World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd.

Case No. D2012-0367

1. The Parties

The Complainant is Merck Sharp & Dohme Corp. of Rahway, United States of America (“USA”), represented by Lowenstein Sandler PC, USA.

The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Host Master, Transure Enterprise Ltd. of Tortola, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <merck-ina.net> is registered with Above.com, Inc. (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2012. On February 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2012, the Registrar 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 the Complainant on March 1, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Complainant filed an amended Complaint.

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 the Respondent of the Complaint, and the proceedings commenced on March 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2012.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on April 16, 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 the owner of the trademark MERCK, used and registered since 1887 in the pharmaceutical field. The disputed domain name was registered on June 26, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, the Respondent has no rights or legitimate interests in it and the Respondent registered and uses the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has proved evidence of ownership of the trademark MERCK, registered for example in the USA under number 0108566. The Panel finds that adding a dash and three letters (“ina”), which apparently have no meaning, do no render the overall impression of the disputed domain name as different from the Complainant’s trade mark. Hence, the disputed domain name is confusingly similar to the Complainant’s registered trade mark.

B. Rights or Legitimate Interests

The Complainant contends that it has given no authorization or license to use the MERCK trade mark, that the Respondent is not commonly known by the disputed domain name and that it has not conducted legitimate business under the name “merck-ina.net”.

All these considered together, the Panel accepts that the Complainant has put forward a prima facie case of the Respondent's lack of rights or legitimate interests to the disputed domain name. The Respondent chose not to challenge these allegations and accordingly the Panel accepts these arguments as facts.

Hence the Panel finds that the Respondent lacks rights or legitimate interests to the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name leads to the Respondent’s website, which a so called “pay-per-click” advertisement website. The Respondent's website promote products of the Complainant's competitors, which is demonstrated by the links included in the website. The Panel finds it likely that the disputed domain name was also registered for attracting Internet users seeking the Complainant's products to websites of other companies, another violation of paragraph 4(b)(iv) of the Policy, see Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814, citing Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.

The Panel finds that the Respondent registered and is using the disputed domain name 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 disputed domain name <merck-ina.net> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: April 29, 2012

 

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