World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Paulo Kann

Case No. D2010-2093

1. The Parties

The Complainant is Merck Sharp & Dohme Corp. of Whitehouse Station, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.

The Respondent is Paulo Kann of Central Dijon, France.

2. The Domain Name and Registrar

The disputed domain name <mercks.com> is registered with Go France Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010. On December 6, 2010, the Center transmitted by email to Go France Domains, Inc. a request for registrar verification in connection with the disputed domain name. On December 7, 2010, Go France Domains, Inc. 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 December 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2011.

The Center appointed Jane Lambert as the sole panelist in this matter on January 7, 2011. 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 is one of the world‘s largest pharmaceutical companies. Its turnover in 2009 exceeded USD 27 billion and it has over 100,000 employees around the world. It has registered the word “Merck” with the US Patent and Trademark Office as a US trade mark under serial number 71089989 for a number of pharmaceutical products within class 5 with effect from October 21, 1915. The Complainant has also registered some 400 other marks that include the word “Merck” in registries around the world.

The Respondent registered the disputed domain name on December 11, 2009 and has used it to route to a landing page that features pay-per-click links related to the pharmaceutical industry.

5. Parties’ Contentions

A. Complainant

The Complainant claims the transfer of the disputed domain name upon the following grounds:

(1) The domain name is virtually identical and confusingly similar to its registered trade marks in that it is distinguished from the US mark only by the addition of the letter “s”.

(2) The Respondent has no rights or legitimate interests in the disputed domain name in that:

(a) it is not commonly known by the disputed domain name;

(b) it has never conducted a legitimate business under the name ”Mercks”;

(c) it has never been licensed to use the Complainant’s name or marks;

(d) it is not associated or affiliated with the Complainant; and

(e) it is not using a legitimate noncommercial or fair use of the disputed domain name.

3) The Respondent’s use of the disputed domain name as described in paragraph 4 above is evidence of registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The 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.

In the administrative proceeding, the Complainant must prove each of those three elements to be present.

A. Identical or Confusingly Similar

As the Complainant points out, the disputed domain name differs from the US registered trade mark mentioned in paragraph 4 above only in the addition of the letter “s”.

The Complainant has furnished authority for the argument that obvious typos and misspellings increase rather than prevent confusion and that minor one letter changes do not prevent confusion, the proposition is obvious.

The Panel therefore finds the first element to be present.

B. Rights or Legitimate Interests

Paragraph 4(c) provides that any of the following circumstances can demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant has stated that none of the above circumstances apply. That evidence has not been contradicted or otherwise put in doubt. There is no other evidence before the Panel that the Respondent has rights or legitimate interests in the domain name.

Accordingly, the Panel finds the second element to be present.

C. Registered and Used in Bad Faith

Paragraph 4(b) lists a number of circumstances which shall be evidence of the registration and use of a domain name in bad faith.

One of those circumstances is as follows:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

The Panel has already found the disputed domain name to be confusingly similar to the trademark mentioned in paragraph 4 above. It follows that such use of the domain name creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on its web site or location. Further, by reason of such confusion with the Complainant’s registered trademark, Internet users are likely to be drawn to the Respondent’s site. Once on the Respondent’s site, at least some of those users may be expected to click one or more of the pay-per-click links thereby generating revenue for the Respondent.

That constitutes evidence of registration and use in bad faith. Consequently, the third element is present.

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 <mercks.com> be transferred to the Complainant.

Jane Lambert
Sole Panelist
Dated: January 21, 2011

 

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