WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck Sharp & Dohme Corp. v. Sanjay Patel
Case No. D2010-1037
1. The Parties
Complainant is Merck Sharp & Dohme Corp. of New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
Respondent is Sanjay Patel of Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name <merckon.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2010. On June 23, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 23, 2010 GoDaddy.com, Inc. 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 the Respondent of the Complaint, and the proceedings commenced on June 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2010.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on August 4, 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, with dates of first use dating back to February of 1887. Respondent registered the disputed domain name on May 9, 2010. The disputed domain name leads to a “parked” web page hosted by the registrar with “Sponsored Listings” for various goods and services.
5. Parties’ Contentions
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 name on May 9, 2010, and that Respondent is using the disputed domain name pursuant to a “cash parking” program “as a landing page featuring pay-per-click links to third party sites.” Complainant asserts that each of these links is labeled with a variation of the MERCK mark, but that none of the links leads to a website that is authorized by or affiliated with Complainant. The Panel notes that it visited the website at the disputed domain name while this decision was being drafted and that 2 of 10 “Sponsored Listings” contained the MERCK trademark at that time.
Complainant asserts that the <merckon.com> domain name is confusing similar to Complainant’s MERCK trademarks. Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name given Complainant’s long prior use, the fact that Complainant has not licensed Respondent to use the MERCK mark, and the alleged use pursuant to a “cash parking” program. Complainant also asserts that the disputed domain name was registered and is being used in bad faith due to alleged “typosquatting”, unauthorized use for commercial purposes, initial interest confusion, “cash parking”, and Respondent’s alleged numerous other domain name registrations.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, panelists 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 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 respect of the disputed domain name; and
(iii) Respondent’s domain name has been registered and is 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 name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Complainant’s trademark registrations and unrebutted long and extensive use demonstrate that Complainant has rights in the MERCK mark.
Complainant asserts that this is a case of “typosquatting”. “Typosquatting consists of taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom.” Mattison Avenue Corporation d/b/a Buggies Unlimited v. Blockbuster Golf Cars, Inc./Domains by Proxy Inc., WIPO Case No. D2007-1162. See also Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039 and Loreena McKennitt and Quinlan Road Ltd. v. John Zuccarini The Cupcake Patrol, WIPO Case No. D2003-0928. Typical examples of “typosquatting” include registering a domain name that consists of a common misspelling of a trademark, or a domain name that consists of a trademark but with one or more letters substituted with letters that are “nearby” on a keyboard, or the deletion of the period after “www” so that the “www” prefix abuts a trademark. Complainant has not presented any evidence or argument that the word “on” is commonly but mistakenly added to its MERCK trademark . Accordingly, there is insufficient evidence to characterize this as a case of “typosquatting”.
Nevertheless, the disputed domain name consists of Complainant’s MERCK mark with the generic word “on” 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”). Similarly, 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.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by <merckon.com>. Rather, the submissions attached to the Complaint indicate that Respondent is using the disputed domain name in connection with paid 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 name, 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”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[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 name was registered and is being used in bad faith due to alleged “typosquatting”, unauthorized use for commercial purposes, initial interest confusion, “cash parking”, and Respondent’s alleged numerous other domain name registrations. This Panel has already determined that the Respondent’s activities do not fit the model of “typosquatting”. Presumably Complainant’s allegations relating to other domain name registrations are meant to invoke the “pattern” element of bad faith factor (ii). However, Complainant’s evidence with respect to this factor consists of an allegation, “upon information and belief”, that Respondent is an “established and repeated transgressor in this field” due to Respondent’s alleged registration of over 353 domain names. Complainant does not identify any of these other domain names however, leaving open the possibility that all of the domain names save <merckon.com> comprise generic/dictionary terms. Based on the evidence presented in this matter, the Panel does not find sufficient proof of bad faith under bad faith factor (ii).
However, the use of a domain name that is confusingly similar to a trademark, in order to drive traffic to a website and generate revenue, constitutes bad faith. 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 “cash parking”. 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.
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 name <merckon.com> be transferred to Complainant.
Bradley A. Slutsky
Dated: August 19, 2010