WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck Sharp & Dohme Corp. v. Yan Wei
Case No. D2011-0803
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 Yan Wei of the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <wwwmerckmanuals.com>is registered with Hangzhou E-Business Services Co., Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2011. On May 9, 2011, the Center transmitted by email to Hangzhou E-Business Services Co., Ltd. a request for registrar verification in connection with the disputed domain name. On May 10, 2011, Hangzhou E-Business Services Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 10, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 12, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2011.
The Center appointed Douglas Clark 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.
Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant requested the language of the proceeding be in English on the grounds that the Respondent’s website under the disputed domain name was written solely in English; the disputed domain name is an English domain name and that it would be inconvenient to for the Complainant to translate the Complaint into Chinese.
The Respondent has not responded to the proceedings nor to the request that the language of the proceeding to be in English.
In the circumstances of this case, the panel determines that English and Chinese shall be the language of the proceeding. The reasons given by the Complainant are not sufficient reasons to deprive the Respondent of the right to respond in Chinese had he/she so wished to. The website under the disputed domain name is a parking page. The fact that a parking page is in English does not necessarily show a respondent is fluent in that language. On the other hand, given the Respondent has not responded to the case on its merits or in relation to the language of the proceeding, it would be unfair on the Complainant to request them to translate the Complaint into English. As the only documents before the panel are in English, the decision will be issued in English.
4. Factual Background
The Complainant is the MERCK trademark as well as the larger family of marks to which the MERCK mark belongs, as well as trade names incorporating the MERCK name (hereinafter collectively referred to as the “MERCK Family of Marks”). The MERCK Family of Marks includes the trademark MERCK MANUAL, the world’s best selling medical textbook. The Complainant has longstanding and extensive use of the Merck Family of Marks, including the MERCK MANUAL trademark. The Complainant has used the MERCK Family of Marks since at least as early as 1887.
The Complainant is one of the world’s largest pharmaceutical companies. In 2009 alone, the Complainant had sales of over 27 billion US dollars, selling products worldwide. The Complainant has over 100,000 employees worldwide. The Complainant focuses its research efforts in the therapeutic areas of cardiovascular, diabetes, obesity, bone, respiratory, immunology, dermatology, infection, infectious disease, oncology, neurosciences, ophthalmology, women's health and endocrine, spending 5.8 billion US dollars on research and development in 2009. Given such extensive worldwide operations and sales, the MERCK Family of Marks, including the MERCK MANUAL trademark, has acquired substantial worldwide recognition.
The Complainant is currently the proprietor of 12 United States federal trademark registrations (and one pending trademark application) for the MERCK Family of Marks. In particular, the Complainant holds three United States federal trademark registrations for THE MERCK MANUAL, THE MERCK VETERINARY MANUAL and THE MERCK MANUAL OF GERIATRICS.
The Complainant owns approximately 400 worldwide trademark registrations incorporating the MERCK marks.
The Complainant currently owns over 700 top-level and country code domain names incorporating the MERCK Family of Marks, including, but not limited to <merck.com>, <merckmanual.com>, <merckmanuals.com>, <merck.biz> and <merck.us>.
The Respondent registered the disputed domain name <wwwmerckmanuals.com> on November 24, 2010.
At the time of filing the case, the Respondent used the disputed domain name as a landing page provided by Sedo.com’s Domain Parking service. This landing page includes pay-per-click links to third party websites. According to Sedo.com’s website, Sedo.com’s Domain Parking service displays ads on the domain name which earn money for the domain name owner when the ads are clicked.
5. Parties’ Contentions
The Complainant contends the disputed domain name should be transferred to the Complainant because, within the meaning of paragraph 4 of the Policy, the disputed domain name is confusingly similar to the MERCK Family of Marks and the MERCK MANUAL trademark, in particular.
The Merck Manual of Diagnosis and Therapy, simply known as The Merck Manual, was first published in 1899 and is the world’s best selling medical textbook. The Merck Veterinary Manual was first published in 1955 and serves as a comprehensive resource for animal health professionals. The Complainant also publishes The Merck Manual of Geriatrics. Each of these reference guides is published annually in multiple languages and used by medical practitioners worldwide.
