WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc.
Case No. D2017-0302
1. The Parties
The Complainant is Merck Sharp & Dohme Corp. of Rahway, New Jersey, United States of America (“United States”), represented by Reed Smith LLP, United States.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States / George Ring, DN Capital Inc. of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <gardasilvaccine.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2017. On February 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2017, 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 the Complainant on February 17, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 22, 2017.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2017.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 22, 2017. 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 one of the world’s largest pharmaceutical companies, developing, manufacturing, and marketing a broad range of human pharmaceuticals and health care products.
The Complainant is the owner of all right, title and interest in and to the GARDASIL trademark, which has been registered in multiple jurisdictions throughout the world and has been in use by the Complainant as a source identifier since 2005.
The Complainant’s rights in its GARDASIL mark cover pharmaceutical preparations and substances, and the Complainant uses its GARDASIL trademark for human papillomavirus (HPV) vaccines.
The Complainant also owns and operates several domain names incorporating its GARDASIL mark, such as <gardasil.com>, <gardasil.net>, and <gardasil9.com>.
The disputed domain name was registered by the Respondent on August 23, 2015.
The Panel accessed the disputed domain name on April 3, 2017, which resolved to a pay-per-click parking page advertising scheme as also evidenced by the Complainant.
5. Parties’ Contentions
The Complainant makes the following contentions:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant’s coined and distinctive GARDASIL trademark is a well-known and famous brand for pharmaceuticals. Prior cases have held that confusing similarity is presumed when a disputed domain name incorporates a complainant’s trademark in its entirety. The only difference between the disputed domain name and the Complainant’s GARDASIL trademark is the addition of the term “vaccine”, a term deemed non-distinctive by prior panels. Panels have consistently held that similarly composed domain names (i.e., pharmaceutical trademark + the term “vaccine”) are identical or confusingly similar to the trademark at issue. This is also the case here, as the Complainant specializes in vaccine products which are distributed under its well-known trademark GARDASIL, and the combination of the Complainant’s trademark with the descriptive term “vaccine” to form the disputed domain name actually enhances the likelihood that Internet users will believe that the disputed domain name is owned by, operated by, or associated with the Complainant. As noted in Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[t]he addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name”. Internet users encountering the disputed domain name are likely to believe that the disputed domain name is related to the Complainant because it is combines the Complainant’s distinctive GARDASIL trademark and the term “vaccine” which describes the products distributed under the Complainant’s GARDASIL trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name. The disputed domain name was registered in August of 2015, more than a decade after the Complainant obtained rights in its GARDASIL trademark. Furthermore, none of the circumstances identified by paragraph 4(c) of the Policy as demonstrative of a respondent’s rights to or legitimate interests in a domain name is present here. Specifically, there is no evidence that the Respondent has been commonly known by the domain name or has acquired trademark or service mark rights in the domain name, and the Respondent has not (i) used the domain name in connection with a bona fide offering of goods or services or (ii) made legitimate noncommercial or fair use of the disputed domain name. In fact, the evidence shows the contrary; the disputed domain name has featured a search engine which purports to allow free access to copyrighted materials in violation of international laws. Such illicit activity cannot be recognized as evidence of legitimate use. There is no evidence that the Respondent has commonly been known by or has traded under the names “Gardasil” or “Gardasilvaccine.com”. The Complainant has never granted a license or other rights to the Respondent for use of its coined and distinctive GARDASIL trademark as a domain name or for any other purpose, and the Respondent is not and has never been associated with or affiliated with the Complainant. The Complainant’s GARDASIL mark is not a dictionary word, a colloquial term, or an abbreviation which could be used in any descriptive fashion to support claims of rights or legitimate interests on the part of the Respondent. In view of the coined and distinctive nature of the Complainant’s GARDASIL mark, rights or interest in the disputed domain name cannot exist without the Respondent trading or free-riding off of the Complainant’s well-established trademark rights. In cases such as this involving domain names using trademarks in their entireties, it has been recognized that the burden of proof shifts to the respondent once a complainant has made its prima facie case that paragraph 4(a)(ii) of the Policy has been satisfied.
