WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck & Co., Inc., Schering Corporation v. Apiwat Ngunbunsri

Case No. D2011-0050

1. The Parties

The Complainants are Merck & Co., Inc. and Schering Corporation of Kenilworth, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.

The Respondent is Apiwat Ngunbunsri of Kraburi, Ranong, Thailand.

2. The Domain Name and Registrar

The Disputed Domain Name <cheapclaritin.info> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2011. On January 11, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On January 12, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 January 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2011.

The Center appointed Isabelle Leroux as the sole panelist in this matter on February 18, 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

The Complainants are two United States corporations, together with their respective affiliates and subsidiaries: Merck & Co, Inc. is a corporation organized and existing under the laws of New Jersey, and Schering Corporation is another corporation organized and existing under the laws of New Jersey, which is a wholly-owned subsidiary of Merck & Co, Inc. Both corporations as well as their respective affiliates and subsidiaries are major actors of the pharmaceutical industry in multiple countries.

One of the leading medications developed and commercialized by the Complainants around the world is the set of allergy medications known as loratadine, hereinafter referred to as “Claritin”. In the year 2009, the Complainants claim to have sold more than 36 million units of this medication in the United States alone.

This medication has been marketed under several trademarks, at the centre of which is trademark CLARITIN, which has been registered in various jurisdictions since at least 1994 (hereinafter referred to as the “CLARITIN Mark”), as well as other trademarks of the same family (hereinafter collectively referred to as the “CLARITIN Family of Marks”), registered in multiple jurisdictions, which include CLARITYNE, CLARITINE and CLARITYN.

As such, the Complainants are the owners of multiple trademarks belonging to the CLARITIN Family of Trademarks, including the CLARITIN Mark, which is registered, inter alia, as:

Unites States word trademark CLARITIN no. 77215219, filed on June 26, 2007 and owned by Schering Corporation, New Jersey, United States, covering, inter alia, pharmaceutical preparations for the treatment of nasal conditions such as allergy;

European Community word trademark CLARITIN no. 006890248, filed on April 22, 2008 and owned by Schering Corporation, New Jersey, United States, covering, inter alia, pharmaceutical and veterinary preparations.

The Complainants have also registered several domain names, such as:

<claritin.com>, registered by Schering Plough Corporation, created in 1996;

<claritin.info>, registered by Schering Plough Corporation, created in 2001.

The Complainants claim that the website accessible at the address “www.claritin.com” averaged over 4,000 visitors per day in the year 2009.

The Disputed Domain Name was registered on July 27, 2010.

The Respondent has established a website accessible at the address “www.cheapclaritin.info”, which purports to sell Claritin products, through a program called “aStores”, organized and run by Amazon.com, Inc. “aStore” is a website on which a participant in the Amazon affiliate program places links, directing users to pages on the “www.amazon.com” website. Every purchase on the “www.amazon.com” website, which originates through a link placed on an aStore, results in said aStore receiving a commission payment.

The Complainants provided the Panel with a printout of the aStore website hosted at the Disputed Domain Name. This website is, on the date when the present decision is drafted, not accessible.

5. Parties’ Contentions

A. Complainants

The Complainants claim that, as provided by the Policy, paragraph 4(a):

(i) The Disputed Domain Name is confusingly similar to the CLARITIN Mark;

(ii) The Respondent has no rights or legitimate interest in the Disputed Domain Name;

(iii) The Disputed Domain Name was registered and is used in bad faith.

The Complainants claim that the CLARITIN Mark is well-known, and that there can be no dispute that the Disputed Domain Name is confusingly similar to the CLARITIN Mark, insofar as consumers are likely to believe that the Disputed Domain Name is related to, associated with, or authorized by the Complainants, which is precisely, the Complainants argue, why the Respondent registered the Disputed Domain Name.

The Complainants also argue that the addition of the word “cheap” does not preclude a finding of confusing similarity.

The Complainants claim that the Respondent cannot demonstrate any legitimate interest in the Disputed Domain Name, which was registered well after the Complainants established their rights in the CLARITIN Mark.

The Complainants emphasize that the Respondent is in no way associated or affiliated with the Complainants, is not commonly known by the Disputed Domain Name, and has not been granted a license or other rights to use the CLARITIN Mark.

The Complainants add that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, and is using the Disputed Domain Name to misleadingly attract customers to its webpage for its own commercial gain, as it must have been aware of the Complainants’ “famous” CLARITIN Mark.

The Complainants claim that the Disputed Domain Name was registered and is used in bad faith, as the Respondent can have no purpose other than to cause confusion and take unfair advantage of the Complainants’ considerable goodwill in the CLARITIN Family of Marks.

The Complainants claim that use by the Respondent of the Disputed Domain Name constitutes initial interest confusion, and that it is impossible to conceive of a good faith reason for the Respondent’s registration and use of the Disputed Domain Name.

For all of the above-mentioned reasons, the Complainants request that the Disputed Domain Name be transferred to them.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainants are required to establish that each of the following three conditions is met to obtain the relief it has requested:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name; and

(iii) the Respondent’s Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There can hardly be any argument in this regard.

The Disputed Domain Name <cheapclaritin.info> is almost identical to the Complainants’ CLARITIN Mark in which the Complainants have, inter alia, the following trademark rights:

United States word trademark CLARITIN no. 77215219;

European Community word trademark CLARITIN no. 006890248.

Indeed, the word “claritin” is incorporated in its entirety in the Disputed Domain Name.

In this regard, the fact that the descriptive word “cheap” is added to the word “claritin” in the Disputed Domain Name is not likely to reduce, let alone to remove, the confusing similarity which is created by the dominant distinctive element “claritin” of the Disputed Domain Name, knowing that “cheap” is “qualifying” the CLARITIN Mark.