The disputed domain name <wwwmerckmanuals.com> is virtually identical and confusingly similar to the Complainants’ famous MERCK Family of Marks, including, in particular, the MERCK MANUAL trademark. The only difference is that the disputed domain name adds the letters “www” at the beginning of the disputed domain name. UDRP Panels have held that this difference is not sufficient to obviate a finding that the domain name is identical and confusingly similar to the complainant’s trademark: “The only difference present is that the generic prefix ‘www’ is incorporated in the Domain Name. The <wwwboniva.com> adds the ‘www’ at the beginning without a doubt to capture any misdirected traffic as a result of a typographical error. If a domain name incorporates a distinctive mark, such as Complainant’s, in its entirety, it is confusingly similar to that mark despite the addition of other words”. Roche Therapeutics Inc. v. Venkateshwara Distributor Private Limited/ PrivacyProtect.org, WIPO Case No. D2010-1391.
The Respondent can have no purpose for registering the disputed domain name other than to cause confusion and profit from the goodwill established in the Complainant’s mark. This is a classic case of both typosquatting and initial-interest confusion.
No rights or legitimate interests
The Respondent cannot demonstrate any legitimate interest in the disputed domain name. The Respondent registered the disputed domain name well after the Complainant had established its rights in the MERCK Family of Marks, including the MERCK MANUAL trademark.
The Respondent is not commonly known by the disputed domain name. Further, to the Complainant’s knowledge, the Respondent has never conducted a legitimate offline business under the name “wwwmerckmanuals.”
The Respondent has been granted no license or other rights to use the Complainant’s Marks as part of any domain name or for any other purpose. The Complainant is in no way associated or affiliated with the Respondent.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and the only possible use of the disputed domain name would be to misleadingly use it to attract customers to its website for its own commercial gain. Indeed, the Respondent’s current use of the disputed domain name as a page featuring links relating to the pharmaceutical industry is evidence of the Respondent’s intent to mislead.
The Respondent currently uses the disputed domain name to house an assortment of misleading pay-per-click links to third party websites. The sort of “cash parking” program offered by Sedo.com has been held to “misleadingly divert customers seeking information about the Complainant, as well as tarnish the trademark of the Complainant”. Toronto Port Authority v. Frank Touby and Community Bulletin Newspaper Group, Inc., WIPO Case No. D2007-0096.
The Respondent is not using the disputed domain name for the bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain name. It is clear that the Respondent’s behavior constitutes “typosquatting”, by registering a domain name that is a close misspelling of the Complainant’ sMarks, and this use does not constitute a legitimate business use under the Policy. See e.g., PHE, Inc. v. Chris Calnek, WIPO Case No. D2006-1612; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.
Registered and used in bad faith
Bad faith is found when “it appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned website for commercial gain due to confusion with Complainant’s mark”. Infospace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075.
The unauthorized use of the Complainant’s trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008-1344.
It is impossible to conceive of a good faith reason for the Respondent’s registration and use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <wwwmerckmanuals.com> is clearly confusingly similar to the Complainant’s trademark registration for MERCK MANUAL. The addition of the letters “www”, meaning “worldwide web” and used to direct pages to the worldwide web, does not add anything to the disputed domain name and given that users could mistype the address by forgetting to type the dot between “www” and “merckmanuals.com” is clearly designed to confuse. The Panel agrees with the reasoning of the Panel in Roche Therapeutics Inc. v. Venkateshwara Distributor Private Limited/ PrivacyProtect.org, WIPO Case No. D2010-1391 cited by the Complainant. The removal of the word “the” which is present in the Complainant’s registered trademark THE MERCK MANUAL and the addition of the letter “s” do not detract from the similarity.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to provide any evidence as to any rights or legitimate interests he/she may have. In the circumstances, the Panel accepts that the Complainant’s submissions that the Respondent has no rights or legitimate interests in the disputed domain name. The similarity of the disputed domain name and the use as a parking page to generate revenue all point to the Respondent, even if he/she had responded, being able to convince the Panel that he/she had rights or legitimate interests.
C. Registered and Used in Bad Faith
Similarly, the similarity of the disputed domain name and the use being made of the disputed domain name as a parking page can only lead to the conclusion that the disputed domain name has been registered as is being used in bad faith. The Panel agrees with the decision in Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008-1344 that the use of a domain name to generate click through revenue constitutes registration and use in bad faith under the policy.
For 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 <wwwmerckmanuals.com> be transferred to the Complainant.
Dated: June 27, 2011