World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schering Corporation v. Semen Sokolov

Case No. D2012-0194

1. The Parties

The Complainant is Schering Corporation, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America (the “United States”).

The Respondent is Semen Sokolov, Moscow, m.oblast, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <medl-claritin.com> (the “Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and MediationCenter (the “Center”) on February 3, 2012. On February 6, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 6, 2012, eNom 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 February 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2012.

The Center appointed Nicholas Smith as the sole panelist in this matter on March 9, 2012. 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 a subsidiary of Merck & Co., Inc, of United States of America.

Since at least 1994 the Complainant has promoted and sold medication under the name “Claritin”. This medication, also known as loratadine,is used for the treatment of allergies. The Complainant has registered a trade mark consisting of the word “Claritin” (the “CLARITIN Mark”) in the United States and throughout the world, including in Russia, where the Respondent is based.

The Domain Name <medl-claritin.com> was registered on December 21, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is confusingly similar to the Complainant’s CLARITIN Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the CLARITIN Mark. It holds over 30 registrations for the CLARITIN Mark and related marks in United States. It has also registered the CLARITIN Mark in multiple countries around the world including Russia, the location of the Respondent. The CLARITIN Mark is applied to a drug produced by the Complainant, namely loratadine, which is used for the treatment of allergies.

Based on the sales and advertising of Claritin, the CLARITIN Mark is a well-known mark. In 2011, the Complainant’s gross sales of Claritin in the United States were approximately USD 440 million. In 2011, the Complainant spent approximately USD 150 million on marketing and promotion of the CLARITIN Mark. In 2011 there were approximately 3,244,659 visits to the Complainant’s website located at “www.claritin.com”.

The Respondent registered the Domain Name on December 21, 2011. The Domain Name resolves to a website (“Respondent’s Website”) that purports to offer for sale the Complainant’s Claritin medication, as well as other pharmaceutical products. This sale has not been authorized by the Complainant.

The Domain Name consists of the CLARITIN Mark in its entirety with the addition of the term “medl-”. The term “medl-” is a variation or typo of the term “med” which itself can be an abbreviation of the word “medication”. There are a number of panel decisions that find that the addition of the descriptive word “med” to a trade mark resulted in a finding of confusing similarity, see Hoffman-La Roche Inc. v Private Person, Petr S Grishin, WIPO Case No. D2010-1235 and Sanofi-Aventis v Ambien-meds.com, WPO Case No. D2006-0859.

The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized or licensed the Respondent to use the CLARITIN Mark. The Respondent is not commonly known by the Domain Name nor has it conducted a legitimate offline business under the Domain Name. Given the use of the Domain Name to purport to sell Claritin, the Respondent must have been aware of the Complainant’s rights at the time the Doman Name was registered. As such, the Respondent is using the Domain Name to misleadingly attract customers to the Respondent’s Website for its own commercial gain. This is not legitimate use and as a result, the Respondent has no rights or legitimate interests in the Domain Name.

By reason of the existence of the Respondent’s Website, the Respondent registered the Domain Name with the intent of diverting Internet traffic from users seeking to locate websites owned or authorized by the Complainant to its own website. Such use amounts to the diversion or disruption of the Complainant’s business and is use in bad faith. Furthermore, the Respondent registered the Domain Name while being aware of the Complainant’s Mark and then used the Domain Name to sell pharmaceuticals. This conduct amounts to bad faith registration and use as set out in paragraph 4(b)(iv) of the Policy, namely that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website 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 the Respondent’s Website or location or of a product or service on the Respondent’s website or location.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the CLARITIN Mark, having registrations for CLARITIN as a trade mark throughout the world, including in Russia, where the Respondent is based.

Past UDRP decisions have found that a domain name that consists of a complainant’s mark and a descriptive term is confusingly similar to a complainant’s trade mark - see Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HTL International IP LLC v mga enterprises limited/Domains By Proxy, Inc., WIPO Case No. D2010-1064. This is especially the case when the descriptive term is related to a good or service provided by the Complainant. In particular, the UDRP decisions in Hoffman-La Roche Inc. v Private Person, Petr S Grishin, WIPO Case No. D2010-1235 and Sanofi-Aventis v Ambien-meds.com, WIPO Case No. D2006-0859 found that a domain name that consists of a pharmaceutical complainant’s trade mark and the descriptive abbreviation “med” (short for “medication”) satisfies the first element.

The Domain Name consists of the CLARITIN Mark and the prefix “medl-“. This prefix could be seen as a variation or typo of the abbreviation “med”, short for “medication” and does not operate to distinguish the Domain Name from the CLARITIN Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s CLARITIN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the 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 legitimate non-commercial 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.” (Policy, paragraph 4(c))”.

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CLARITIN Mark or a mark similar to the CLARITIN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Respondent’s Website, at the time of the Complaint, appeared to promote the services of Canadian and Mexican online pharmacies. It offered a number of pharmaceutical products including Claritin for sale. In addition to displaying the CLARITIN Mark, the Respondent’s website made reference to a number of other well-known pharmaceutical brands, including Sudafed, Sinex and Viagra. The Respondent is not authorized to sell Claritin by the Complainant, nor is there any evidence that products offered for sale by the Respondent are genuine products produced by the Complainant. This unauthorized use of the Complainant’s CLARITIN Mark does not amount to a bona fide offering of goods and services. Rather, the Respondent is attempting to attract, for commercial gain, Internet users to its commercial website by creating a likelihood of confusion with the Complainant’s CLARITIN Mark.

The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel finds that the Respondent at the time of registration of the Domain Name knew of the existence of Complainant. The Domain Name resolves to a website that, at the time of the Complaint, displayed the CLARITIN Mark, the name of a product sold and promoted extensively by the Complainant. Claritin is not an ordinary English word. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the CLARITIN Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the CLARITIN Mark.

The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own is registration in bad faith.

The use of the Domain Name to sell pharmaceutical products, including a product that purports to be the Complainant’s Claritin medication is use of the Domain Name in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s CLARITIN Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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 <medl-claritin.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Dated: March 12, 2012

 

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