WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Agnes Grimal

Case No. D2016-1557

1. The Parties

The Complainant is Merck Sharp & Dohme Corp. of Whitehouse Station, New Jersey, United States of America ("United States") represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Agnes Grimal of Bourg-Saint-Maurice, France.

2. The Domain Names and Registrars

The disputed domain name <merck-msd.com> is registered with Gandi SAS and the disputed domain name <msd-merck.com> is registered with ELB Group Inc (the "Registrars").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 29, 2016. On July 29, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 1, 2016 and August 17, 2016, the Registrars transmitted by email to the Center their respective verification responses confirming that the Respondent is listed as the registrant and providing the contact details and confirming that French is the language of the registration agreement. Following a notification of the Center regarding the language of the proceeding, the Complainant submitted a request that English be the language of the proceeding on August 18, 2016. The Respondent made no submission in this regard.

The Center verified that the Complaint 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 and 4, the Center formally notified the Respondent in English and French of the Complaint, and the proceedings commenced on August 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 13, 2016.

The Center appointed Theda König Horowicz as the sole panelist in this matter on September 21, 2016. 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 a well-known healthcare company based in the United States with several subsidiaries around the world. The Complainant and its subsidiaries have operated under the MERCK name and trademark for many years thus building a goodwill for the said name and trademark in the healthcare industry.

The Complainant is also known, in the United States and in Canada more particularly, under the MSD name and trademark, notably through philanthropic programs such as "MSD for Mothers".

The Complainant owns a portfolio for the trademarks "MERCK", "MSD", "MERCK SHARP & DOHME" and "MSD MERCK SHARPE & DOHME" in many countries, including the United States and France where the Respondent is supposedly based, for example:

- United States Trademark Registration for "MERCK" No. 71089989, in international class 5, of February 15, 1916;

- United States Trademark Registration for "MSD" No. 0922205, in international class 5, of October 19, 1971;

- United States Trademark Registration for "MERCKMSD", in international class 44, of March 17, 2015;

- European Union Trade Mark ("EUTM") for "MSD" No. 298364, in international classes 1, 5 and 16, of February 10, 1999;

- French Trademark Registration for "MSD MERCK SHARP & DOHME" No. 460020, of September 4, 1981;

- French Trademark Registration for "MSD" No. 1578429, in international classes 1, 5 and 31, of March 2, 1990.

The Complainant and its "MERCK" trademark and name are regularly cited in well-established Brand Rankings relating more specifically to the pharmaceutical industry. The Complainant appears in many of such rankings in a very good position.

The Complainant has a strong Internet presence and operates numerous websites such as "www.merck.com" (the domain name <merck.com> was registered in 1992), "www.msd.com" (the domain name <msd.com> was registered in 1995). It owns several domain names including "merck" and/or "msd", for example <msd-france.com>. The Complainant is also present on social media forums.

The disputed domain names were registered by the Respondent on January 19, 2016 and were, at the time of the filing, resolving to registrar holding pages, informing visitors that the disputed domain names have been registered by their respective registrars and that they were parked.

5. Parties' Contentions

A. Complainant

Based on its trademark registrations containing "MERCK" and "MSD", the Complainant submits that the disputed domain names are confusingly similar with its afore-mentioned trademarks. The Complainant emphasizes that the disputed domain names consist of both its trademarks "MERCK" and "MSD" and that they are separated only by a hyphen which is not sufficient to differentiate them so as to exclude any confusion.

The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the Respondent is unable to invoke any of the circumstances mentioned in paragraph 4(c) of the Policy. In addition, the disputed domain names are not associated with any active websites. Furthermore, given the renown of the "MERCK", "MSD" and "MSDMERCK" trademarks it is not possible to conceive any plausible actual or contemplated active use of the disputed domain names by the Respondent or a third party that would not be illegitimate.

Finally, the Complainant submits that its trademarks "MERCK", "MERCK SHARP & DOHME" and "MSD" are highly distinctive, notably as they have been used since decades and that they enjoy considerable reputation and renown. The Complainant is well known both by the trademarks "MERCK" and "MSD" as reflected by its long standing use and online presence. The Respondent therefore clearly had the Complainant in mind when registering the disputed domain names and they could not have been chosen for any reason other than unduly profit from the considerable goodwill and reputation attached to the Complainant's trademarks which constitutes evidence that the disputed domain names were registered in bad faith.

