WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck Sharp & Dohme Corp. v. Company Domain Management, Syed Hussain/ Domain Privacy Group, Inc. c/o mercksharp.com
Case No. D2011-0141
1. The Parties
Complainant is Merck Sharp & Dohme Corp. of Whitehouse Station, New Jersey, United States of America, represented by Lowenstein Sandler PC of United States of America.
Respondent is Company Domain Management, Syed Hussain of City Closter, New Jersey, United States of America/ Domain Privacy Group, Inc. c/o mercksharp.com of Markham, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <mercksharp.com> is registered with Netfirms, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2011. On January 26, 2011, the Center transmitted by email to Netfirms, Inc. a request for registrar verification in connection with the disputed domain name. On January 26, 2011, Netfirms, Inc. 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 Complainant on January 28, 2011 providing the registrant and contact information disclosed by Netfirms, Inc, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 28, 2011.
The Center verified that the Complaint together with 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 22, 2011.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on February 25, 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
Complainant is one of the largest pharmaceutical companies in the world with over USD 27 billion in sales in 2009 and over 100,000 employees worldwide. Complainant has been using the MERCK mark since 1887 according to the Complaint, and has submitted a United States of America trademark registration of the MERCK mark (registration no. 0108566) under Exhibit 4 to the Complaint, which dates back to February 15, 1916; in total Complainant holds 12 United States of America Federal trademarks. In Exhibit 5 to the Complaint, Complainant submitted 10 pages containing its over four hundred international trademark registrations containing MERCK SHARP & DOHME and variations thereof. Complainant submitted a list over 700 top-level domain names under its control in Exhibit 6 to the Complaint; the “www.merck.com” website alone averaged 11,215 unique visitors per day from January 1, 2009 through November 30, 2009. No dates are given for the registration of these domain names but it is clear that Complainant actively uses and promotes its brand and name online. Among these hundreds of domain names is <mercksharp.com.br>.
5. Parties’ Contentions
Complainant contends that Respondent knowingly makes use of Complainant’s world-famous name and marks in order to attract visits to Respondent’s site. It is written at the bottom of Respondent’s site that “[t]his page is provided to the domain owner free by Sedo’s Domain Parking” (emphasis in original, Exhibit 7 to the Complaint); only links populate the site according to the printout provided by Complainant and Sedo.co.uk’s own site states that it “helps you capture and cash in on your domain’s natural traffic!” (Exhibit 8 to the Complaint). Complainant never authorized Respondent to use its name or marks. There does not seem to be any reason for the site besides the seeking of “hits” and “clicks” in order to make money by domain parking, as evidenced by the disputed domain name site extract at Exhibit 7 to the Complaint. Complainant alleges that Respondent is using the disputed domain name, and the MERCK mark, in bad faith and is in violation of paragraph 4(a) of the Policy. The detailed Complaint included a signed affidavit from Complainant’s in-house counsel, D. Shelinsky Greene, as to the validity of all statements in the Complaint. Complainant asks that the disputed domain name be transferred to it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent’s domain names are 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 names; and
(iii) Respondent’s domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant’s brand, Merck, is well-know, and indeed world famous, for its activities in the field of pharmaceuticals. Complainant has held the trademark MERCK, since 1916 and has operated under that name since at least 1887. The disputed domain name reproduces Complainant’s trademark, MERCK, in full, adding only “sharp” to the end. Complainant submits that this does not serve to differentiate the disputed domain name from Complainant’s mark but, instead only adds to confusion as it incorporated part of Complainant’s full corporate name, Merck Sharp & Dohme. Complainant holds numerous trademarks containing variations of MERCK SHARPE & DOHME (Exhibit 5 to the Complaint). Further, among Complainant’s hundreds of domain names is <mercksharp.com.br>. The Panel here finds that the disputed domain name is confusingly similar to Complainant’s marks; Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant submits that Respondent does not have any legitimate rights or interest in the disputed domain name, and that Complainant has never authorized Respondent to use its mark and is in no way associated or affiliated with Complainant. Complainant has submitted, and Respondent has not stated otherwise, that Respondent is not known by the Merck or Merck Sharp name and has never operated a business under that name. Indeed, Respondent’s name bears no resemblance to Complainant’s mark or the disputed domain name. There is no evidence or indicia in the record that Respondent has any rights or legitimate interests in the disputed domain name and in the absence of a Response by Respondent, Respondent has not rebutted Complainant’s prima facie case in this regard. The Panel here finds that Respondent has no rights or legitimate interests in the disputed domain name; paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant has been operating under the MERCK name for over 120 years; it is an internationally known brand headquartered in New Jersey where Respondent also appears to be located. Respondent must have had full knowledge of Complainant and its name at the time it registered the disputed domain name. Reinforcing this is the fact that Respondent expanded on Complainant’s best-known mark, MERCK, with another, lesser known, part of its corporate name. Complainant cites Abraxis BioScience, LLC v. Les Rubin, WIPO Case No. D2008-0066, which states that “[t]he fact that the webpage contains advertising links, from which Respondent likely benefits through the Registrar’s ‘Cash Parking’ monetization program, supports the inference that the purpose of Respondent’s diversion of traffic from Complainant to himself is for Respondent’s own commercial gain.” Complainant provides numerous other citations of UDRP decisions to support its claim of bad faith use of the dispute domain name by Respondent. The Panel finds that Complainant has proven Respondent’s bad-faith registration and use of the disputed domain name and thereby satisfied paragraph 4(a)(iii) 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 domain name <mercksharp.com> be transferred to the Complainant.
Dated: March 7, 2011