WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Stichting lcelt

Case No. DNL2018-0057

1. The Parties

The Complainant is Merck Sharp & Dohme Corp. of New Jersey, United States of America (“US”), represented by Merkenbureau Knijff & Partners B.V., the Netherlands.

The Respondent is Stichting lcelt of Arnhem, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <steglatro.nl> (the “Domain Name”) is registered with SIDN through Registrar.eu.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2018. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 18, 2018, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2018. In accordance with the Regulations, article 7.1, the due date for Response was October 17, 2018. The Response was filed with the Center on October 10, 2018.

SIDN commenced the mediation process on October 12, 2018. On October 31, 2018, SIDN confirmed that the dispute had not been solved in the mediation process.

The Center appointed Willem J. H. Leppink as the panelist in this matter on November 16, 2018. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant is a well-known pharmaceutical company, part of a corporate group based in the US, operating worldwide, including in the European Union and the Netherlands.

The Complainant owns various registrations for the STEGLATRO trademark, including the European Union trademark STEGLATRO with registration number 014090682 for goods in class 3, registered on September 7, 2015, and with a filing date of May 18, 2015 (the “Trademark”).

The Complainant is using the Trademark for a medicine applied to regulate blood sugar levels for adults with type 2 diabetes (the “Medicine”). The Complainant obtained approval from the US authorities, the Food and Drug Administration (“FDA”), on December 19, 2017, to market the Medicine. In January 2018 the Medicine became available on the US market. The Complainant obtained a European product registration on March 21, 2018.

The Respondent registered the Domain Name on March 12, 2018. The Domain Name does not resolve to an active website.

On March 12, 2018 the Respondent also registered the domain names <steglatro.be>, <steglatro.eu> and <steglatro.org>. Furthermore on March 12, 2018, an application in the Respondent’s name and address was filed for a German trademark for the sign STEG LATRO, which has been withdrawn by the applicant.

On March 20, 2018, the Respondent contacted the Complainant’s trademark attorney inquiring whether the Complainant would object to the Respondent’s use of the sign “steglatro” in the European Union for e.g. the sale of generic cosmetic products via the domain names <steglatro.eu> and <steglatro.org>. The Complainant responded that it does not grant permission for registration and/or use of the sign “steglatro” and/or “steg latro”.

On April 17, 2018, the Respondent filed an application for a Benelux trademark for the sign STEG LATRO (with a space between STEG and LATRO), with filing no. 1373763, for goods in class 3, published on May 18, 2018 (the “Application”). The Respondent filed opposition against the Application on July 10, 2018, on the basis of the Trademark and its asserted well-known mark within the meaning of Article 6bis of the Paris Convention.

5. Parties’ Contentions

A. Complainant

The Domain Name is identical to the Trademark as it is incorporated in its entirety.

The Respondent has no rights or legitimate interests in the Domain Name. The trademark application for STEG LATRO in Germany and the Application were filed in bad faith. The Respondent is not active or known as “Steglatro”. The Respondent has not used the Domain Name to offer goods and/or has not made demonstrable preparations to do so.

The Domain Name is registered and is being used in in bad faith. The Complainant contends that the Respondent filed Benelux trademark applications using third-party trademarks, and has registered corresponding domain names. The Respondent is deliberately using existing and/or well-known third-party brands without a valid reason. The Domain Name was deliberately registered for the purpose of selling it to the Complainant for profit.

B. Respondent

The Respondent does not dispute that the Domain Name is identical to the Trademark. However, according to the Respondent, the Application is an amalgamation of the words “steg”, meaning “path” in Dutch and “Latro” which refers to a well-known clergyman.

The Respondent states that it has rights and legitimate interests of its own in the Domain Name. The Respondent is convinced that the Application will be registered in the Benelux as a trademark in the Respondent’s name.

In respect of the registration of the Domain Name, the Respondent relies on the principle “first come, first served”. The fact that the registration apparently has adverse consequences for the Complainant is not relevant, according to the Respondent.

