WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp., MSD Consumer Care, Inc., and their affiliates and subsidiaries v. Zhangzhonglin

Case No. D2013-1994

1. The Parties

The Complainant is Merck Sharp & Dohme Corp., MSD Consumer Care, Inc., and their affiliates and subsidiaries of Rahway, New Jersey, United States of America (“US”), represented by Lowenstein Sandler LLP, US

The Respondent is Zhangzhonglin of Guiyang Guizhou, China.

2. The Domain Name and Registrar

The disputed domain name <usa-merk.com> is registered with Ourdomains Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2013. On November 22, 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 confirming that the Respondent is listed as the registrant and providing the contact details.

On November 28, 2013, the Center transmitted by email to the parties in both English and Chinese regarding the language of proceedings. On December 2, 2013, the Complainant submitted by email its request to the Center that English be the language of proceedings, one day after the due date due to a US holiday. The Respondent did not submit any comments by the specific 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 the Respondent of the Complaint, and the proceedings commenced on December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.

The Center appointed Jonathan Agmon as the sole panelist in this matter on January 8, 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

The Complainant is Merck Sharp & Dohme Corp., MSD Consumer Care, Inc. and their affiliates and subsidiaries. Merck Sharp & Dohme Corp. is an American company based in New Jersey.

The Complainant is one of the world’s largest pharmaceutical companies. In 2012, the Complainant’s website “www.merck.com” had more than 5 million visits. In 2013, the Complainant’s website was trending towards 14.5 million visits.

The Complainant is the owner of numerous worldwide trademark registrations for the mark MERCK. For example: US Trademark Registration No. 75204592 – MERCK with the registration date of June 30, 1998; US Trademark Registration No. 0108566 – MERCK with the registration date of February 15, 1916; China Trademark Registration No. 632099 – MERCK SHARP & DOHMPE and Design (in Chinese characters), with the registration date of February 28, 1993; China Trademark Registration No. 853466 – MERCK SHARP & DOHMPE and Design (in Chinese characters), with the registration date of July 7, 1996 and many more.

Through extensive use around the world, the MERCK family of trademarks has generated vast goodwill and has become well known and highly recognized with the pharmaceutical market.

The Complainant has also developed a presence on the Internet and is the owner of numerous domain names which contain the name “merck”. For example: <merck.com>, <merckmanuals.com>, <merck.us> and more.

The disputed domain name <usa-merk.com> was registered on May 11, 2013.

From the evidence provided by the Complainant, it appears that the disputed domain name used to resolve to a Chinese gambling website. However, as of the date of this decision, the Panel notes that the disputed domain name resolves to a landing page only and that all images are missing.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it is the owner of all rights, title and interests in and to the MERCK trademark as well as to the larger family of marks to which the MERCK mark belongs, as well as trade names incorporating the “Merck” name.

The Complainant further argues that it owns more than 400 worldwide trademark registrations incorporating the MERCK marks. The Complainant further argues that it owns over 1,065 top-level and country code domain names incorporating the MERCK family of trademarks or common misspellings thereof.

The Complainant further argues that the MERCK family of marks consists of strong considerable goodwill. The Complainant further argues as a result of this strength, worldwide use and high consumer recognition the MERCK marks are well-known and famous.

The Complainant further argues that the disputed domain name is confusingly similar to the Complainant’s famous MERCK marks. The Complainant further argues that the only difference is that the disputed domain name includes the generic geographic descriptor “USA” and a one letter misspelling of the MERCK trademark.

The Complainant further argues that Internet users are likely to believe that the disputed domain name is related to, associated with, or authorized by the Complainant.

The Complainant further argues that the Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name. The Complainant further argues that the Respondent is not commonly known by the disputed domain name

The Complainant further argues that it did not license or granted other rights to use its trademark in the disputed domain name. The Complainant further argues that the Respondent is in no way associated or affiliated with the Complainant.

The Complainant further argues that the Respondent registered the disputed domain name in order to cause confusion and profit from the goodwill established in the Complainant’s trademark.

The Complainant further argues that the Respondent’s unauthorized use of the Complainant’s trademark to lead Internet users to a gambling website constitutes bad faith.

The Complainant further argues that this is classic case of typosquatting, when a domain name constitutes a common misspelling of a protected mark.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name consists of English characters, rather than Chinese characters;

b) The disputed domain name contains the geographical term “usa”, referring to the United States of America, where the Complainant conducts its business and where the official language is English;

c) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for the decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of numerous worldwide trademark registrations for the mark MERCK. For example: US Trademark Registration No. 75204592 – MERCK with the registration date of June 30, 1998; US Trademark Registration No. 018566 – MERCK with the registration date of February 15, 1916; China Trademark Registration No. 632099 – MERCK SHARP & DOHMPE and Design (in Chinese characters), with the registration date of February 28, 1993; China Trademark Registration No. 853466 – MERCK SHARP & DOHMPE and Design (in Chinese characters), with the registration date of July 7, 1996 and many more.

The disputed domain name differs from the registered MERCK trademark by the additional geographical term “usa”, the additional hyphen (-), the absence of the letter “c” from the MERCK trademark and the additional generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that the absence of the letter “c” in the MERCK trademark in the disputed domain name <usa-merk.com> is not sufficient to escape a finding of confusing similarity (see Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman, WIPO Case No. D2007-0042).

Previous UDRP panels have ruled that in order to determine if the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, the Panel must consider the phonetic and visual similarities, and can also consider the context in which the domain name is being used (see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441).

Comparing the disputed domain name to the Complainant’s registered trademark MERCK brings to the conclusion that they are phonetically and visually similar. The Panel cited the following with approval: “It is apparent from a comparison of the Complainants’ trademarks with the Domain Names that the primary components … are visually and phonetically similar to the Complainants’… trademarks, and accordingly the Panel finds that the Domain Names are visually and phonetically similar to the corresponding trademarks in which the Complainants have rights” (Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman, WIPO Case No. D2007-0042).

The addition of the geographical term “usa” does not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant’s MERCK trademark, as “usa” stands for the United States of America, where the Complainant conducts business. It is clear that the most prominent element in the disputed domain name is the term “merk”, which lacks any English dictionary meaning and is confusingly similar to the Complainant’s trademark.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

Also, the use of a hyphen in the disputed domain name cannot avoid confusing similarity (see Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281).

Finally, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the disputed domain name.

The result is that the Complainant has shown that the disputed domain name is confusingly similar to the Complainant’s MERCK trademark, in which the Complainant has rights.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the MERCK trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the MERCK trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences, as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules.

In this present case, the Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response.

The Panel can draw from the Respondent’s failure to reply the following two inferences:

(i) the Respondent does not deny the facts which the Complainant asserts, and

(ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. The Panel does, however the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (Reuters Limited v. Global Net 2000, Inc, supra).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the MERCK trademark at least since the year 1916. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). This conclusion is even more valid when taking into account the vast goodwill that the Complainant had gained in its well-known trademarks.

Paragraph 4(b)(iv) of the Policy provides that it shall be evidence of bad faith registration and use by the Respondent, if by using the disputed domain name the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic for commercial purposes by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

In light of the Complainant’s distinctive registered trademark and the Respondent’s use of the disputed domain name, the Panel finds that the registration of the disputed domain name, which is confusingly similar to the Complainant’s trademark, creates likelihood that Internet users would be confused and identify the Respondent as either associated or affiliated with the Complainant.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the confusing similarity between the disputed domain name and the Complainant’s trademark and the Respondent’s use of the disputed domain name for a gambling website, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <usa-merk.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: January 17, 2014