WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck Sharp & Dohme Corp. v. Domain Admin
Case No. DCO2010-0052
1. The Parties
Complainant is Merck Sharp & Dohme Corp. of Whitehouse Station, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
Respondent is Domain Admin, Privacy Protection of Beaverton, Oregon, United States of America.
2. The Domain Names and Registrar
The disputed domain names <univadis.co> and <univadis.com.co> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2010. On December 23, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On December 25, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2011.
The Center appointed Timothy D. Casey as the sole panelist in this matter on January 27, 2011. 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
Complainant began using the trademark and trade name UNIVADIS (“the Univadis mark”) in 2004 for an Internet portal targeted to the healthcare and medical professions that features a wide range of resources, including online forums, journal articles and a 3D medical image library. Complainant owns numerous trademark applications and registrations for the Univadis mark in countries all over the world. Complainant also owns several websites based on the Univadis mark, including <univadis.com>, <univadis.md>, <univadis.ca>, and <univadis.co.uk> (“the Univadis domains”).
There are 860,000 physicians registered to the domains owned by Complainant. In 2009, 160,000 users visited the Univadis domains at least one time per month. In 2010, approximately 165,000 users visited the Univadis domains at least one time per month. Approximately 283,000 users visited the Univadis domains during the first half of 2010.
Based on the evidence submitted, Respondent does not seem to own the registration to any trademarks. The disputed domain names were registered on August 1, 2010. The disputed domain names resolve to a website that lists a number of sponsored listings, which subsequently redirect Internet users to yet another website associated with the specific sponsored listing selected by the user.
In response to Complainant’s attempt to resolve the trademark dispute with Respondent prior to filing the Complaint, Respondent sought to solicit an order from Complainant to purchase the disputed domain names. While Respondent did not set a price for the disputed domain names, Respondent did indicate that the disputed domain names were “premium” domain names.
5. Parties’ Contentions
Complainant contends that the Univadis mark is a strong mark with considerable goodwill. According to the Complainant, the Univadis mark is the combination of the Latin words “uni” for “only” and “vadi” for “to go,” and allegedly means “the only way to go.” Complainant further contends that the Univadis mark is well-known within the healthcare and medical industry as a result of the strength of the Univadis mark, its commercial use, and high consumer recognition. Complainant lastly contends that given that the Univadis mark is well known, Respondent “knew or should have known” about the existence of Complainant’s trademark rights.
Complainant contends that the disputed domain names incorporate the Univadis mark. Complainant further contends that numerous decisions made under the Policy have found that the addition of suffixes such as “.com” is not a distinguishing factor and is not sufficient to avoid confusion. Complainant contends the same principles apply to the suffix “.co”. Complainant further contends that evidence that a third party “rips off” or “steals” a trademark owner’s mark is evidence of secondary meaning, and thus creates a presumption of likelihood of confusion. Complainant lastly contends that Respondent registered the disputed domain names precisely because of the association and the likelihood of confusion between the Univadis mark and the disputed domain names.
Complainant contends that Respondent registered the disputed domain names well after Complainant had established its rights in the Univadis mark. Respondent is not commonly known by the disputed domain names and has not been granted a license or other rights to use the Univadis mark as part of any domain name or for any other purpose.
Complainant contends that the use of a domain name that is identical or confusingly similar to a trademark “as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests”. Complainant further submits that previous UDRP panels have found that the use for a portal linking to websites of a complainant’s competitors is not a bona fide offering, but rather one which seeks to profit from confusion with the complainant.
Complainant contends that the unauthorized use of a complainant’s mark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under the Policy. Complainant contends that, upon information and belief, Respondent receives payment for every user that clicks on a pay-per-click link.
Complainant requests that the disputed domain names be transferred to Complainant.
Respondent is in default and did not reply to Complainant’s contentions.
6. Discussion and Findings
In view of the default by Respondent and the absence of any reply, the discussion and findings will be based upon Complainant’s contentions and any reasonable position that can be attributable to Respondent.
