WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Shi Lei

Case No. D2016-2039

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 Shi Lei of Hangzhou, Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <wwwkeytruda.com> is registered with 22net, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2016. On October 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2016, 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.

On October 13, 2016, the Center requested that the Registrar confirm that the disputed domain name would be placed in Registrar lock status and that it would remain so throughout this proceeding. The following day the Registrar provided such confirmation.

On October 13, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 17, 2016. The following day the Respondent requested that Chinese be the language of the proceeding.

On October 13, 2016 the Center informed the Complainant that the Complaint exceeded the 5,000 word limit specified in paragraph 11(a) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") and requested that the Complainant submit a word-count compliant Complaint by October 18, 2016. The Complainant submitted an amended Complaint on October 17, 2016.

The Center verified that 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 Supplemental Rules.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on October 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2016. The Respondent did not submit a formal Response. Accordingly, the Center informed the Parties of the commencement of panel appointment on November 10, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on November 15, 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 research-driven pharmaceutical company. It coined the brand name "Keytruda" to market a drug for the prevention and treatment of cancer. The Complainant owns multiple trademark registrations for KEYTRUDA, including International Trademark registration number 1113805, designating multiple jurisdictions including China, which was registered on November 30, 2011 and specifies pharmaceutical preparations in class 5. That registration remains in effect. The "Keytruda" drug received initial marketing approval in the United States in 2014. The launch of Keytruda was reported by news media in China as early as June 3, 2015. The drug received much publicity after former United States President Jimmy Carter announced on December 6, 2015 that he was cancer-free after receiving doses of Keytruda among other treatments. The Complainant has registered and operates a website to promote Keytruda products at the address "www.keytruda.com".

The Respondent is an individual located in China and the registrant of the disputed domain name. The disputed domain name was created on December 15, 2015. Previously, the disputed domain name was parked at a page displaying links to other websites, all of them related to drugs or cancer, or both. The Complainant's representative sent a cease-and-desist letter to the Respondent in March 2016. At the time of this proceeding, the disputed domain name does not resolve to any active website.

5. Parties' Contentions

A. Complainant

The disputed domain name is confusingly similar to the KEYTRUDA trademark. The disputed domain name is composed solely by combining the Complainant's trademark in its entirety with the prefix "www" and a generic Top-Level Domain ("gTLD") suffix. The combination of the prefix "www" and a trademark is a common typographical error and confusingly similar to the trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered several years after the registration of the Complainant's trademark, including in China. There is no evidence that the Respondent has commonly been known by the disputed domain name. The Complainant has never granted a licence or other rights to the Respondent for use of its coined and distinctive KEYTRUDA trademark as a domain name or for any other purpose.

The disputed domain name was registered and is being used in bad faith. In view of the distinct composition of the Complainant's KEYTRUDA mark, as well as its recognition, notoriety, fame and prior trademark registrations, it is implausible that the Respondent could have been unaware of the Complainant and that trademark when acquiring the disputed domain name. There is a risk that consumers will believe that content associated with the disputed domain name is sponsored by the Complainant, thereby diverting web traffic from the Complainant's official website "www.keytruda.com", especially since this is a case of typosquatting. The disputed domain name has featured no content at times but the passive holding of the disputed domain name also amounts to bad faith activity because the Complainant's trademark is widely known and there can be no plausible actual or contemplated legitimate use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name has been used to display links in the English language which direct users to other websites which promote services in the English language; that the disputed domain name has been composed utilizing an exact representation of the coined and distinctive KEYTRUDA trademark, not Chinese; and that translation of the complaint into the Chinese language would result in significant delay.

The Respondent requests that the proceeding be conducted entirely in Chinese, in accordance with paragraph 11 of the Rules, because that is the language of the Registration Agreement.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have found that the choice of the language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English. Communications from the Center to the Parties, including the Notification of Complaint, were sent in both Chinese and English. The Panel notes that the disputed domain name formerly resolved to a page that displayed links in English and that the Respondent uses an English phrase to conceal his email address, although his language request was written in Chinese. It can be deduced from these circumstances that the Respondent is able to communicate in the English language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese but none was filed.

6.2 Analysis and Findings

The Respondent's failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following 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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the KEYTRUDA trademark.

The disputed domain name wholly incorporates the KEYTRUDA trademark, preceded by the letters "www". The omission of a full stop between the "www" prefix and a domain name is a common typographical error. Accordingly, the addition of those letters without a full stop does not dispel confusing similarity between the disputed domain name and the trademark that follows. See BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, WIPO Case No. D2009-1659.

The disputed domain name also contains the gTLD suffix ".com". However, a gTLD suffix generally has no capacity to distinguish a domain name from a trademark for the purposes of a comparison under the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

"(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Panel has already found that the disputed domain name is confusingly similar to the Complainant's KEYTRUDA trademark, which is a coined word. The Complainant informs the Panel that it has never granted a licence or other rights to the Respondent for use of that trademark as a domain name or for any other purpose.

As regards the first and third circumstances above, the disputed domain name was previously parked at a page displaying links to other websites, all of them based on the trademark value of the Complainant's mark. That does not create a right or legitimate interest in the disputed domain name for the purposes of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright WIPO Case No. D2007-0267. The disputed domain name no longer resolves to any active website, which is neither an offering of goods or services nor a legitimate noncommercial or fair use for the purposes of the Policy. Accordingly, the Panel does not find that the Respondent's use falls within the first or third circumstances of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent's name is "Shi Lei", not "wwwkeytruda". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complainant's contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth circumstance is as follows:

"(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location."

The disputed domain name was registered in 2015, years after the Complainant registered its trademarks, including in China where the Respondent is located, and after the "Keytruda" brand drug was reported in the news media in China. The disputed domain name wholly incorporates the Complainant's trademark, which is a coined word. The disputed domain name is an obvious error in the typing of the Complainant's website address "www.keytruda.com" (so-called "typosquatting"). There appears to be no plausible reason to register the disputed domain name other than to take advantage of Internet users who mistype that address. These facts indicate to the Panel that the Respondent was well aware of the Complainant's trademark at the time of registration of the disputed domain name and that the registration of a domain name confusingly similar to the Complainant's trademark was in bad faith.

The disputed domain name was formerly used to attract Internet users who misspelt the Complainant's official website address to a parking page displaying links to other websites. The links were generated based on the trademark value of the Complainant's mark. The disputed domain name operated by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the parking page. This use was intentional and either for the Respondent's own commercial gain, if he was paid to direct traffic to the other websites, or for the commercial gain of the operators of the parking page, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra.

At the time of this proceeding the Respondent makes only passive use of the disputed domain name but that does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The disputed domain name combines the "www" prefix with the Complainant's KEYTRUDA mark, which is a clear case of typosquatting. Given these circumstances and those in Section 6.2B, the Panel finds that the disputed domain name is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 name <wwwkeytruda.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: November 17, 2016