WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Moniker Privacy Services / AA7 GROUP LTD, Charlie Kalopungi

Case No. D2010-1286

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 Moniker Privacy Services / AA7 GROUP LTD, Charlie Kalopungi of Pompano Beach, Florida, United States of America, and of Mahe, Seychelles, respectively.

2. The Domain Names and Registrars

The disputed domain names <merckmauel.com>, <merckveterinary.com> and <merckvetmannual.com> are registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On August 2, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 3, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on August 9, 2010.

The Center verified that 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 Respondent of the Amended Complaint, and the proceedings commenced on August 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2010.

The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on September 8, 2010. 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 has registered several trademarks for MERCK and similar marks, including THE MERCK MANUAL and THE MERCK VETERINARY MANUAL, with dates of first use dating back to February of 1887. Respondent registered the disputed domain names on the following dates:

The disputed domain names lead to “parked” web pages with sponsored listings for various goods and services.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is one of the world’s largest pharmaceutical companies, with sales in over 140 countries in 2008 totaling over USD 23 billion, and that it has been using MERCK trademarks in connection with this business since 1887. Complainant asserts that its worldwide operations and sales using MERCK trademarks has resulted in substantial worldwide recognition for Complainant’s MERCK trademarks, that Complainant owns over 700 domain names incorporating MERCK trademarks, and that Complainant owns 12 U.S. federal trademark registrations and approximately 400 worldwide trademark registrations for MERCK trademarks.

Complainant asserts that Respondent registered the disputed domain names, and that Respondent is using the disputed domain names “as a landing pages featuring pay-per-click links to third party sites”. Complainant asserts that each of the disputed domain names is a variation of the MERCK mark, but that none of the links lead to a website that is authorized by or affiliated with Complainant. The Panel notes that it visited the websites at the disputed domain names while this decision was being drafted.

Complainant asserts that the <merckmauel.com>, <merckveterinary.com> and <merckvetmannual.com> domain names are confusing similar to Complainant’s MERCK trademarks. Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain names given Complainant’s long prior use, the fact that Complainant has not licensed Respondent to use the MERCK mark, and the alleged pay-per-click use of the disputed domain names. Complainant also asserts that the disputed domain names were registered and are being used in bad faith due to alleged “typosquatting”, unauthorized use for commercial purposes, initial interest confusion, the pay-per-click use of the disputed domain names, and Respondent’s alleged numerous other domain name registrations.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, panels in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they deem] applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) Respondent’s domain names are 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 respect of the disputed domain names; and

(iii) Respondent’s domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy Complainant must show that the disputed domain names are “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Complainant’s trademark registrations and long and extensive use demonstrate that Complainant has rights in the MERCK mark, and in THE MERCK MANUAL and THE MERCK VETERINARY MANUAL Marks.

The disputed domain names are: <merckmauel.com>, <merckveterinary.com> and <merckvetmannual.com>. It is well established that the gTLD suffix “.com” or similar, being an integral and necessary part of a domain name, may be disregarded in the determination of confusing similarity.

What remains in each of the domain names, “merckmauel”, “merckveterinary” and “merckvetmannual”, comprises two parts: “merck”, and a word, respectively “mauel”, “veterinary” and “mannual”.

The key component of the disputed domain names is the word “merck”, which clearly is identical to Complainant's trademark MERCK. The other words are typos and/or references to a science.

Indeed, the disputed domain names consist of Complainant’s MERCK mark with a generic word or a typo appended to the end, plus the “.com” gTLD. The addition of a generic word to a trademark does not avoid confusing similarity to the mark. Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). Furthermore, the Panel notes that the disputed domain names are confusingly similar to Complainant’s THE MERCK MANUAL and THE MERCK VETERINARY MANUAL registered trademarks, see Mattison Avenue Corporation d/b/a Buggies Unlimited v. Blockbuster Golf Cars, Inc./Domains by Proxy Inc., WIPO Case No. D2007-1162. Finally, as stated above, the addition of the “.com” gTLD does not remove the confusing similarity between the disputed domain name and Complainant’s mark. Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009-0003.

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) 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 [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

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

(iii) [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”. Paragraph 4(c) of the Policy.

There is no evidence that Respondent was making a bona fide use of the disputed domain names before receiving notice of this dispute, or that Respondent has been commonly known by <merckmauel.com>, <merckveterinary.com> or <merckvetmannual.com>. Rather, Respondent is using the disputed domain names in connection with pay-per-click links to third party sites. “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”. MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008-0009. See also Humana Inc. v. Henry Tsung, WIPO Case No. D2005-0221 (“Use for a portal linking to websites of the Complainant’s competitors is not a bona fide offering, but rather one which seeks to profit from confusion with the Complainant”). Respondent has not submitted any Response, and there is no evidence in the present record indicative of any rights or legitimate interests of Respondent.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Paragraph 4(a)(iii) of the Policy. As set forth in the paragraph 4(b) of the Policy:

“[T]he 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 [Respondent has] registered or [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 [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

Complainant asserts that the disputed domain names were registered and are being used in bad faith due to alleged “typosquatting”, unauthorized use for commercial purposes, initial interest confusion, pay-per-click use of the disputed domain names, and Respondent’s other domain name registrations.

The use of a domain name that is confusingly similar to a trademark, in order to drive traffic to a website and generate revenue, is evidence of bad faith pursuant to paragraph 4(b) of the Policy. This is true whether these efforts consist of an attempt to capitalize on initial interest confusion, Cantor Fitzgerald Securities v. DNS Admin, WIPO Case No. D2010-0808, or are accomplished through pay-per-click landing pages. See Abraxis BioScience, LLC v. Les Rubin, WIPO Case No. D2008-0066 (“The fact that the webpage contains advertising links, from which Respondent likely benefits through the Registrar’s ‘Cash Parking’ monetization program, supports the inference that the purpose of Respondent’s diversion of traffic from Complainant to himself is for Respondent’s own commercial gain. [cit. om.] The Panel finds bad faith use of the Domain Name under Policy, paragraph 4(b)(iv).”). The unauthorized use of Complainant’s trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008-1344. See also Etro S.p.A. v. Domain Registrations, WIPO Case No. D2006-0207; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; Wal-Mart Stores, Inc. v. Modern Limited - Cayman Web Development, Domain Administrator, WIPO Case No. D2005-0322; Nintendo of America, Inc. v. Pokemonplanet.net, Jerry Radl, and Fusion Media Solutions, Inc., WIPO Case No. D2001-1020; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <merckmauel.com>, <merckveterinary.com> and <merckvetmannual.com> be transferred to Complainant.

Enrique Ochoa de González Argüelles
Sole Panelist
Dated: September 21, 2010