WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck Sharp & Dohme Corp., MSD Consumer Care, Inc. v. Michael Johnson, THIS DOMAIN NAME IS FOR SALE
Case No. D2014-0172
1. The Parties
Complainant is Merck Sharp & Dohme Corp., MSD Consumer Care, Inc., and their affiliates, represented by Lowenstein Sandler LLP.
Respondent is Michael Johnson, THIS DOMAIN NAME IS FOR SALE.
2. The Domain Name and Registrar
The disputed domain name <mexana.com> is registered with Pheenix, Inc. (the “Registrar”).
3. Procedural History
Complainant filed its Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2014. On February 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2014, the Registrar 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”).
Respondent submitted a response to the Complaint online.
The Center appointed Kimberley Chen Nobles as the sole panelist. 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 consists of Merck Sharp & Dohme Corp., MSD Consumer Care, Inc., and their affiliates. Complainant bases its Complaint on its ownership on its family of marks for “MEXSANA”, including “MEXANA”. Complainant has provided copies of several of its trademark registrations in Exhibit 4 and a list of its family of marks in Exhibit 5. Complainant has been using the MEXSANA mark as early as 1942.
Respondent is Michael Johnson, an individual doing business as an investor/seller of domain names. According to WhoIs data, Respondent’s organization is THIS DOMAIN NAME IS FOR SALE.
The disputed domain name <mexana.com> was registered on May 6, 2013.
5. Parties’ Contentions
Complainant asserts that Respondent has registered and used the domain name <mexana.com> that is identical or confusingly similar to the MEXSANA family of marks, which Complainant asserts includes its MEXANA mark. Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Further, Complainant asserts that Respondent registered and used the disputed domain name in bad faith.
Respondent asserts that a search for the trademark “mexana.com” revealed no trademarks in the United States, Canada, Australia, China, or India. Respondent asserts that while Complainant has a trademark for MEXSANA, which Respondent describes as “similar”, Respondent notes that MEXSANA is “not the same name.” Respondent asserts that though he has parked the domain using Sedo.com, the domain name is “not being used in bad faith.” Respondent asserts that he did not know that a “product called mexsana even existed until [he] received the Complaint.”
Respondent notes that he is not trying to sell medicated powder and asserted that “[a]s long as the domain name isn’t being used to sell medicated powder, I do not see why this domain cannot be registered and used.” Respondent further argued that because <mexana.com> is not trademarked, he thus has a right or legitimate interest to use the domain name as he sees fit, including selling it.
Further, Respondent states: “I feel that [it] is the trademark holder’s responsibility to trademark mexana.com and register the domain name if the holder wanted rights to it. Since Merck failed to do this, and it is not the exact name they have trademarked, then the Complainant has forfeited any rights to that particular name.”
6. Discussion and Findings
A. Standard for UDRP Proceedings
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainants must prove each of the following:
(i) The disputed 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) The disputed domain name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the MEXSANA mark. Even Respondent noted the similarity. The addition of one letter does not change the sound of the word and cannot prevent a finding of confusing similarity. Further, the disputed domain name incorporates Complainant’s MEXANA mark in its entirety. The Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in that the disputed domain name is identical or confusingly similar to Complainant’s MEXSANA and MEXANA marks.
C. Rights or Legitimate Interests
Complainant has asserted that Respondent has received no license or authorization of any kind to use the MEXSANA or MEXANA marks. Respondent has not claimed that he operates a bona fide business using the MEXANA mark or that he is known by that mark. Nothing in the record, including Respondent’s claim to register “brandable” domain names, establishes a right or legitimate interest in the domain name in particular against the background of his trademark “search” described below. The fact that the parking website itself offered to sell the domain name (and that Respondent’s organization name “THIS DOMAIN NAME IS FOR SALE” indicates as much) shows that Respondent does not intend to operate or begin to operate a legitimate bona fide business using the disputed domain name. See Otis Elevator Company v. John Cordingley, WIPO Case No. D2004-0269. Further, despite Respondent’s feelings to the contrary, Complainant has not forfeited any of its trademark rights simply because it has not registered a given domain name.
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The MEXSANA and MEXANA marks are registered and known worldwide such that a registration of an identical or confusingly similar mark weighs in favor of a finding of bad faith registration. Respondent claims he was ignorant to the existence of Complainant’s marks until he received the Complaint. However, his apparent search for a “mexana.com” mark as opposed to “mexana” seems to be designed to avoid finding any result, i.e.to facilitate Respondent’s wilful blindness as to the existence of Complainant’s marks. Additionally, the constructive notice assigned to registered marks—including Respondent’s apparent capacity to search multiple international trademark registries—supports a finding that Respondent knew or should have known of Complainants marks both when he registered the disputed domain name and also when he parked the disputed domain name to generate pay-per-click revenue.
Complainant has established that Respondent registered and used the disputed domains in bad faith, and has satisfied the requirements of paragraph 4(a)(iii) 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 name, <mexana.com>, be transferred to Complainant.
Kimberley Chen Nobles
Date: April 1, 2014