The Complainant also considers that the disputed domain names are used in bad faith notably due to passive holding as they are parked. In addition, the Complainant found evidence on the Internet which would demonstrate that the Respondent might have been a victim of identity theft and that the disputed domain names were intended to be used in relation with fraudulent activities. The Complainant also underlines the fact that only a bad faith use of the disputed domain names is conceivable considering the renown and reputation of the Complainant's name and trademarks.

B. Respondent

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

6. Discussion and Findings

Language of the proceedings

The Registration Agreements are in French. In accordance with paragraph 11(a) of the Rules, the language of the proceedings should be French.

The Complainant has requested English to be the language of the proceedings considering that:

-the domain names are registered containing the generic Top-Level Domain ("gTLD") ".com";

-both registrars offer English language versions of their registration Agreements, and

-it would be disproportionate and cost intensive to require the Complainant to translate the Complaint into English given that the Respondent's activities are blatantly illegitimate and detrimental to the Complainant.

The opportunity was given to the Respondent to challenge this point of view. However, the Respondent did not react.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings having regard to the circumstances. With regard to paragraphs 10(b) and 10(c) of the Rules, the Panel must ensure fairness to the parties and maintenance of a cost-efficient and expeditious proceeding for resolving domain name disputes. Language requirements should not lead to an undue burden on the parties and undue delay of the proceedings (see Whirpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293 and Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Panel notes that both parties have been given a fair opportunity to present their case. The Respondent has chosen not to use the said opportunity and thus showed a lack of interest in defending its position in these proceedings. Making the Complainant translate the Complaint into French would not only be cumbersome but also obviously cost-intensive and thus disproportionate considering the present circumstances.

In view of the above, the Panel finds that the language of the proceeding is English.

Substantive Issues

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant showed that it has trademark rights in both the MERCK and MSD.

These trademarks are reproduced in their entirety in the disputed domain names. As mentioned by the Complainant, the fact that MERCK and MSD are separated by a hyphen in the disputed domain names is not significant.

Under these circumstances, the Panel concludes that the disputed domain names are identical to the Complainant's marks.

B. Rights or Legitimate Interests

The Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

In particular, the Complainant has provided convincing arguments regarding the fact that the Respondent did not obtain any authorization to register the disputed domain names from the Complainant.

Considering the facts of the case, the Panel is also in agreement with the Complainant that it is unlikely that the disputed domain names which reproduce in their entirety both the MERCK and the MSD trademarks were registered for a legitimate use.

The burden of production on this factor therefore shifts to the Respondent to rebut the showing by providing concrete evidence that she has rights or legitimate interests in the disputed domain name (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Respondent has remained silent in these proceedings.

Under the circumstances, the Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances constituting evidence of the registration and use of a domain name in bad faith.

Considering the reputation of the trademark MERCK and its association in the disputed domain names with the MSD trademark which is the other main registered trademark of the Complainant, the Panel finds that the Respondent must obviously have known the Complainant. Consequently, it is very likely that the disputed domain names were registered and intended to use them so as to profit from the reputation and goodwill of the Complainant and its trademarks.

The question of use in bad faith is slightly more complicated as the disputed domain names are not active and linked to a parking page.

This said there is a range of circumstances in the present case which tend to show that the intention of use is of bad faith as well.

In particular, the way the disputed domain names are constituted - consisting of two main trademarks of the Complainant - MERCK and MSD - cannot be incidental and are a strong indication that the Respondent intended to use them in bad faith. Indeed, by associating these two disputed domain names without any other addition than a hyphen, Internet users were obviously brought to believe the existence of a connection between the Respondent and the Complainant.

The Complainant has also shown that according to information found online, the Respondent was potentially the victim of an identity theft and/or that a false name and address were given to the Registrar. The Complainant also demonstrated that the disputed domain names can be used and are linked to email addresses which could potentially mean that the intention of the Respondent was to use the disputed domain names and the attached email addresses to attract Internet users and make some illicit profit based on the reputation and goodwill and reputation of the Complainant's name and trademarks.

The absence of any response by the Respondent is also an indicator of bad faith.

For the above-mentioned reasons, the Panel thus concludes that the third condition instituted by paragraph 4(a)(iii) is fulfilled as well.

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 names <merck-msd.com> and <msd-merck.com> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Date: October 5, 2016