Therefore the Panel finds that the Complainants have carried their burden of proof under Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Disputed Domain Name was registered on June 27, 2010, long after the Complainants registered the domain names <claritin.com> and <claritin.info>, respectively in 1996 and 2001.

More particularly, the registration of the Disputed Domain Name occurred after the filing and registration by the Complainants of multiple marks belonging to the CLARITIN Family of Marks. In particular, the registration of the Disputed Domain Name occurred after the filing and registration by the Complainants of:

United States word trademark CLARITIN no. 77215219, filed in 2007;

European Community word trademark CLARITIN no. 006890248, filed in 2008.

The Complainants have claimed, which has not been contradicted by the Respondent absent any response on its part, that the Respondent is in no way associated or affiliated with the Complainants, is not commonly known by the Disputed Domain Name, and has not been granted a license or other rights to use any of the trademarks included in the CLARITIN Family of Marks. In the circumstances, no evidence available to the Panel indicates that any of those statements could be wrong.

In addition, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Indeed, the fact of using a domain name that includes a name in which the Complainants have several trademark and domain name rights, to generate income through a commercial scheme organized and run by a third party (such as, in the present case, Amazon.com, Inc.’s “aStore” affiliate program), does not constitute such a legitimate noncommercial or fair use.

Quite to the contrary, the Panel finds that in the present case, the Respondent is not using the Disputed Domain Name for a legitimate noncommercial or fair use, but rather to attract customers to its webpage for its own commercial gain.

Finally, while it could be argued that the Respondent, before it was served notice of the dispute, had been using the Disputed Domain Name in connection with an offering of goods, i.e., in order to redirect Internet users to the “www.amazon.com” website for the purchase of Claritin medication products, it is the finding of this Panel that such offering of goods or services was not bona fide.

It has been established, in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, that in order to be considered bona fide, the offering must meet several requirements. Those include, at the minimum, the following:

1. The Respondent must actually be offering the goods or services at issue, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).

2. The Respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods, e.g., Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras was not a legitimate use).

3. The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of complainant’s logo, and lack of any disclaimer, suggested that website was the official complainant’s website).

4. The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).

In the present case, it results from an analysis of the printout of the Respondent’s website, which was exhibited by the Complainants, that three of these factors are met, as:

The Respondent was actually promoting and marketing “Claritin” products, which were offered for sale on the “www.amazon.com” website; in this regard, the Panel notices that the Complainants did not contend that those products were not genuine;

The Respondent was using the website to sell only Claritin products, and therefore was not baiting Internet users to switch them to goods other than Claritin; and

There is no evidence that the Respondent was cornering the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Quite to the opposite, the Complainants have demonstrated that they had registered plenty of domain names incorporating the CLARITIN Mark.

However, an examination of the website printout, which was provided by the Complainants, does not reveal that the Respondent accurately disclosed its relationship with the Complainants. Although the website did not actively falsely suggest that the Respondent was the trademark owner, it did not clearly distance itself from the Complainants, e.g., through a statement to the extent that it was in no way associated or affiliated with, or connected to, the Complainants.

Indeed, the host page of the Respondent’s website only mentioned: “Cheap Claritin – Cheap Claritin, Huge Claritin D Product Range, Allergy remedies at Low Prices!” The Panel finds that such a statement does not sufficiently distance its author from the holders of the CLARITIN Mark, i.e., the Complainants, insofar as it does not enable average Internet users to ascertain whether or not the Respondent is the owner of the CLARITIN Mark or an undertaking economically linked to it, in such a way that would avoid any confusion in the mind of the public.

Moreover, the Respondent is in default in this proceeding and has chosen not to come forward to attempt to show rights or legitimate interests in the Disputed Domain Name, as allowed by the Policy under paragraph 4(c)(i-iii). Since the Complainants have made out a prima facie case, and the Respondent has not come forward with a response, the Panel finds that the Respondent fails to demonstrate that such offering of goods or services was made bona fide.

Therefore the Panel finds that the Complainants have carried their burden of proof under Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

“Claritin” is the well-known name of an allergy medication commercialized and used all over the world, for many years, which has been registered as a trademark by the Complainants in multiple jurisdictions and under many forms and derivatives. Consequently, the CLARITIN Mark and most of its derivatives in the CLARITIN Family of Marks may be qualified as well-known marks.

It is evident from the record that the Respondent must have been aware of the Complainants’ well-known CLARITIN Mark. This is all the more obvious given that the Respondent chose to establish a business based on the sale via the “www.amazon.com” website, of products bearing the CLARITIN Mark, and therefore knowingly built upon the repute of the CLARITIN Mark to promote its own “aStore” business.

In the present case, the Panel finds that by registering and using the Disputed Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants’ CLARITIN Mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products sold through its website.

Such had not been the case, had the Respondent clearly indicated on its website that it was not the owner of the CLARITIN Mark or of any of the trademarks in the CLARITIN Family of Marks, and that it was in no way associated or affiliated with, or connected to, the Complainants. However, the Respondent intentionally failed to put any mention to this effect on its website, as a result of which the use of the Disputed Domain Name, which is extremely similar to the Complainants’ trademark and domain name rights, does not enable average Internet users to ascertain whether or not the Respondent is the owner of the CLARITIN Mark or an undertaking economically linked to it.

Therefore the Panel finds that the Complainants have carried their burden of proof under Policy paragraph 4(a)(iii).

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 Disputed Domain Name <cheapclaritin.info> be transferred to the Complainants.

Isabelle Leroux
Sole Panelist
Dated: March 4, 2011