilena Comanescu
Sole Panelist
Date: January 20, 2014
1 See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
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