WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schering Corporation, a subsidiary of Merck & Co., Inc. v. RLS Holding / M Lamghari
Case No. D2012-0196
1. The Parties
The Complainant is Schering Corporation, a subsidiary of Merck & Co., Inc. of New Jersey, United States of America, represented by Lowenstein Sandler PC of United States of America.
The Respondent is RLS Holding / M Lamghari of Fujairah, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <claritinbuy.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2012.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on March 14, 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 pharmaceutical company which develops and promotes branded products. Among the Complainant’s product portfolio is the anti-allergy drug sold under the brand name Claritin. Loratadine is the international non-proprietary name of the active ingredient in Claritin. Claritin has been on sale since at least 1994.
In the United States, the Complainant’s current gross sales of Claritin are approximately $450 million per year and the Complainant invests approximately $150 million annually in the promotion of Claritin.
The Complainant has registered many trade marks for, including variants of, the word ”Claritin” in respect of anti-allergy preparations (among other things) in the United States and many other countries around the world. The Complainant filed trade mark applications for the word “Claritin” in the United States as early as February 12, 2003 (registered number 3307710) and obtained registered rights in respect of the word “Claritin” at least as early as February 24, 2004 (registered number 2816780).
The Complainant also owns and operates a number of top level and country code domain names which include the trade mark CLARITIN. The Complainant’s website at <claritin.com> attracts approximately 2.5 to 3 million visitors each year.
The Respondent registered the disputed domain name on December 9, 2011. The Respondent uses the disputed domain name to operate an online pharmacy. In particular, the Respondent sells anti-allergy products including generic versions of the Complainant’s Claritin product. It is not apparent whether it is possible to buy the Complainant’s Claritin product from the Respondent’s website. Although products are advertised as Claritin, the product information describes the product as “Generic Claritin”.
The Respondent also appears to be the registrant of several other domain names which include the brand name of pharmaceutical products, for example, <buylioresal.com> and <soriatane.net>.
5. Parties’ Contentions
The Complainant contends that the trade mark CLARITIN is well known in the United States and throughout the world as a result of extensive use and its heavy investment in advertising.
The disputed domain name, which comprises the trade mark CLARITIN followed by the generic word “buy”, is said to be confusingly similar to the Complainant’s trade mark such that Internet users are likely to be attracted to the Respondent’s website believing that it is related to the Complainant or its products.
The Complainant has indicated that it has not licensed the Respondent to use its trade mark or authorized the Respondent to sell its product. It is averred that the Respondent has no other right or legitimate interest in the disputed domain name.
The Complainant therefore asserts that the Respondent has no purpose for registering the disputed domain name other than to cause confusion or take unfair advantage of the Complainant’s trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To be satisfied that the Complaint is made out and to order the transfer of the disputed domain name the Panel must be satisfied that each of the following three elements set out under paragraph 4(a) of the Policy is made out:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and,
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the word “Claritin” by virtue of trade mark registrations throughout the world and long and intensive use of the same.
The disputed domain name varies from the Complainant’s trade mark only by the addition of the generic word “buy”. This difference does not significantly distinguish the disputed domain name from the Complainant’s trade mark to avoid confusion. To the contrary, the use of the word “buy” suggests that the Complainant’s products sold under the CLARITIN trade mark are available for purchase on the Respondent’s website.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use its CLARITIN trade mark. Furthermore, there is no evidence that the Respondent is commonly known by the disputed domain name.
The Respondent uses the disputed domain name to operate an online pharmacy. This is plainly a commercial enterprise.
The Respondent has a limited product range (primarily directed to the treatment of allergies) that purports to include the Complainant’s Claritin products. However, the literature found on the Respondent’s website providing more information on these products identifies them as “Generic Claritin”. By definition, a generic product is not authorized to be sold under the trade mark associated with the original branded product.
Furthermore, several of the other products offered by the Respondent appear to be products that directly compete with the Complainant’s Claritin products. The Respondent’s use of the disputed domain name is therefore prima facie not bona fide, because it does not use the Complainant’s trade mark to sell the Complainant’s Claritin products, but uses it to sell products that compete directly with those products.
In the Panel’s view, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name such that the burden shifts to the Respondent for rebuttal. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In the absence of any Response by the Respondent, the Panel draws the inference that the Respondent has no rights or legitimate interests in the disputed domain name (Betsson Malta Limited v. John Droker, WIPO Case No. D2010-0883) and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
It seems very unlikely that the Respondent registered the disputed domain name without knowledge of the Complainant’s CLARITIN trade mark. Claritin is a made up word with no natural meaning in the English language. It has been used for many years by the Complainant to promote its anti-allergy medicine which has achieved very significant levels of sales in at least the United States in the past couple of years. It is inconceivable that the Respondent registered the disputed domain name for the purpose of selling generic versions of the Complainant’s product without prior knowledge of the Complainant’s trade mark.
The only plausible explanation for the Respondent including the Complainant’s trade mark in the disputed domain name (absent any indication to the contrary from the Respondent), is that the Respondent was seeking to attract Internet users to its website by falsely suggesting that this website has some connection with the Complainant or its Claritin products.
The Panel, therefore, concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of 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, <claritinbuy.com> be transferred to the Complainant.
Dated: March 22, 2012