WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck KGaA v. Yasutaka Sakatani

Case No. D2018-1948

1. The Parties

The Complainant is Merck KGaA of Darmstadt, Germany, represented by Bettinger Scheffelt Kobiako von Gamm, Germany.

The Respondent is Yasutaka Sakatani of Tokyo, Japan, self-represented.

2. The Domain Name and Registrar

The disputed domain name <saizen.shop> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2018, 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 August 30, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 30, 2018, and filed an amended Complaint on August 31, 2018.

On August 31, 2018, the Respondent submitted an email in English offering to “relocate” the disputed domain name. Accordingly, the Center informed the Parties that if they wished to explore settlement options, the Complainant should submit a request for suspension. The Complainant requested the suspension of the proceeding on the same day. The Center notified to the Parties that the proceeding was to be suspended until September 30, 2018. On September 18, 2018, the Complainant requested to reinstitute the proceeding. On September 18, 2018, the Center notified the Parties that the proceeding was to be reinstituted.

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 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on September 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2018. The Respondent did not submit any substantive Response. On October 11, 2018, the Center notified the Parties that it would proceed with panel appointment.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 1, 2018. 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 pharmaceutical and chemicals company with worldwide presence through different affiliated companies in several countries, under company names including the umbrella trademark MERCK.

The Complainant has been one of the leaders in its industry since 1668.

The Complainant holds among others, the following trademark registrations:

Also, the Complainant holds registrations for the following domain names:

The disputed domain name <saizen.shop> was registered on June 29, 2018 and resolves to a pay-per-click website.

5. Parties’ Contentions

A. Complainant

The Complainant states the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

That the Complainant is the owner of several registrations worldwide for the trademark SAIZEN, which covers a prescription medicine that is used to treat growth hormone deficiency (GHD). That SAIZEN is a well-known trademark in Europe and worldwide.

That the disputed domain name is identical to its trademark SAIZEN, and its domain name <saizen.com>.

That the inclusion of the generic Top-Level Domain (“gTLD”) “.shop” does not prevent the disputed domain name from being identical or confusingly similar to its trademark SAIZEN.

(ii) The Respondent has no rights or legitimate interests in the disputed domain name

That the Respondent has no rights to, or legitimate interests in the disputed domain name. That the Respondent is not a licensee of the Complainant and that the Complainant has never authorized the Respondent to use its trademark SAIZEN.

That the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and/or services.

That the Respondent is not commonly known by the disputed domain name.

That the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name, as the website to which the disputed domain name resolves displays pay-per-click (“PPC”) advertisements that divert traffic to websites offering pharmaceutical products in direct competition with the Complainant’s products.

(iii) Registration and Use in Bad Faith

That it seems impossible to conceive that the Respondent was unaware of the Complainant’s trademark SAIZEN at the time of registration of the disputed domain name.

That the act of using the trademark SAIZEN in connection to a website that features advertising links to products directly competing with the Complainant’s products, evidences bad faith.

That the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the trademark SAIZEN as to the source, sponsorship, affiliation, or endorsement of this website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent only answered that: “Dear Sir. This domain is a common noun in Japan. But I do not intend to claim rights. I agree to relocate the domain.”

6. Discussion and Findings

6.1 Language of the Proceedings

The Complaint was submitted in English. The language of the registration agreement related to the disputed domain name is Japanese.

According to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified contrarily in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the appointed Administrative Panel to determine otherwise.

The Complainant has requested that the language of the proceeding be English. The Respondent has not submitted a formal Response. The Respondent only sent a short communication to the Center, in English, stating the following: “Dear sir. This domain is a common noun in Japan. But I do not intend to claim rights. I agree to relocate the domain”. The website to which the disputed domain name resolves, displays some hyperlinks written in English, such as: “HGH HORMONE”, “HGH GROWTH HORMONE”, and “HGH HUMAN GROWTH HORMONE”.

Taking these facts into account, it is reasonable to infer that the Respondent is able to understand, and communicate in the English language (see Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191; and MySpace Inc. v. Will Eom, WIPO Case No. D2008-0448).

Pursuant to paragraph 11 of the Rules, and considering that both the Complainant and the Respondent can communicate in English, the Panel determines that the language of the proceedings shall be English.