The disputed domain name was registered and is being used in bad faith. The Complainant’s GARDASIL trademark is a coined and distinctive mark which has gained substantial notoriety and fame since the inception of the Complainant’s rights in its mark over a decade ago. In view of the distinct composition of the Complainant’s mark, the recognition, notoriety, and fame of the Complainant’s mark, and existing trademark registrations for the Complainant’s mark, it is implausible that the Respondent could have been unaware of the Complainant and the Complainant’s GARDASIL trademark when acquiring the disputed domain name. Panels evaluating cases involving domain names which incorporate distinctive and well-known marks such as GARDASIL have consistently held that respondents could not have registered the domain name(s) at issue in good faith or without knowledge of the famous or well-known mark.
In short, the presence of a distinctive or well-known mark in a disputed domain name has been held as prima facie evidence that a respondent registered or acquired the domain name in bad faith for purposes such as selling, transferring, or renting the domain name to the trademark owner or a competitor of the trademark owner. This is evidence of bad faith under paragraph 4(b)(i) of the Policy, and has been cited in cases involving distinctive and well-known marks utilized in domain names composed in a manner similar to that of the disputed domain name. The Respondent is a domain name reseller and has been offering the domain name for public sale with asking price of USD 2,499, a price which clearly exceeds registration fees and reasonable out-of-pocket expenses. Prior panels have held that, when a domain name which is confusingly similar to a complainant’s trademark is offered for sale to the public, such an offer can constitute bad faith use. The record shows that the disputed domain name has also been used to display a webpage that advertises free downloads of songs by world-renowned artists such as Adele, Katy Perry, Meghan Trainor, and Ed Sheeran, works which are protected by copyright. Use of a disputed domain name in this manner to facilitate unauthorized access to copyrighted materials has been cited by prior panels as evidence of bad faith. Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use.
The Respondent has also used the disputed domain name to feature third-party links and other content related to the products sold under the Complainant’s GARDASIL mark. By offering links to third party websites which promote content and third-party advertisements related to vaccines, and a disease treated by the Complainant’s GARDASIL products, the Respondent is diverting traffic from the Complainant’s GARDASIL domain names. Finally, it should also be noted that Respondent has utilized a privacy service for its registration of the disputed domain name to shield its identity. Numerous UDRP decisions have cited use of privacy services in support of finding bad faith. The Respondent’s use of a privacy service has hidden its identity from the Complainant, making it difficult for the Complainant to contact the Respondent regarding the infringement without the risk of cyberflight. Furthermore, the Respondent’s use of a privacy service contributes to the potential for consumer confusion regarding the content of the disputed domain name, as even the most diligent of Internet users would be unable to ascertain the source of the domain name’s content by consulting WhoIs records.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Panel has no doubt that “gardasil” is a term directly connected with the Complainant’s brand used to identify pharmaceutical vaccines.
Annex 6 to the Complaint shows worldwide registrations of GARDASIL trademarks obtained by the Complainant, including in the United States, since 2003.
The trademark GARDASIL is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark basically by the addition of the term “vaccine”, as well as of the generic Top-Level Domain (“gTLD”) suffix “.com”.
Previous UDRP decisions have demonstrated that descriptive additions (such as “vaccine” for pharmaceutical products) do not distinguish a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that a gTLD suffix such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The disputed domain name is currently linked to a website containing pay-per-click links, some relating to vaccines, cancer, and HPV. The Respondent is not authorized to use the Complainant’s GARDASIL mark in any way, and using a domain name incorporating the Complainant’s mark to host sponsored links associated with the Complainant’s area of business cannot be a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2015) the trademark GARDASIL was already registered and widely used in connection to the Complainant’s activities. The disputed domain name encompasses the trademark GARDASIL together with a descriptive word that describes the Complainant’s main product (a vaccine). GARDASIL is a coined term with no dictionary meaning. Therefore, the Panel concludes that it is very unlikely that the Respondent was not aware of the Complainant’s trademark and that the adoption of the expression “gardasilvaccine” was a mere coincidence.
Furthermore, using the disputed domain name to host a pay-per-click parking page the Respondent creates a likelihood of confusion with the Complainant’s trademark and potentially obtains revenue from this practice. Previous UDRP decisions have considered this type of use of a domain name sufficient to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007 1415.
Finally, the absence of a reply from the Respondent is further suggestive of bad faith from the Respondent in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied 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 name, <gardasilvaccine.com>, be transferred to the Complainant.
Date: April 5, 2017