WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. f/k/a Merck & Co., Inc. v. Zhangxianqiong

Case No. D2011-1898

1. The Parties

Complainant is Merck Sharp & Dohme Corp. f/k/a Merck & Co., Inc. of Rahway, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.

Respondent is Zhangxianqiong of BaZhong, SiChuan, China.

2. The Domain Names and Registrar

The disputed domain names <merck-sun.com>, <mercksun.com>, <sun-merck.com>, <sunmerck.com> (the “Domain Names”) are registered with Guangzhou Ming Yang Information Technology Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2011. On November 2, 2011, the Center transmitted by email to Guangzhou Ming Yang Information Technology Co., Ltd. a request for registrar verification in connection with the Domain Names. On November 3, 2011, Guangzhou Ming Yang Information Technology Co., Ltd transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 3, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On November 4, 2011, Complainant confirmed its request that English be the language of the proceedings. Respondent did not comment on the language of the proceedings by the specified due date.

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 November 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 30, 2011.

The Center appointed Yijun Tian as the sole panelist in this matter on December 6, 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

A. Complainant

Complainant, Merck Sharp & Dohme Corp. f/k/a Merck & Co., Inc. is a company incorporated in Rahway, New Jersey, United States of America. It is one of world largest pharmaceutical companies and has over 100,000 employees worldwide.

Complainant is the registered owner of numerous trademarks consisting or including the word “Merck” (MERCK Marks) throughout the world, including 15 trademark registrations in the U.S. (see Exhibit 4 to the Complaint) and approximately 400 trademark registrations incorporating the MERCK Marks in other countries (Exhibit 5 to the Complaint).

The MERCK Marks (e.g. the word mark MERCK was registered in the U.S. on February 15, 1916) was registered long before the registration of the Domain Names (2011). Complainant has also registered over 700 top-level and country code domain names incorporating the MERCK Marks, such as <merck.com>, <merck.biz> and <merck.us> (Exhibit 6 to the Complaint).

B. Respondent

Respondent registered the Domain Names <merck-sun.com>, <mercksun.com>, <sun-merck.com>, <sunmerck.com> on April 11, 2011, which is long after Complainant operated websites with URL which contain the MERCK Marks (i.e. <merck.com> was registered on December 9, 1992¹ ).

5. Parties’ Contentions

A. Complainant

(a) The Domain Names are identical or confusingly similar to the MERCK Marks

MERCK is a well-known and famous brand for pharmaceutical products.

The four Domain Names are virtually identical and confusingly similar to Complainant’s famous MERCK Marks. The only difference is that each of the Domain Name adds the word “sun” and in two cases a dash.

The word “sun” is a reference to Sun Pharmaceutical Industries, the Company with which Complainant announced the creation of a joint venture in the same month that Respondent registered the Domain Names. The word “sun” is therefore descriptive of that joint venture.

The inclusion of a dash in the Domain Names <sun-merck.com> and <merck-sun.com> does not affect the analysis because, in the context of a confusing similarity analysis, “the presence of the dash is irrelevant.”

The addition of the “.com” gTLD does not remove the confusing similarity between the Domain Names and MERCK Marks.

(b) Respondent has no rights or legitimate interests in the Domain Names;

Respondent cannot demonstrate any legitimate interests in the Domain Names.

Respondent is not commonly known by the Domain Names.

Respondent has been granted no license or other rights to use Complainant’s MERCK Marks as part of any domain name or for any other purpose. Complainant is in no way associated or affiliated with Respondent.

Respondent is not making a legitimate non-commercial or fair use of the Domain Names, and is not using any of the Domain Names in connection with a bona fide offering of goods or services.

Respondent currently uses the Domain Names as landing pages stating that “This domain is for sale” and provide contact information for potential buyers interested in purchasing the Domain Names. (See Exhibit 7 to the Complaint).

(c) The Domain Names were registered and are being used in bad faith.

Bad faith is found when “it appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned website for commercial gain due to confusion with Complainant’s mark”. This is exactly the case here.

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.

The unauthorized use of Complainant’s trademark for the purpose of selling the Domain Names constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. This is a classic case of initial-interest confusion.

The registration of a domain name incorporating a widely recognized mark is itself evidence of bad faith registration. Respondent’s registration of the Domain Names is prima facie evidence of such bad faith.

Respondent has no authorization from Complainant to use Complainant’s famous MERCK Marks.

Respondent has had years of constructive notice of Complainant’s registered trademarks, under U.S. Law 15 U.S.C. S1072.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreements for the Domain Names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) As in the cited cases, the majority of the content featured on Respondent’s websites is in the English language. Respondent’s websites also include English language copyright notices. (See Exhibit 7 to the Complaint).

(b) Respondent has also demonstrated its fluency in English through its English language communication to Complainant. (See Exhibit A to the Language Request). Respondent took it upon himself to contact Complainant and knew full well to initiate such contact in English.

(c) It is apparent from the fluent English displayed on Respondent’s websites and in Respondent’s e-mail communication that Respondent is sufficiently capable of communicating in English. Further, Respondent was adequately familiar with English to target a U.S.-based company and register the four Domain Names, each of which includes MERCK Marks in its entirety.

