World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom

Case No. D2011-0700

1. The Parties

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

The Respondent is GlobalCom, Henry Bloom of Port Vila, Vanuatu.

2. The Domain Name and Registrar

The disputed domain name <januviageneric.com> (the “Domain Name”) is registered with Realtime Register B.V.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 21, 2011, the Center transmitted by email to Realtime Register B.V. a request for registrar verification in connection with the Domain Name. On May 2, 2011, Realtime Register B.V. 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 May 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2011.

The Center appointed Nick J. Gardner as the sole panelist in this matter on June 10, 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 relevant facts are straightforward and can be summarized very briefly as follows:

The Complainant is one of the world's large pharmaceutical companies.

One of its products is “Januvia”, which helps lower blood sugar levels for persons suffering from diabetes.

The Complainant's worldwide sales of “Januvia” are in excess of USD 2 billion dollars annually.

“Januvia” is a made-up word with no other meaning, coined by the Complainant for its product

The Complainant has numerous trade mark registrations throughout the world for the word “Januvia”.

There is no evidence of any use of the Domain Name by the Respondent. There is no active web site associated with the Domain Name

5. Parties’ Contentions

A. Complainant

The Complainant's contentions are equally straightforward and can be summarized as follows:

The Domain Name is confusingly similar to its trade mark JANUVIA. Addition of the word generic does not distinguish the Domain Name.

The Respondent has no rights or legitimate interests in the term “januviageneric”. There is no such thing as “Januvia generic”, given that “Januvia” is a patented drug.

The Domain Name was registered and is being used in bad faith. In this respect the Complainant relies upon a long line of UDRP decisions that a passive registration of a domain name similar to a well known name, where there can be no legitimate use of the domain name constitutes bad faith. The Complainant also argues that use of a pharmaceutical name in combination with the word “generic” is to be considered as a direct reference to the pharmaceutical product itself, and is a further indication of bad faith

The Respondent has a number of other names combining the word “generic” with pharmaceutical names, itself indicative of a history of bad faith registration (for example the domain name <genericviagra1.com>).

B. Respondent

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

6. Discussion and Findings

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(1) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(3) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the trade mark JANUVIA.

The Domain Name is confusingly similar to the JANUVIA trade mark. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

It is also established that the addition of a generic term (such as here the very word "generic") to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

Accordingly the Panel finds that the Domain Name is confusingly similar to the Trade Mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

“Januvia” is a made-up word with no other meaning save in relation to the Complainant's product. The Panel accepts that the addition of the word "generic" to a pharmaceutical trade name indicates a deliberate intent to reference the Complainant's product and make use of its name. There is no conceivable basis upon which the Respondent has any right or legitimate interest to do that. It is also impossible to conceive of any other right or legitimate interest the Respondent could have in the Domain Name.

Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainant that the line of authorities going right back to Telstra Corporation Unlimited v Nuclear Marshmallows, WIPO Case No. D2000-0003, establishes that the registration and passive holding of a Domain Name, which has no other legitimate use and clearly references the Complainant's trademark constitutes registration and use in bad faith. The Panel therefore finds that the Domain Name has been registered and used in bad faith. The Panel also agrees that in the pharmaceutical context the combination of a pharmaceutical trade mark with the word “generic” is itself indicative of registration and bad faith – see for example Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310, and the various cases cited in that decision. In the light of these findings it is not necessary to consider issues about other domain names the Respondent holds, which are not the subject of this dispute.

Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled and the Domain Name has been registered and used 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 Domain Name <januviageneric.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Dated: June 24, 2011

 

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