WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck Sharp & Dohme Corp. v. Whois Agent, Domain Protection Services, Inc. / John Montgomery, Right Track Productions
Case No. D2021-3623
1. The Parties
Complainant is Merck Sharp & Dohme Corp., United States of America (“United States”) (hereinafter, “Complainant”), represented by Covington & Burling LLP, United States.
Respondent is Whois Agent, Domain Protection Services, Inc., United States/ John Montgomery, Right Track Productions, United States (hereinafter, “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <merckcovidpill.com> is registered with Name.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2021, 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 Complainant on November 5, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 9, 2021.
The Center verified that the Complaint together with the amended Complaint (hereinafter, 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 Respondent of the Complaint, and the proceedings commenced on November 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2021. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on December 6, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 22, 2021. 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 is a research-intensive biopharmaceutical company, developing medicines, including cancer drugs, vaccines, antivirals anti-infectives and therapeutics with applications worldwide. Complainant is the owner of United States Patent and Trademark Office issued Trademark registrations in the MERCK trademarks, the earliest of which dates back to February 15, 1916. These trademarks have long been used in commerce to identify Complainant, its drug products, and related pharmaceutical products and services. Since February 1887, Complainant has continuously promoted its business and products under the MERCK name and mark. Complaint, Annex D.
On October 1, 2021, Merck publicly announced clinical trial results for an investigational viral pill for use in the treatment of Covid. Complaint, Annex E. The viral pill will be marketed in the United States under the MERCK trademark. Complainant’s new Covid-19 pill received significant news coverage in major news publications. Complaint, Annex F. In mid to late October Complainant learned that Respondent had registered the disputed domain name. Complaint, Annex B. The disputed domain name resolved to a website at “www.paulcraigroberts.org”, a website posting conspiracy theories and anti-medicine information. Complaint, Annex G. The website advertises books written by Paul Craig Robers and contains links to purchase such books and to donate to an organization called the Institute for Political Economy. Id.
Respondent registered the disputed domain name on October 2, 2021.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to its registered trademarks. Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts that Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s well known MERCK trademark and the words “covid” and “pill.” “Covid” is an infectious disease caused by the SARS-CoV-2 virus. Pill is a tablet containing compounds which fight disease. The MERCK trademark is clearly recognizable in the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Respondent registered the disputed domain name one day after the news was published around the world that Complainant had discovered and was marketing a pill which combatted Covid-19, a disease caused by the SARS-CoV-2 virus. Respondent used the disputed domain name to resolve to a website, which promoted a controversial political theory wholly unrelated to the disease the pill was intended to fight. At the website to which the disputed domain name resolves, the book written by the proponent of the political theory was advertised for sale. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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, <merckcovidpill.com>, be transferred to Complainant.
M. Scott Donahey
Date: December 30, 2021