The Complainant is Schering-Plough Corporation of the United States of America, represented by Lowenstein Sandler PC, United States.
The Respondent is Texas International Property Associates, United States, represented by the Law Office of Gary Wayne Tucker, United States.
The disputed domain name <scherinplough.com> is registered with Compana LLC.
The Complaint was filed on October 13, 2008, with the WIPO Arbitration and Mediation Center (the “Center”). On October 14, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On October 15, 2008, Compana LLC 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 October 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2008. The Response was filed with the Center on November 10, 2008.
In its Response, Respondent stated that it agreed “to the relief requested by Complainant . . . This is not an admission to the three elements of 4(a) of the policy but rather an offer of ‘unilateral consent to transfer' as prior Panels have deemed it.”
On November 14, 2008, Complainant sought a twenty-day suspension of the proceedings so that it could effect a settlement of this dispute with Respondent. The Center granted the requested suspension on November 18, 2008. Subsequently, and despite Respondent's agreement to transfer the disputed domain name to Complainant, Complainant reported that it was unable to contact Respondent's attorney. On December 5, 2008, Complainant asked the Center to lift the suspension and reinstitute the proceeding.
The Center appointed Steven L. Snyder as the sole panelist in this matter on December 12, 2008. 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.
Complainant, the Schering-Plough Corporation, describes itself as “a global science-based health care company with leading prescription, consumer and animal health products.” Some of its more famous products include NASONEX for nasal allergy symptoms, the NUVARING contraceptive ring, CLARITIN antihistamines, DR. SCHOLL'S foot care products, and COPPERTONE sun care lotions. Based in New Jersey, in the United States, Complainant operates throughout the world. In 2007, the company reported USD 12.6 billion in net sales. Of that amount, USD 4.5 billion reportedly came from the United States, USD 5.5 billion from Europe and Canada, USD 1.3 billion from Latin America, and USD 1.2 billion from Asia and the Pacific area.
The company has registered the SCHERING-PLOUGH mark in the United States. See e.g., Reg. No. 1775694 (for pharmaceutical preparations, registered June 1993); Reg. No. 1780856 (for foot apparel, registered July 1993); and Reg. No. 1783176 (for cosmetics, sun care products, deodorants, registered July 1993). Complainant asserts it has also registered the SCHERING-PLOUGH mark in 100 other countries, including Afghanistan, the People's Republic of China, France, Morocco and Paraguay.
In addition to its trademark registrations, Complainant states that it has registered numerous domain names incorporating the SCHERING-PLOUGH mark. Those registrations reportedly include <schering-plough.com>, <scheringplough.com>, <schering-plough.us>, and <schering-plough.info>.
Respondent is a frequent respondent in UDRP disputes. More than one hundred complainants have named Texas International Property Associates as a respondent in UDRP proceedings. See, e.g.,. Tractor Supply Company v. Texas International Property Associates NA NA, WIPO Case No. D2008-1547, St. John Knits, Inc. v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1381; JELD-WEN, inc. v. Texas International Property Associates. NAF Claim No. 882053, and Disney Enterprises, Inc. v. Texas International Property Associates NAF Claim No. 945379.
Respondent registered the disputed domain name, <scherinplough.com>, on June 16, 2005.
Complainant argues that it has rights in the SCHERING-PLOUGH mark based on its long and extensive use of the mark around the world, its numerous trademark registrations, domain name registrations that incorporate the mark, its popular website <scheringplough.com>, and its vigorous policing of the mark.
It further contends that the disputed domain name, <scherinplough.com>, is confusingly similar to Complainant's mark, SCHERING-PLOUGH. The only difference between the two is the domain name's omission of the letter “g”. This Complainant argues, is immaterial and does not lessen confusion. Complainant alleges Respondent has engaged in “typosquatting.”
According to Complainant, Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant notes Respondent registered <scherinplough.com> long after Complainant started using the SCHERING-PLOUGH mark and many years after Complainant registered its mark with the U.S. Patent and Trademark Office. Complainant denies having authorized Respondent to use the SCHERING-PLOUGH mark. Respondent is not making a legitimate noncommercial or fair use of the mark, Complainant argues, but is trying to mislead consumers who are searching for Complainant.
Lastly, Complainant argues that Respondent registered the disputed domain name in bad faith. Evidence of this is apparent, Complainant says, in the fact that Respondent has engaged in typosquatting, has created “initial interest confusion,” and is frequently named as a respondent in UDRP proceedings.
Instead of trying to persuade the Panel that Complainant's allegations are unfounded, Respondent has tried to persuade the Panel not to examine Complainant's allegations. Respondent states that it “agrees to the relief requested by the Complainant and will, upon order of the Panel, do so.” Accordingly, Respondent argues that the Panel should issue “an immediate order for transfer without consideration of the paragraph 4(a) elements.”
If the Panel decides to engage in a substantive review of the Complaint, Respondent “respectfully requests that Respondent be given the opportunity to prepare a more formal response.”
What should a panel do when presented with Respondent's request to transfer the disputed domain name without engaging in any substantive analysis?