The Respondent states that it has not registered or used the Domain Name in bad faith. The Respondent contends that it did not need the Complainant’s permission to submit the Application. Primarily, the Respondent would envisage a coexistence agreement “to be jointly active under the sign”.

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements:

a. the Domain Name is identical or confusingly similar to:

I) a trademark or trade name protected under Dutch law in which the Complainant has rights; or

II) a personal name registered in the General Municipal Register (Gemeentelijke Basisadministratie) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and

b. the Respondent has no rights to or legitimate interests in the Domain Name; and

c. the Domain Name has been registered or is being used in bad faith.

Furthermore, the Panel takes note of the articulate decisions Merck Sharp & Dohme Corp. v. D. Doreus, Stichting Icelt, WIPO Case No. DEU2018-0028, and Merck Sharp & Dohme Corp. v. D. Doreus, Stichting lcelt, WIPO Case No. D2018-2096, involving the Parties with regards to the domain names <steglatro.eu> and <steglatro.org>, respectively. In below text, the Panel adopts these decisions’ considerations where applicable.

A. Identical or Confusingly Similar

Pursuant to article 2.1(a) under I of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights.

The Complainant has shown that it has rights in the Trademark.

The Domain Name incorporates the Trademark in its entirety. Previous panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. It is accepted .nl case law that the country code Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations. The Panel finds that the Domain Name is identical to the Trademark under the Regulations.

The Complainant has established the first element of article 2.1 of the Regulations.

B. Rights or Legitimate Interests

Consistent with .nl case law, the Complainant must prima facie demonstrate that the Respondent has no rights to or legitimate interests in the Domain Name. If the Complainant succeeds in making out this prima facie case, the burden of production shifts to the Respondent, who will then have to come forward with appropriate allegations or evidence demonstrating a right to or legitimate interests in the Domain Name (See, Auto 5 v. E. Shiripour, WIPO Case No. DNL 2008-0027). The Respondent may demonstrate such rights or legitimate interests on its part inter alia through any of the following circumstances listed in article 3.1 of the Regulations:

a. before having any notice of the dispute, the [Respondent] made demonstrable preparations to use the Domain Name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services; or

b. the [Respondent] as an individual, business or other organization is commonly known by the Domain Name; or

c. the [Respondent] is making a legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.

The Complainant emphasized that the Respondent is using the name “Stichting Icelt” and is not known to the public under the name “steglatro”, “steg latro” or <steglatro.nl>. The Complainant states that it has not given permission for the use and/or registration of this identifier.

The Respondent claims to have rights and legitimate interests in the Domain Name on the basis of the Application.

The application for a trademark that corresponds to a domain name does not automatically create rights or legitimate interests in that domain name within the meaning of the second element of the test under the Regulations. For example, previous panels have established that a respondent does not have rights or legitimate interests in a domain name on the basis of a trademark registration if the circumstances show that such trademark was registered mainly to avoid the application of the UDRP or in order to hinder the complainant in exercising its rights (see section 2.12.2 of WIPO Overview or WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)¹ ). Apart from the fact that it concerns only an application and not a registration of a trademark, such trademark rights can therefore only be recognized if they were obtained in good faith for good-faith use in the jurisdiction for which the trademark is registered and not in an attempt to avoid the application of the Regulations or the UDRP (see Merck Sharp & Dohme Corp. v. D. Doreus, Stichting Icelt, WIPO Case No. DEU2018-0028, <steglatro.eu>, and Merck Sharp & Dohme Corp. v. D. Doreus, Stichting lcelt, WIPO Case No. D2018-2096 <steglatro.org>, and the cases cited therein: Formlabs Inc. v Eduard de Boer, Wezacon, WIPO Case No. D2018-1526, <formlabs.biz>, <formlabs .info>, <formlabs.net> and <formlabs.org>; Bialetti Industrie SpA v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450, <bialetti.coffee>, <bialetti.cooking> and <bialetti. kitchen>; Aukro Ukraine LLC v. PrivacyYes.com, Igor Spodin, WIPO Case No. D2013-1568, <vcene.com>, Madonna Ciccone, p / k / a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, <madonna.com> Chemical Works of Gedeon Richter Plc v. Covex Farma SL, WIPO Case No. D2008-1379, <cavinton.c om> et al.; British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817, <skytravel.com>).