6.2 Substantive Issues

To succeed in this Complaint, the Complainant must prove that the three elements enumerated in paragraph 4(a) of the Policy have been met:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

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

As the Respondent has failed to submit a formal Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complainant (see Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Analysis of the intention of the Respondent to transfer the disputed domain name

Before the commencement of this proceeding, the Respondent communicated to the Center its intention to “relocate” the disputed domain name. As a result, the Complainant requested the suspension of the proceeding. The Center issued a Notification of Suspension, and provided the Parties with the Center’s Standard Settlement Form. The Respondent did not reply to the Center’s Notification.

On September 18, 2018, the Complainant requested the proceeding to be reinstated, stating that the Respondent had not accepted the Complainant’s settlement proposal. Therefore, the proceeding continued.

Previous UDRP panels have decided that when a respondent has expressed an intention to conclude the proceeding by transferring the disputed domain name at hand, said domain name should be transferred on the basis of the respondent’s request (see section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0)).

In such cases, UDRP panels have held that a genuine unilateral consent to transfer a domain name issued by a respondent provides a basis for an immediate order for transfer without consideration of the elements of paragraph 4(a) (see The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132).

The Respondent’s email communication expressly says that the Respondent agrees to relocate the disputed domain name. This communication can be deemed to be a genuine unilateral consent to the transfer of the disputed domain name. That the Parties did not reach settlement within the suspension period granted by the Center does not affect the fact that the Respondent has consented to the transfer of the disputed domain name (see Pierre Balmain S.A. v. Domains By Proxy, LLC / Daniel Phillips, WIPO Case No. D2015-0189).

These circumstances are sufficient to order the transfer of the disputed domain name to the Complainant. However, for the sake of completeness, the Panel will analyze the elements of the Policy.

B. Identical or Confusingly Similar

The disputed domain name <saizen.shop> is identical to the Complainant’s trademark SAIZEN because it incorporates said trademark in its entirety.

The addition of the gTLD “.shop” is immaterial for the purpose of assessing confusing similarity (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).

The first requirement of the Policy has been met.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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 you have 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 Complainant argues that it has not licensed or authorized the Respondent to use the trademark SAIZEN. (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272).

The disputed domain name resolves to a PPC website that displays the following hyperlinks: “HGH HORMONE”, “HGH GROWTH HORMONE”, and “HGH HUMAN GROWTH HORMONE”. These advertising hyperlinks are directly targeting the Complainant and its products. They divert Internet users to sites that promote the products of a competitor of the Complainant. This fact increases the potential for confusion or wrongful association among Internet users (see AltaVista Company v. O.F.E.Z. et al., WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan, WIPO Case No. D2001-1220; CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071).

The use of the disputed domain name to collect click-through revenue as a result of the implementation of a PPC mechanism to take advantage of the reputation of the Complainant cannot be catalogued as fair, legitimate, or noncommercial (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).

Even if the Respondent did not file a formal Response, it did say that the disputed domain name “is a common noun in Japan”. According to section 2.10.1 of the WIPO Overview 3.0, the mere registration of a domain name comprised of a dictionary word does not by itself automatically confer rights or legitimate interests on the respondent. Mere arguments that a domain name corresponds to a dictionary term will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the disputed domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off the Complainant’s rights. That is not the case here. The disputed domain name has unequivocally targeted the Complainant’s trademark SAIZEN, and the products covered by it.

Since the Respondent has not proven to have rights or legitimate interests in the disputed domain name, the second element of the Policy has been met.

D. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use 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 your 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 on-line 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.

The Respondent’s adoption of a PPC scheme that targets the Complainant and its trademark SAIZEN, creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name, with the purpose of attracting Internet users to the Respondent’s website, to obtain click-through revenue from advertising links, for commercial gain. This constitutes bad faith conduct under paragraph 4(b)(iv) of the Policy (seeProduits Berger v. Romana Go, WIPO Case No. DPH2005-0001).

The fact that the website to which the disputed domain name resolved featured several hyperlinks promoting the products of a competitor of the Complainant, evidences the Respondent’s attempt to profit from the disputed domain name at the expense of the Complainant, its reputation, and its trademarks (see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177; Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2011-0315).

The third element of the Policy has been met.

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 <saizen.shop> be transferred to the Complainant

Kiyoshi Tsuru
Sole Panelist
Date: November 19, 2018