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before Complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
As noted above, Complainant began using the Univadis mark in 2004 and owns numerous trademark applications and registrations in countries all over the world. The disputed domain names contain the entire Univadis mark. The fact that the disputed domain names include the strings “.com” and “.co” is of no merit and does not prevent a likelihood of confusion. The suffix “.co” is the top-level domain assigned to Colombia. Complainant filed the Univadis mark in Colombia in 2006 and received the registration in 2007, at least three years before the registration of the disputed domain names. The Panel finds that the Univadis name does not appear to be recognized by Internet translators as a Latin, Spanish or other Latin language-based word(s). Given Complainant’s statement as to the origin and meaning of the Univadis name, the Panel finds the name to be distinctive and has no meaning other than to function as the Univadis mark.
As an aside, the Panel disagrees with Complainant’s contention that evidence of a third party’s theft of a trademark constitutes evidence of secondary meaning and creates a presumption of likelihood of confusion. First, secondary meaning has to do with whether a descriptive mark has obtained sufficient recognition by the public to become distinctive. Second, Complainant appears to have the likelihood of confusion argument backward, i.e., the fact that a likelihood of confusion exists between two marks can be evidence that one mark infringes upon another, but not vice versa.
Nevertheless, since the top-level domains are of no merit and the disputed domain names are otherwise identical to the Univadis mark, the Panel finds the disputed domain names to be confusingly similar to the Univadis mark and this element of the Policy to be met by Complainant.
B. Rights or Legitimate Interests
Respondent does not allege it has any rights or legitimate interests in the disputed domain names or any parts thereof. As noted above, the disputed domain names fully incorporate the Univadis mark. Respondent has not been granted a license or other rights by Complainant to utilize the Univadis mark in the disputed domain names or for any other purpose. In addition, Respondent is not personally identified with, or commonly known by, the term “univadis” in any fashion.
While the Univadis mark may be widely recognized within its applicable industry, the Panel does not consider that an ordinary person would recognize the Univadis mark or associate the Univadis mark with Complainant. The Panel also notes that the content of the websites associated with the disputed domain names do not appear to include material relevant to the services provided by Complainant. Nevertheless, the Univadis mark is distinctive, has no meaning other than to function as the Univadis mark, and the default by Respondent leads the Panel to believe that Respondent has no rights or legitimate interests in the disputed domain names.
The Panel finds, also in view of the Panel’s findings below, that Respondent does not have any rights or legitimate interest in the disputed domain names and this element of the Policy to be met by Complainant.
C. Registered and Used in Bad Faith
As indicated above, it is likely that that an ordinary person would not have recognized the Univadis mark or associated the Univadis mark with Complainant. However, the Univadis mark is distinctive and has no regular meaning, so it is unlikely that Respondent selected the domain names without some influence or impression based on the Univadis mark. Further, Complainant owned registered trademarks in Colombia, the country associated with the top-level domain of the disputed domains, and in the United States, the country of residence of Respondent. Given the Respondent’s default, and the overall circumstances of this case, the Panel cannot attribute a good faith or legitimate interest to Respondent and to the use of the distinctive Univadis mark in the disputed domain names.
While the websites associated with the disputed domain names do not appear to include references to or material relevant to the direct competitors of Complainant, Respondent still appears to be making a profit from domain parking. Specifically, Respondent uses the domain parking services provided by Sedo Holding AG. Thus, the disputed domain names generate click through revenue by profiting from Internet users attempting to access the Univadis domain names, which is evidence of bad faith registration and use.
Further, while Respondent did not set a price for the disputed domain names in excess of the registration fees, Respondent did indicate that the disputed domain names were “premium” domain names. The term “premium” is often used in association with domain names to indicate domain names that are marked at a premium to other marks that are available for registration, either because they incorporate a commonly used word, are similar to other domain names that are already registered, or for other less legitimate reasons. In the absence of any evidence presented by Respondent to the contrary, and what appears to be Respondent’s attempt to avoid a clear finding of bad faith registration and use by not setting a price on the disputed domain names, the Panel finds Respondent’s attempt to sell the disputed domain names as premium domain names to constitute sufficient evidence of bad faith.
Accordingly, the Panel finds that Respondent registered and used the disputed domain names in bad faith and that this element of the Policy to have been met by Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <univadis.co> and <univadis.com.co> be transferred to Complainant.
Timothy D. Casey
Dated: February 10, 2011