WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schering-Plough Corporation, Schering Corporation and their affiliates and subsidiaries v. Darryl Pope
Case No. D2006-1423
1. The Parties
The Complainants are Schering-Plough Corporation, Schering Corporation and their affiliates and subsidiaries, Kenilworth, New Jersey, United States of America, represented by Pitney Hardin LLP, United States of America.
The Respondent is Darryl Pope, West Hartford, Connecticut, United States of America.
2. The Domain Names and Registrar
The disputed domain names <schering-plough.net> and <schering-plough.org> (the “Domain Names”) are registered with Schlund + Partner AG, Germany.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2006. On November 9, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the Domain Names. On November 10, 2006, Schlund + Partner transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amendment to the Complaint on January 25, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
On November 10, 2006, December 12, 2006, and January 12, 2007 Complainants requested thirty-day extensions of time to enable the parties to settle their dispute. Despite the Center granting those extensions, the parties did not settle the dispute. Accordingly, on January 24, 2007, Complainants requested that the proceedings be reinstated.
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 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2007.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 5, 2007. 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
Complainants own the SCHERING-PLOUGH trademark and trade name (“the Marks”). Complainants have used the Marks since at least 1971, when Schering Corporation, a global research-based pharmaceutical company merged with Plough, Inc., a global manufacturer of consumer products. Complainants are one of the world’s largest pharmaceutical companies, selling products in over 125 different countries. The Marks have acquired recognition worldwide.
The record evidence establishes that Complainants own six United States federal trademark registrations for the Marks and over one-hundred foreign trademark registrations incorporating the Marks. Complainants own numerous top-level and country code domain names incorporating the Marks, including <schering-plough.com> and <scheringplough.com>. In 2005 alone, there were over 682,000 different visitors to Complainants’ website, averaging 1,700 different visitors per day. Over 78% were new visitors to the site and the visitors came from over 20 different countries throughout North America, Europe and Asia. Over 111,000 of the visitors to Complainants’ website in 2005 visited the page devoted to “Careers.”
Respondent registered the <schering-plough.net> domain name on March 9, 2006, and the <schering-plough.org> domain name on May 3, 2006. When users type in <shering-plough.net> they are taken to a targeted search site, which states “Schering plough try these sponsored links.” Below this statement are various links related to Complainants, pharmaceutical careers and medical supplies on the one hand, and links related to insurance, machinery designers/fabricators and serveware, on the other hand. For example, the first link states “Schering plough jobs find 25,000 jobs that pay over $100,000. Search now.” and takes users to “www.theladders.com”. There are also links to “www.careerinpharmasales.com” and “www.vault.com” where users can search for jobs. There is another link for “Medical Supplies on Sale” which take users to “www.imed.com” where they can purchase medical supplies. And there is a link for “Gov’t Backed Drug Stocks” that takes users to ”www.growthstockwire.com”, a website that provides subscribers with daily e-mails on investing in Blue Chip Drug stocks. Similarly, when users type in “www.schering-plough.org” they are taken to a targeted search site with links to pharmaceutical-related jobs, drug coverage plans and medical products.
Respondent owns at least forty-three domain names, many of which incorporate third-party registered and famous trademarks including <rjrnabisco.info>, <hostmarriot.net> and <campbellsoup.org>.
5. Parties’ Contentions
The Domain Names are identical or confusingly similar to the Marks. Respondent has no rights or legitimate interests in the Domain Names. Respondent registered and is using the Domain Names in bad faith. Respondent is trying to divert users looking for pharmaceutical, medical and career-related information. Customized search engines such as the one that Respondent is using are created to generate revenue for the registrant and Respondent undoubtedly receives click-through payments each time a visitor to either of the domain name websites clicks on any of these sponsored links. Thus Respondent is wrongfully profiting from Complainants’ goodwill and famous name.
The Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainants and to draw adverse inferences of fact against Respondent. Nonetheless, Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent 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 respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, do Complainants have rights in a relevant mark and, second, are the Domain Names identical or confusingly similar to that mark.
It is uncontroverted that Complainants have established rights in the Marks based on long-standing use as well as their U.S. trademark registrations for the SCHERING-PLOUGH mark. Likewise, Complainants have established rights in their domain names incorporating the SCHERING-PLOUGH mark, such as <schering-plough.com> and <scheringplough.com>. Complainants’ registrations are entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).
Regarding likelihood of confusion, it is well settled that the use of lower case letter format and the addition of the gTLD “.net” or “.org” are not significant in determining whether a domain name is identical or confusingly similar to a trademark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). Furthermore, the Domain Names <schering-plough.net> and <schering-plough.org> incorporate identically Complainants’ registered SCHERING-PLOUGH mark and its domain name <schering-plough.com>. Incorporation of a trademark in its entirety in a domain name is sufficient to establish confusing similarity.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainants have alleged facts to establish that Respondent has no rights or legitimate interest in respect of the Domain Names. Such facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainants’ favor on this issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007 (March 6, 2000).
The Panel therefore holds that Complainant has established element (ii) above.
C. Registered and Used in Bad Faith
By not submitting a Response, Respondent has failed to invoke any circumstances which could demonstrate that Respondent did not register and use the Domain Names in bad faith. Furthermore, the websites at the Domain Names consist, in part, of sponsored links relating to Complainants, pharmaceutical careers and medical supplies. The Panel concludes that, by using the identical or at least confusingly similar Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainants’ Marks as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893 (November 17, 2006). Further, the Panel finds that the sponsored links for businesses in the same field or providing overlapping services as those of Complainants are an indication of bad faith. Even if the users who access Respondent’s website may conclude that it is not what they were originally looking for, Respondent has already succeeded in its purpose of using Complainants’ marks to attract users for commercial gain. See Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304 (June 9, 2005).
The Panel therefore holds that Complainant has established element (iii) above.
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 Names, <schering-plough.net> and <schering-plough.org>, be transferred to the Complainants.
Harrie R. Samaras
Dated: March 19, 2007