World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Krivorychko Petr

Case No. D2012-0400

1. The Parties

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

The Respondent is Krivorychko Petr of Kiyv, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <propeciacanada.org> is registered with Internet.bs Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2012. On February 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2012, the Registrar 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 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 26, 2012.

The Center appointed Marie Emmanuelle Haas as the sole panelist in this matter on April 4, 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 asserts that it has used the trademark PROPECIA for pharmaceutical preparations for the prevention and treatment for of hair loss since as early as 1997 in many jurisdictions around the world. It owns approximately 178 trademark registrations for PROPECIA, and at least 108 domain names incorporating the trademark PROPECIA.

The disputed domain name <propeciacanada.org> was registered on January 22, 2010. It is being used to resolve to a website, titled “Propecia Canada”, presenting the PROPECIA products. When clicking on the link “Buy Propecia”, the Internet user is redirected to another website located at “www.md-u.com/buy-propecia-usa.html”, where pharmaceutical products are available for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following.

The domain name <propeciacanada.org> is confusingly similar to the trademark of the Complainant. The disputed domain name incorporates the Complainant’s well-known trademark PROPECIA in its entirety. The only difference is the addition of the geographical term “Canada”, which is not sufficient to avoid any likelihood of confusion.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent to use its trademark PROPECIA. The Respondent has been commonly known under the disputed domain name and he is not making a legitimate noncommercial use of the disputed domain name. On the opposite, he is using the disputed domain name to misleadingly attract customers to his website for his own commercial gain.

The disputed domain name has been registered and used in bad faith.

The Respondent’s purpose in registering the disputed domain name, which incorporates the trademark PROPECIA, is to attract Internet users to its website for commercial gain, to suggest that he is somehow related or affiliated with the Complainant and to divert traffic.

The disputed domain name is used in bad faith since it disrupts the Complainant’s business. The true purpose in registering the disputed domain name is to capitalize on the reputation of the PROPECIA trademark. The Respondent has intentionally attempted to attract Internet users for financial gain to the Respondent’s website by creating a likelihood of confusion with the PROPECIA trademark, as to the source, affiliation and endorsement of the Respondent’s website. It constitutes bad faith registration and use, pursuant to paragraph 4(b)(iv) of the Policy.

The Complainant requests the disputed domain name <propeciacanada.org> to be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 Complainant has established prior rights in the registered trademark PROPECIA, which is registered for products in International Class 5 and is used to designate a product for for the treatment of male pattern hair loss.

The disputed domain name incorporates the trademark PROPECIA and merely adds the descriptive geographical term “Canada”. The addition of such a descriptive term is not sufficient to avoid any likelihood of confusion.

The Panel notes additionally that the risk of confusion should be considered with even greater care since the products designated by the Complainant’s trademark are pharmaceuticals. Therefore, the confusing similarity could eventually lead to the sale of harmful or inappropriate products.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The condition of the paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As set forth by paragraph 4(c) of the Policy, 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 the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial 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.

The Respondent did not respond to the complaint. Therefore, he did not use this opportunity to provide any evidence or circumstances required to establish that he has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.

The Complainant’s use of the trademark PROPECIA predates the Respondent’s registration of the disputed domain name.

There is no evidence that the Respondent makes noncommercial and fair use of the disputed domain name without intention to divert consumers, as addressed under paragraph 4(c) of the Policy. On the opposite, the Respondent makes a commercial gain since the disputed domain name resolves to a website that, through the link site ”www.md-u.com/buy-propecia-usa.html”, offers Propecia product and other pharmaceutical products.

Furthermore, the Respondent has no connection or affiliation with the Complainant, and the latter asserts it has not consented to the Respondent’s use of the trademark in the disputed domain name.

The evidences submitted by the Complainant adequately support its assertions.

Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by the Panel to be evidence of the bad faith registration and use of a domain name. It provides that:

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 the Respondent 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 owner of the trademark or service mark or to a competitor of that 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 trademark 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 online 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 its website or location.

In the Panel’s view, the Respondent must have been aware of the rights on the prior trademark PROPECIA when registering the disputed domain name.

The Panel finds that the disputed domain name was registered intentionally to misdirect customers looking for the Complainant’s website relating to PROPECIA. This constitutes bad faith registration.

The Complainant’s evidence shows that the disputed domain name resolves to a website offering to purchase online PROPECIA products.

It clearly shows that the Respondent is intentionally using the disputed domain name to misleadingly divert customers for commercial gain. Thus, it also creates confusion for consumers as to the Complainant’s trademark as to the source, affiliation, or endorsement as addressed within the meaning of paragraph 4(b)(iv) of the Policy (see Sanofi-Aventis, Aventis Pharma S.A., Merrell Pharmaceuticals Inc. v. George Breboeuf, WIPO Case No. D2005-1345.

The Panel finds support in decisions Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, in which it was held that bad faith is established when “[r]espondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”, and Aventis, Aventis Pharma SA v. VASHA Dukes, WIPO Case No. D2004-0276 (<buy-aventis.com>), in which it was held that “to a certain extent, Respondent is encouraging consumers to enter into an irresponsible pattern of conduct in the purchase of drugs and even to self-medication in respect to those that need prescription” and thus finding that the respondent’s sale of the complainant’s pharmaceuticals without prescription using the complainant’s trademark as its domain name may “lessen the reputation associated with the Complainant’s trademarks”.

The use of the disputed domain name is likely to confuse purchasers, all to the damage of the Complainant and the possible harm of the purchasing public. Furthermore, the Respondent seeks to divert Internet users searching information on PROPECIA products to its website. Such a use is a clear indication of bad faith on the part of the Respondent.

This constitutes bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.

For the foregoing reasons, the Panel finds that the Complainant has also established the finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) and 4 (b)(iv) 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 <propeciacanada.org> be transferred to the Complainant.

Marie-Emmanuelle HAAS
Sole Panelist
Dated: April 18, 2012

 

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