WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. ZhenHui, HuiZhen

Case No. D2016-1431

1. The Parties

The Complainant is Merck Sharp & Dohme Corp. of Rahway, New Jersey, United States of America (“United States”), represented by Reed Smith LLP, United States.

The Respondent is ZhenHui, HuiZhen of China.

2. The Domain Name and Registrar

The disputed domain name <zocor.top> is registered with Zhengzhou Century Connect Electronic Technology Development Co., Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2016. On July 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18 and 19, 2016, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The revised Complaint was submitted to the Center on July 19, 2016.

On July 19, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its 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 together with the revised 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on July 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2016.

The Center appointed Francine Tan as the sole panelist in this matter on August 23, 2016. 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 leading pharmaceutical company. It is a global research-driven company that discovers, develops, manufactures, and markets a broad range of pharmaceuticals throughout the world. The Complainant states that it invests billions of dollars in the research and development of its broad portfolio of highly-innovative prescription drugs, focusing in the therapeutic areas of cardiovascular, diabetes, obesity, respiratory, immunology, infectious disease, oncology, women’s health and neurosciences. In 2015, the Complainant had sales of over USD 39.4 billion. Over USD 6.7 billion was spent on research and development and over USD 10.3 billion on marketing in 2015.

The Complainant is the owner of the ZOCOR trade mark which has been registered in jurisdictions throughout the world. The ZOCOR trade mark has been used by the Complainant since as early as 1986. The ZOCOR trade mark has been registered in many countries including the following jurisdictions: Australia, Brazil, Canada, China, European Union, India, Jordan, Republic of Korea, and United States. In China, the Complainant’s trade mark rights have existed for over a quarter of a century.

The Complainant also owns domain names and web addresses incorporating its ZOCOR trade mark. Examples include domain name registrations composed entirely of the Complainant’s ZOCOR mark, e.g., <zocor.com> and <zocor.info>.

The Complainant states that as a result of its extensive research, investment and sales, its ZOCOR-branded pharmaceutical products have received significant marketplace attention. Internet search engine results reveal over 1,000,000 webpages related to the Complainant’s ZOCOR trade mark, and searches of media databases reveal thousands of articles about the Complainant’s ZOCOR products. The Complainant’s ZOCOR-branded products generated over USD 217 million in 2015.

The Complainant is known for its extensive community and charitable efforts and is at the forefront of efforts to provide innovative solutions to improve the quality of life. It uses its resources and expertise to develop treatments and partnerships to address threats to the public including those posed by diseases such as Ebola, cancer, and hepatitis C. The Complainant was ranked among the top ten in the latest Access to Medicines Index (2014), which ranks pharmaceutical companies on global access to medicines; it has also been acknowledged for its corporate responsibility as a result of its innovative efforts to support its employees, the community, and the environment.

The disputed domain name was registered on July 17, 2015. It resolves to a landing page featuring various Chinese language links which translate to English as “Products”, “Classic Care”, “Service Support”, “Expert Opinions”, “Tips”, “Common Problems”, and “About Us”. It also has other links which translate to English as “News”, “Online Store”, “Industry Analysis”, and “Events”. These links direct users to pages hosted at the disputed domain name which include links to third-party websites and articles. The articles hosted by the disputed domain name contain references to pornography, gambling, and other illicit activity; third-party websites are promoted by many of the articles including <avqvod.com> (pornography and malware), <22sex.com> (links to third party websites), <dvd1122.com> (malware), <bbee86.com> (gambling), <sewang6.com> (pornography), <23pppp.com> (pornography), and many other sites which are not related to the Complainant. The pages also include advertisements for an online store and promotion of services offered by other websites.

Following an independent review of the WhoIs records associated with the disputed domain name, the results confirmed that the address and phone number details provided by the Respondent were false. Thereafter, the Complainant sent a notice letter to the Respondent in which it requested that the disputed domain name be transferred to the Complainant. The Complainant never received a reply from the Respondent. The Complainant’s representative in China then attempted to contact the Respondent by phone and discovered that the number provided in the WhoIs records did not connect with an active telephone line. Further investigations revealed that the contact details provided for the disputed domain name corresponded to the Renmin University in China, a reputable university which has no association with the disputed domain name.

