WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck Sharp & Dohme Corp., MSD Consumer Care, Inc., and their affiliates and subsidiaries v. Registrant Organization: Sequoia Marketing Group; and Registration Private, Domains By Proxy, LLC
Case No. D2013-1989
1. The Parties
Complainant is Merck Sharp & Dohme Corp., MSD Consumer Care, Inc., and their affiliates and subsidiaries, Rahway, New Jersey, United States of America, represented by Lowenstein Sandler LLP, Roseland, New Jersey, United States of America.
Respondent is Sequoia Marketing Group, Westerville, Ohio; and Registration Private, Domains By Proxy, LLC, Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <merckmarijuana.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2013. On November 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 25, 2013, 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 Complainant on November 26, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 26, 2013.
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 the Respondent of the Complaint, and the proceedings commenced on November 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 23, 2013.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 13, 2014. 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 states that it is “one of the world’s largest pharmaceutical companies”, that it “owns approximately 400 worldwide trademark registrations incorporating the MERCK Marks” and that it “owns over 1,065 top-level and country code domain names incorporating the MERCK Family of Marks or common misspellings thereof, including, but not limited to <merck.com>, <merck.biz>, and <merck.us>.” Complainant further states that “[i]n 2012, there were more than 5 million visits to Complainant’s <merck.com> website.”
Complainant has provided appropriate evidence to support its ownership of a numerous trademarks that consist of or include the mark MERCK (collectively, the “MERCK Trademark”), including the following:
- U.S. Reg. No. 2,169,031 for MERCK (first used in commerce in February 1887; registered on June 30, 1998), for use in connection with “full line of pharmaceuticals.”
- U.S. Reg. No. 108,566 for MERCK (first used in commerce in February 1887; registered on February 15, 1916), for use in connection with (among other things) “analgesics.”
The Disputed Domain Name was created on June 5, 2013. According to a printout of a website using the Disputed Domain Name (included as an annex to the Complaint), the Disputed Domain Name is being used in connection with a monetized parking page that includes links for various goods and services, including those related to drugs (“ORGANIC Hemp Seed Cheap,” “Medicare Supplement Plans” and more).
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights because, inter alia, the MERCK Family of Marks are well-known and famous brands for pharmaceutical products”; “the use of the term “marijuana” in particular is insufficient to avoid user confusion”; and “inclusion of the term “marijuana” actually increases confusion.”
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent registered the Disputed Domain Name well after Complainant had established its rights in the MERCK Family of Marks”; “Respondent is not commonly known by the Disputed Domain Name” and “has never conducted a legitimate offline business under the name ‘merckmarijuana’”; “Respondent has been granted no license or other rights to use Complainant’s Marks as part of any domain name or for any other purpose”; “the only possible use of the Disputed Domain Name is to misleadingly use it to attract customers to its website for its own commercial gain”; and “[w]here, as here, Complainant’s marks and name are so widely recognized, and have been used in connection with pharmaceuticals and other products for so many years, there can be no legitimate use by Respondent.”
- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “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”; “[t]his is true whether these efforts consist of an attempt to capitalize on initial interest confusion… or are accomplished through pay-per-click landing pages”; and “it is impossible to conceive of a good faith reason for Respondent’s registration and use of the Disputed Domain Name.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the MERCK Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the MERCK Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “merckmarijuana”), as it is well-established that the top-level domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
This Panel agrees with the decision cited by Complainant, Altria Group v. Daniel Cheng, WIPO Case No. D2009-1764, in which the panel there found the domain names <altriacannabis.com> and <altriamarijuana.com> confusingly similar to the trademark ALTRIA. In that case, the panel wrote that by adding the words “cannabis” and “marijuana” to the complainant’s trademark,
the potential for user confusion is likely to be exacerbated, not reduced. By appending either of those terms to the Complainant's mark, an Internet user seeing these names would likely be deceived into thinking that the Respondent's website resolvable through those names, is providing a an official position of Complainant regarding marijuana -- which, in fact, Complainant is not providing; or that the Respondent's website is somehow affiliated, related to or sponsored by the Complainant -- which, in fact, it is not. Including both of those terms with the Complainant's mark only increases the likelihood that user confusion will occur and does so to the Respondent's ultimate benefit and the detriment of Complainant.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent registered the Disputed Domain Name well after Complainant had established its rights in the MERCK Family of Marks”; “Respondent is not commonly known by the Disputed Domain Name” and “has never conducted a legitimate offline business under the name ‘merckmarijuana’”; “Respondent has been granted no license or other rights to use Complainant’s Marks as part of any domain name or for any other purpose”; “the only possible use of the Disputed Domain Name is to misleadingly use it to attract customers to its website for its own commercial gain”; and “[w]here, as here, Complainant’s marks and name are so widely recognized, and have been used in connection with pharmaceuticals and other products for so many years, there can be no legitimate use by Respondent.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (nonexhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant specifically argues that bad faith exists pursuant to paragraph 4(b)(iii) and 4(b)(iv) of the Policy. Among other things, Complainant has argued that Respondent’s use of the Disputed Domain Name in connection with web pages that contain links as part of a “cash parking’ program” creates bad faith. Numerous panels repeatedly have agreed with this argument. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 names <merckmarijuana.com> be transferred to the Complainant.
Douglas M. Isenberg
Date: January 26, 2014