WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Rene Laursen, ETM Media

Case No. D2018-0114

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 Rene Laursen, ETM Media of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Names and Registrar

The disputed domain names <msdchibropharm.info> and <msdmercksharpdohme.info> (the “Disputed Domain Names”) are registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 23, 2018, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2018.

The Center appointed John Swinson as the sole panelist in this matter on March 2, 2018. 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., a United States company which has been operating for over 100 years. The Complainant is a producer and distributor of various healthcare products including pharmaceuticals. According to the Complaint, the Complainant’s holding company Merck & Co., Inc. has been ranked among the top ten healthcare companies in the Access to Medicine Index since 2008.

The Complainant owns numerous registered trade marks, including United Kingdom trade mark number 956589 for MSD which was registered on March 11, 1970; United Kingdom trade mark number 1171852 for MSD MERCK SHARP&DOHME which was registered on March 19, 1982; and German trade mark number 1181522 for MSD CHIBROPHARM which was registered on October 14, 1991 (together, the “Trade Marks”).

The Complainant owns numerous domain names which correspond to one or more of its registered trade marks. These include <msd.com> and <mercksharpdohme.com> which were registered on August 28, 1995, and December 29, 1999, respectively. The Complainant also owns the domain name <mercksharpdohme.info> which was registered on July 27, 2001.

The Respondent is Rene Laursen, ETM Media of the United Kingdom. The Respondent did not file a Response, and consequently little information is known about the Respondent.

The Disputed Domain Names were registered on March 27, 2017.

At the time of this decision, the Disputed Domain Names do not point to an active website. According to the Complaint, there is evidence to indicate that the Disputed Domain Names are used to send spam emails.

The Complainant sent a cease-and-desist letter to the Respondent concerning the Disputed Domain Name <msdmercksharpdohme.info> on July 25, 2017. According to the Complaint, the Respondent did not reply to this letter.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Name <msdmercksharpdohme.info> identically reproduces the MSD trade mark without adornment and is confusingly similar to the MSD MERCK SHARP&DOHME trade mark with an obvious deletion of the ampersand sign. The lack of the ampersand does not affect confusing similarity with the MERCK SHARP&DOHME trade mark.

The Disputed Domain Name <msdchibropharm.info> identically reproduces the MSD CHIBROPHARM trade mark without adornment.

The suffix “.info” is irrelevant when assessing whether a domain name is identical or confusingly similar to a trade mark.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Names.

The Respondent is not a licensee of the Complainant, nor has it been otherwise authorised by the Complainant to make any use of its Trade Marks.

The Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods and services. The Disputed Domain Names do not resolve to an active website and there is evidence that the Respondent has been using the Disputed Domain Names for spam emails. This cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Respondent cannot conceivably claim that it is commonly known by the Disputed Domain Names, given the notoriety surrounding the Trade Marks and their exclusive association with the Complainant. Further, the Respondent has not secured or even sought to secure any valid trade mark rights in any of the terms MSD, MSD MERCK SHARP&DOHME, and MSD CHIBROPHARM.

The Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the Trade Marks. As stated, the Disputed Domain Names are not resolving to an active website which indicates that the Respondent does not have rights or legitimate interests in the Disputed Domain Names.

Finally, given the renowned nature of the Trade Marks, and the Disputed Domain Names themselves, it is not possible to conceive of any plausible, actual or contemplated, active use of the Disputed Domain Names by the Respondent (or a third party) that would not be illegitimate, as it would inevitably create a false association with the Complainant.

Registered and Used in Bad Faith

The Trade Marks are highly distinctive, having been used extensively for approximately 50 years and enjoying considerable and global reputation, including in the United Kingdom where the Respondent appears to be based.

The Respondent registered the Disputed Domain Names in full knowledge of the Complainant’s rights. The Disputed Domain Names consist only of, or incorporate in their entirety, terms corresponding with the Trade Marks with the obvious omission of the ampersand in one Disputed Domain Name. This clearly demonstrates that the Respondent was targeting the Complainant when registering the Disputed Domain Names. Actual and constructive knowledge of the Complainant’s rights at the time of registering the Disputed Domain Names constitutes evidence of bad faith.

The Disputed Domain Names could not have been chosen for any reason other than to unduly profit from the considerable goodwill and reputation of the Trade Marks. This is further evidence of bad faith registration.

The Disputed Domain Names do not currently point to active websites; however, there are indications that the Respondent has been using the Disputed Domain Names for the purposes of spam. Such use can only be in bad faith.

Given the reputation of the Trade Marks and the Complainant’s ownership of domain names such as <mercksharpdohme.info>, there cannot be any actual or contemplated good faith use of the Disputed Domain Names as they result in misleading diversion and unfairly take advantage of the Complainant’s rights.

Further, the Respondent appears to be picking up lapsed domain names previously belonging to third parties which contain the respective third party’s trade marks or business names. This is additional strong evidence of the Respondent’s likely connection to the sending of spam emails and thus, bad faith.

Finally, the Respondent did not respond to the Complainant’s cease-and-desist letter which constitutes further evidence of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The onus of satisfying these elements remains on the Complainant even though the Respondent has not filed a Response.

The Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.

The Panel considers that the Disputed Domain Names are identical or confusingly similar to the Trade Marks. The Trade Marks, MSD CHIBROPHARM and MSD MERCK SHARP&DOHME, are incorporated in their entirety in the Disputed Domain Names <msdchibropharm.info> and <msdmercksharpdohme.info>, respectively.

The omission of the ampersand “&” from the Disputed Domain Name <msdmercksharpdohme.info> does not distinguish the Disputed Domain Name from the relevant Trade Mark.

The generic Top-Level Domain (gTLD) “.info” does nothing to detract from this similarity.

The Complainant is successful on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:

- The Panel accepts the Complainant’s submission that the Respondent is not a licensee or otherwise authorised by the Complainant to use the Disputed Domain Names.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names or the Trade Marks, or has registered or common law trade mark rights in relation to the Trade Marks.

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of services. At the time of this Decision, the Disputed Domain Names do not point to an active website. The Panel also considers that it is reasonably likely that the Disputed Domain Names are being used to send spam emails. In the circumstances, this is not a bona fide use of the Disputed Domain Names under the Policy.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The Panel reasonably considers that the Respondent sought to use the Disputed Domain Names to mislead Internet users into believing the Respondent or the Disputed Domain Names to be associated with the Complainant, presumably for commercial gain.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Names in bad faith.

The Complainant has been operating for over 100 years and the Trade Marks are well known internationally. The Complainant has demonstrated the importance of its intellectual property by registering the Trade Marks in numerous countries and various domain names associated with its business (which invariably contain the Trade Marks).

Taking into consideration the degree of distinctiveness and reputation of the Trade Marks, which are incorporated into the Disputed Domain Names, the Panel finds that the Respondent had knowledge of the Trade Marks at the time of registering the Disputed Domain Names.

The Panel accepts the Complainant’s submission that the Respondent appears to be registering lapsed domain names previously held by a third party and which contain the trade marks of that party. The evidence provided by the Complainant of multiple instances of abusive domain name registrations is sufficient to establish a pattern of conduct of preventing trade mark holders from reflecting their marks in a domain name, which is evidence of bad faith registration and use under paragraph 4(b)(ii) of the Policy (see section 3.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0)).

In light of the above, and the Respondent’s failure to provide evidence to the contrary, the Panel finds that the Complainant has succeeded on the third element 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 Names, <msdchibropharm.info> and <msdmercksharpdohme.info>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: March 14, 2018