In this present case, the Respondent filed the Application on April 17, 2018, thus long after the Complainant’s registration of the Trademark. Furthermore, before the Respondent’s filing of the Application, the Complainant informed the Respondent that it would not be given permission for the use of and/or the application for the of a trademark. Moreover, it was already known at the time that the Complainant had obtained a European product registration for the Medicine and that the Complainant is marketing the Medicine under the Trademark.

In addition, the circumstances indicate that on the date of registration of the Domain Name the Respondent applied for a German trademark application for the sign STEG LATRO in the same class as the Trademark. Eight days later, the Respondent contacted Complainant’s trademark attorney to inquire whether the Complainant would object to use by the Respondent of the name “steglatro” (i.e., without space). In these circumstances, the Panel finds that the Respondent applied for the trademarks in an attempt to circumvent the application of the Regulations while being familiar with the Complainant’s trademark rights, i.e. the Trademark.

In all the circumstances, including the Respondent almost immediately contacting the Complainant’s attorney, it appears highly unlikely that the Respondent somehow had independently coined the term “steg latro” or “steglatro”. The Panel notes that the term “steg” is uncommon in Dutch and, that, the Respondent has not established that “Latro” refers to a “known clergyman”. In addition, as previously observed in Merck Sharp & Dohme Corp. v. D. Doreus, Stichting Icelt, WIPO Case No. DEU2018-0028, <steglatro.eu>, and Merck Sharp & Dohme Corp. v. D. Doreus, Stichting lcelt, WIPO Case No. D2018-2096 <steglatro.org>, it remains unclear how this combination would relate to the Respondent or its activities.

Consequently, the Panel finds it established that the Respondent has no right or legitimate interest in the Domain Name.

C. Registered or Used in Bad Faith

Article 3.2(d) of the Regulations provides a non-exhaustive list of circumstances that may demonstrate the registration or use of a domain in bad faith.

Article 3.2(d) of the Regulations provides that evidence that a domain name has been registered or is being used in bad faith may be provided inter alia through the following circumstances:

(1) the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or transferring it to the Complainant (or to the Complainant’s competitors) for valuable consideration in excess of the cost of registration;

(2) that there is a pattern of the registration of a domain name with the aim of preventing the holder of a trademark from having a corresponding domain name;

(3) that the Respondent has registered the Domain Name with the main purpose of disrupting the activities of the Complainant.

Based on the factual background as described in section 4, the Panel finds that the Respondent must have been aware of the Complainant’s rights in the Trademark when the Respondent registered the Domain Name. The Domain Name is identical to the Trademark and it is very unlikely that the Respondent would have autonomously invented this term in the period when the Complainant entered the market with the Trademark.

The Panel also notes that the Respondent has registered several domain names incorporating the Trademark and that it informed the Complainant’s trademark attorney shortly after such registration. A pattern thus exists in the Respondent preventing the Complainant, as the holder of the STEGLATRO mark, from having a corresponding domain name. The Respondent has also registered domain names that corresponded to trademarks held by third parties. See, Merck Sharp & Dohme Corp. v. D. Doreus, Stichting Icelt, WIPO Case No. DEU2018-0028, <steglatro.eu>, and Merck Sharp & Dohme Corp. v. D. Doreus, Stichting lcelt, WIPO Case No. D2018-2096 <steglatro.org>.

In its conclusion of bad faith the Panel especially notes the Respondent’s attempt to register trademarks of which rights it would have been aware.

The Panel finds that the Complainant has also established the third element of article 2.1 of the Regulations.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <steglatro.nl>, be transferred to the Complainant.

Willem J. H. Leppink
Panelist
Date: November 23, 2018

¹ In view of the fact that the Regulations are to an extent based on the UDRP, it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).