In Disney Enterprises, Inc. v. Texas International Property Associates, NAF Claim No. 945379, the panel granted Respondent's request: “The Panel finds that, due to Respondent's consent and to the famous nature of Complainant Disney's business activities and marks, it is not necessary, nor would it be instructive, to make a formal analysis in this case.”
The same result was reached in Amgen Inc. v. Texas International Property Associates, WIPO Case No. D2007-0155. The Amgen panel felt that issuing a decision without detailed analysis would serve the Policy's goal of quickly resolving the dispute: “Under Rule 10(c), the Panel shall endure that the proceeding takes place with due expedition. Given Respondent's consent to transfer, this Panel deems it appropriate to grant the request to transfer under Rule 10. No further consideration or discussion of the elements of Paragraph 4(a) of the Policy is deemed necessary.”
Respondent's request was denied in OSRAM GmbH v. Texas International Property Associates NA NA, WIPO Case No. D2008-1033. The Panel characterized Respondent's request as an effort to avoid adverse findings: “The Panel . . . observes that, in cases of this type, it would be contrary to the spirit of the Policy for a party to use the expedient of offering to transfer the disputed domain name at the last minute, in order to avoid a decision on the merits and, thereby, minimize the risk of adverse findings/comments.”
One factor that influenced the OSRAM panel was Respondent's modus operandi. When contacted by an aggrieved trademark owner, Respondent seemingly agrees to transfer the disputed domain name. Then Respondent does nothing to help effect the transfer. This forces the trademark owner to file a UDRP proceeding. Respondent then submits a Response in which it offers to transfer the disputed domain name. This may prompt a complainant to suspend the proceedings in hope of reaching a settlement (and saving itself the panelist's fees). Respondent then does not respond to the settlement overtures. Finally, the complainant is forced to reinstitute the proceeding. By engaging in this behavior, Respondent is able to delay the day of reckoning and continue to earn revenue off a disputed domain name.
Respondent's modus operandi was on display in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211. It acted in a similar way in the OSRAM proceeding. In this proceeding, Respondent is following the same old dance steps. But that is not the only reason the Panel will deny Respondent's request.
The Panel has a duty to examine the record set before it to ensure the Complainant has established the three elements set forth in paragraph 4(a) of the Policy. Even in cases where a respondent fails to file a response, a panel may not blindly grant the relief requested by the complainant: “The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a).” The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).
Here, the Respondent did not default. It filed a Response. Though Respondent does not admit that Complainant has met its burden of proof, Respondent does consent to the Complainant's requested relief. The Panel has the discretion, in these circumstances, to either grant or deny the Respondent's request to transfer the disputed domain name without engaging in any substantive analysis. See Rule 10(a) (“The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.”); Rule 15(a) (“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”).
In this case, the Panel declines Respondent's request. Had Respondent truly wished to avoid any adverse findings, it could have done what it said it would do – namely transfer the disputed domain name to Complainant before this matter reached the Panel.
Complainant's rights in the SCHERING-PLOUGH mark were established long before Respondent registered <scherinplough.com>. The only question is whether <scherinplough.com> is confusingly similar to SCHERING-PLOUGH – and that is not a question that requires much thought to answer.
The only difference between the disputed domain name and Complainant's mark is the absence of the letter “g.” Undoubtedly, a missing “g” can make a large difference in some words (e.g., glove, grid, and grump). But it does not make any difference here. The disputed domain name, <scherinplough.com>, is so similar to Complainant's own domain name, <scheringplough.com> (based on Complainant's mark), that it is hard at first glance to distinguish between the two. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441 (noting confusing similarity where the domain name “differs by only one letter from a trademark”).
Complainant has established the first element in paragraph 4(a) of the Policy.
From the evidence of record, Respondent is not known by <scherinplough.com>, it does not have any permission from Complainant to use the well-known SCHERING-PLOUGH mark, and it is not affiliated in any way with Complainant.
Respondent has also failed to provide evidence of a legitimate noncommercial or fair use of the mark. Instead, it has used the disputed domain name to misleadingly divert consumers to a website that provides links to Complainant's competitors. This is neither legitimate nor fair. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (“Diverting consumers who are looking for ESPN's products on the Internet to competing sports-related websites for commercial gain is not a legitimate, bona fide use and does not confer legitimate interests in the domain name.”).
Complainant has established the second element in paragraph 4(a) of the Policy.
A respondent may be found to have registered and used a domain name in bad faith when it “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site . . . .” Policy paragraph 4(b)(iv).
Respondent has taken a well-known trademark, lopped off one letter in the middle of the trademark, and then used the slightly shortened mark as a domain name – a domain name that led consumers to a website that offered products similar to those offered by Complainant. Respondent has created a likelihood of confusion with Complainant's mark and then sought to profit from that confusion. This is evidence of bad faith registration and use. See Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039 (“Respondent has submitted no justification for registering a domain name that is almost identical to Complainant's well-publicized trademarks . . . but for the deletion of a letter ‘r.' Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name . . . .”).
Complainant has established the third and final element in paragraph 4(a) of the Policy.
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, <scherinplough.com>, be transferred to the Complainant.
Steven L. Snyder
Dated: December 24, 2008