5. Parties’ Contentions

A. Complainant

1. The disputed domain name is identical to the Complainant’s distinctive and well-known trade mark. The disputed domain name is composed solely of the ZOCOR trade mark with a generic Top-Level Domain (“gTLD”) extension. Numerous earlier UDRP panels have consistently held that gTLD extensions should be discounted when comparing a domain name in dispute with a trade mark for similarity.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered more than a quarter of a century after the Complainant obtained rights in the ZOCOR trade mark. There is no evidence that the Respondent has been commonly known by the disputed domain name or owns rights therein; the Complainant has never granted a licence to the Respondent for the use of the trade mark ZOCOR; and the Respondent has never been affiliated to the Complainant; the Complainant’s ZOCOR mark is not a dictionary word, a colloquial term or an abbreviation which could be used in a descriptive fashion to support claims of rights or legitimate interests on the Respondent’s part.

3. The disputed domain name was registered and is being used in bad faith. The incorporation of the distinctive and well-known trade mark ZOCOR in the disputed domain name is prima facie evidence that the Respondent registered the disputed domain name in bad faith. Further, the Respondent’s activities confirm bad faith use: firstly, the use of the disputed domain name to divert Internet users to, inter alia, gambling and pornographic material and other illicit content has been at the expense of the Complainant’s ZOCOR trade mark and associated goodwill; secondly, the Respondent is also displaying links to third-party websites alongside content promoting and advertising those websites, factors which further establish that the Respondent is encouraging traffic to these webpages by using the Complainant’s ZOCOR trade mark.

The use of a domain name to steer Internet traffic to pornography reinforces a finding of bad faith registration and use. The record shows that the Respondent has been using the disputed domain name to drive traffic to other websites, thereby using the disputed domain name and the Complainant’s ZOCOR trade mark to divert consumers elsewhere for commercial gain.

The Complaint has accessed websites associated with the disputed domain name by using a proprietary cloud-based application which evaluates websites for malicious content. The said application employed by the Complainant confirmed that malicious malware and virus content were detected at websites promoted by the disputed domain name. This content further establishes bad faith, as the content of the website to which the disputed domain name resolves could seriously harm Internet users seeking the Complainant’s ZOCOR products. This activity combined with the use of the disputed domain name to promote illicit services will very likely be detrimental to the goodwill associated with the Complainant’s ZOCOR mark and dilute the value of the Complainant’s ZOCOR trade mark.

In addition to the examples of commercial and malicious activities, the Respondent has been found to have provided false contact information to the Registrar. The provision of such false WhoIs contact information is not only prima facie evidence of bad faith registration and use, but is further evidence of attempts to mislead Internet users because those who may seek confirmation of the registered owner of the disputed domain name may be misled to believe that it is sponsored by Renmin University and/or may be associated with medical research, safety, and other information associated with the Complainant and its ZOCOR trade mark. The provision of false WhoIs information supports the presumption of bad faith registration.

In addition to the above, the Respondent did not reply to the Complainant’s demand letter which was sent to the Respondent’s email address, a factor which constitutes further evidence of bad faith.

The Complainant has superior rights in the ZOCOR trade mark, which has become well known. The Respondent has selected and is using the disputed domain name in an effort to divert Internet traffic and trade off of the Complainant’s well-known ZOCOR trade mark.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

The language of the Registration Agreement is Chinese. Paragraph 11 of the Rules prescribes that in the absence of an agreement between the parties or unless specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement. The Panel has the discretion under paragraph 11 of the Rules to determine otherwise, “having regard to the circumstances of the administrative proceeding”. Paragraph 10(b) and (c) of the Rules stipulate that the panel has to ensure that the administrative proceeding takes place “with due expedition” and to ensure fairness to the parties.

The Complainant has requested that English be the language of the proceeding for the following reasons:

(i) The disputed domain name is composed of the exact representation of the Complainant’s coined and distinctive ZOCOR trade mark. The trade mark is made up of Latin characters and originates from an entity based in the United States, an English-speaking country. The disputed domain name does not comprise Chinese language characters.

(ii) The translation of the Complaint into the Chinese language would result in significant and unnecessary delay.

(iii) The Respondent may, should it choose to do so, apply to submit its Response in Chinese.

(iv) Internet searches for the Complainant’s ZOCOR trade mark, when conducted in either English or Chinese search engines, return results which are predominantly in the English language.

(v) The significant exposure of the Complainant’s trade mark ZOCOR and ZOCOR’s high degree of association with the English language would resolve any doubts concerning the appropriate language for the proceeding.

The Respondent did not respond on the issue of the language of the proceeding.