(d) Complainant is not in a position to participate in these proceedings in Chinese without a great deal of additional expense, burden and delay should translation be required. Given the circumstances of this proceeding, the balance of hardship lies in favor of Complainant.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) further states: “in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Centre as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company incorporated in the U.A., and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the Domain Names include English word “sun” (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the Domain Names <merck-sun.com>, <mercksun.com>, <sun-merck.com>, <sunmerck.com> are registered in Latin characters and particularly in English language, rather than Chinese script; (b) English has been displayed on Respondent’s websites (See Exhibit 7 to the Complaint) and in Respondent’s e-mail communication that Respondent is sufficiently capable of communicating in English. (See Exhibit A to the Language Request); (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Names should be transferred:

(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the MERCK Marks acquired through registration. The MERCK Marks have been registered worldwide including China (registration in China since December 1988; See Exhibit 7 to the Complaint) and it has a widespread reputation in pharmaceutical industry worldwide.

The Domain Names <merck-sun.com>, <mercksun.com>, <sun-merck.com>, <sunmerck.com> comprise the MERCK Marks in its entirety. The Domain Names <merck-sun.com> and <sun-merck.com> only differs from the MERCK Marks by the addition of “-” and the word “sun”. The Domain Names <mercksun.com> and <sunmerck.com> only differs from the MERCK Mark by the addition of the English word “sun”. The Panel finds that these do not eliminate the similarity between Complainant’s registered MERCK Marks and the Domain Names.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Claim No. 0500065).

Mere addition of the descriptive term “sun” or a dash to Complainant’s MERCK Marks fails to distinguish. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the Domain Names and the MERCK Marks in which Complainant has rights.

The Panel therefore holds that Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the Domain Names:

(i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the Domain Names; or

(iii) legitimate noncommercial or fair use of the Domain Names.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the MERCK Marks throughout the world, including 15 trademark registrations in the US (since 1916; see Exhibit 4 to the Complaint) and approximately 400 trademark registrations in other countries (Exhibit 5 to the Complaint). Complainant has also registered over 700 top-level and country code domain names incorporating the MERCK Marks (Exhibit 6 to the Complaint). According to the information provided by Complainant, as one of world largest pharmaceutical companies, it has over 100,000 employees worldwide.

Moreover, according to Complainant, Respondent is not an authorized dealers of MERCK-branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the Domain Names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the Domain Names:

(a) There has been no evidence adduced to show that Respondent is using the Domain Names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the Domain Names or reasons to justify the choice of the word “Merck” in their business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the MERCK Marks or to apply for or use any domain name incorporating the MERCK Marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the Domain Names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the Domain Names. The four Domain Names were all registered on April 11, 2011, which are long after Complainant operated websites with URL which contain the MERCK marks (e.g. <merck.com> was registered on December 9, 1992.² The Domain Names are identical or confusingly similar to Complainant’s MERCK Marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the Domain Names.

The Panel finds that Respondents have failed to produce any evidence to establish rights or legitimate interests in the Domain Names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Names in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Names; or

(ii) Respondent has registered the Domain Names 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 Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or locations or products.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the Domain Names in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the MERCK Marks with regard to its products. Complainant has registered its MERCK Marks throughout the world (in the U.S. since 1916), including China (since 1988). Based on the information provided by Complainant, as one of world largest pharmaceutical companies, it has over 100,000 employees worldwide. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names (in March 2011). The Panel therefore finds that the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).”

Thus, the Panel concludes that the Domain Names were registered in bad faith with the intent to create an impression of an association with Complainant’s MERCK Marks.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using the confusingly similar Domain Names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’ websites”. Complainant claimed that Respondent currently uses the Domain Names as landing pages stating that “This domain is for sale” and provide contact information for potential buyers interested in purchasing the Domain Names. (See Exhibit 7 to the Complaint).

To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the MERCK Marks, the Panel finds that the public is likely to be confused into thinking that the Domain Names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the Domain Names are resolved. In other words, Respondent has through the use of the confusingly similar Domain Names created a likelihood of confusion with the MERCK Marks. Noting also that apparently no clarification as to Respondent’ relationship to Complainant is made on the homepages of the Domain Names, potential partners and end users are led to believe that the Domain Names are either Complainant’s sites or the sites of official authorized partners of Complainant, which they are not. Moreover, Respondent did not respond formally to the Complaint. The Panel therefore concludes that the Domain Names were used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use Domain Names, which are confusingly similar to Complainant’s well-known MERCK Marks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the Domain Names and the conduct of Respondent as far as the websites to which the Domain Names resolve are indicative of registration and use of the Domain Names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

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 <merck-sun.com>, <mercksun.com>, <sun-merck.com>, <sunmerck.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: December 23, 2011

¹ http://www.webtask.org/whois-de-merck_com.html and http://www.guidedomains.com/domain-merck-dot-com.html

² http://www.webtask.org/whois-de-merck_com.html and http://www.guidedomains.com/domain-merck-dot-com.html