The Panel has taken into account the reasons put forward by the Complainant and all the relevant circumstances of this case. The Panel determines that it would be appropriate for English to be the language of the proceeding. The combination of elements in the disputed domain name, namely a trade mark which is widely known and features in the English-speaking world, so to speak, with the gTLD “.top”, are strongly suggestive of the fact that the Respondent is, more likely than not, familiar with the English language. The Respondent has been given the opportunity to request that Chinese be the language of the proceeding but has failed to. The Respondent has been given the opportunity to rebut the Complainant’s assertions and protect its interests by responding to the Complaint in Chinese, having received all communications from the Center in both Chinese and English. Hence, the Panel does not consider it probable that the Respondent will be prejudiced by English being adopted as the language of the proceeding. Requiring the Complainant to have the Complaint and annexes translated into Chinese would be inefficient and cause a delay in the proceeding. It would particularly be burdensome in both time and costs.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy. The Complainant has registered trade mark rights in ZOCOR. The entire mark has been adopted in the disputed domain name without any additions or significant modifications which might serve to remove the confusing similarity with the Complainant’s ZOCOR trade mark.

The gTLD “.top” in the disputed domain name does not remove the identity/confusing similarity with the Complainant’s trade mark since the said gTLD constitutes an inherent technical feature of the disputed domain name.

The Panel therefore finds that the disputed domain name is identical to the Complainant’s ZOCOR trade mark.

C. Rights or Legitimate Interests

The Panel determines, having considered the evidence submitted, that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The use and registration of the disputed domain name was not permitted nor authorized by the Complainant. There is also no evidence that the Respondent is commonly known by the disputed domain name.

Further, with due regard to (i) the significant length of time the ZOCOR mark has been in use, (ii) the Complainant’s reputation, and (iii) the distinctive and unique nature of the word “Zocor”, the Panel considers that it would require a high threshold of clear and unequivocal evidence from the Respondent to establish that it has rights or legitimate interests in respect of the disputed domain name. In not having filed any response in the proceeding nor to the Complainant’s demand letter, the Panel draws a negative inference against the Respondent and concludes that the Respondent has no rights or legitimate interests in the disputed domain name. The false WhoIs information provided by the Respondent upon registration of the disputed domain name is also a factor that weighs heavily against the Respondent. The Respondent has not proffered any evidence to show how it came to choose the disputed domain name or how it has a legitimate interest therein.

In the absence of any rebuttal evidence by the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The second element of paragraph 4(a) of the Policy has been established.

D. Registered and Used in Bad Faith

The Complainant has referred to the Respondent’s “porno-squatting” (i.e., the use of a well-known trade mark by a cybersquatter in a domain name to steer Internet traffic to its pornographic sites). The Panel agrees with the decision the Complainant cited – Prada S.A. v. Ms. Loredana Salvatori, WIPO Case No. D2007-0064 – in which the panel concluded that “the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith” (citing Six Continental Hotels v. Seweryn Nowak, WIPO Case No. D2003-0022). The use of a domain name incorporating a third party’s trade mark for the purposes of attracting and diverting Internet traffic to gambling websites is also evidence of bad faith (see cases cited by the Complainant - Hershey Foods Corporation v. DRP Services Hersheychocolateworld-Com-Dom, WIPO Case No. D2003-0841; Ameriquest Mortgage Co. v. Ling Shun Shing, WIPO Case No. D2003-0294; Fairchild Publ’n, Inc., v. For Sale Domain Yomtobian, WIPO Case No. D2000-1003; and AltaVista Company v. Alt Pile Co., WIPO Case No. D2002-0933).

The disputed domain name in this instance has been used to divert Internet traffic to pornographic and other illicit material and websites. It has also been used to divert Internet traffic to the websites of third parties. Such use cannot be deemed as anything but to be in bad faith.

Paragraph 4(b)(iv) of the Policy provides that where a domain name registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. The Panel agrees that by registering the disputed domain name incorporating the Complainant’s ZOCOR trade mark (the Respondent not having any obvious connection to the name “Zocor” or rights thereto) and using it to promote links and drive traffic to third-party websites with commercial content such as gambling and pornography, the Respondent is thereby diverting Internet traffic from the Complainant’s official websites in violation of paragraph 4(b)(iv) of the Policy.

The fact that the Respondent provided false and misleading contact details when it registered the disputed domain name and that malicious malware and virus content have been detected at the Respondent’s and other linked websites is further evidence of the Respondent’s bad faith registration.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 disputed domain name <zocor.top> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: September 6, 2016