WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Janice Liburd

Case No. D2011-0278

1. The Parties

The Complainant is Merck Sharp & Dohme Corp. of Whitehouse Station, New Jersey, United States of America, represented by Lowenstein Sandler PC.

The Respondent is Janice Liburd of Panama.

2. The Domain Names and Registrar

The disputed domain names <merckspeakersservices.com> and <mercksveterinarymanual.com> are registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2011. On February 11, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On February 16, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2011.

The Center appointed Richard Tan as the sole panelist in this matter on March 23, 2011. 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.

The Panel has, of its own motion, pursuant to the powers granted to it under the Rules, paragraph 10(c), extended the time limit set out in the Rules, paragraph 15(c) for forwarding the decision to the Center, by reason of certain exceptional circumstances. The Panel has extended the time for forwarding this decision to the Center, to the date of this decision.

4. Factual Background

The Complainant is a well-known pharmaceutical company and one of the world’s largest pharmaceutical companies. It owns, with its affiliates and subsidiaries, the MERCK trademark, which has been used since at least as early as 1887, as well as various other marks and trade names incorporating the “Merck”name (collectively the “MERCK Family of Marks”). The MERCK Family of Marks includes the trademark THE MERCK VETERINARY MANUAL for a veterinary medical textbook.

The Complainant currently owns 12 United States (“U.S.”) federal trademark registrations (and one pending trademark application) for the MERCK Family of Marks. The U.S. federal trademark registrations include registrations for the marks,THE MERCK VETERINARY MANUAL, THE MERCK MANUAL and THE MERCK MANUAL OF GERIATRICS. The Complainant owns approximately 400 worldwide trademark registrations incorporating the MERCK Family of Marks. It also currently owns over 700 top-level and country code domain names incorporating the MERCK Family of Marks, including, but not limited to, <merck.com>, <merck.biz>, <merck.us>, <merckmanual.com>, <merckmanuals.com> and <merckspeakerservices.com>.

The disputed domain name <merckspeakersservices.com> was registered on November 20, 2010, and the disputed domain name <mercksveterinarymanual.com> on November 18, 2010.

The Respondent uses the disputed domain names as landing pages that feature pay-per-click links, including links related to the medical industry, which resolve to third-party websites.

5. Parties’ Contentions

A. Complainant

The Complainant first contends that its MERCK Family of Marks includes the mark MERCK, which is a well-known and famous brand of pharmaceutical products; and THE MERCK VETERINARY MANUAL, which is a well-known and famous brand of veterinary reference books. The Complainant also provides speaker services, and owns and operates a website at the domain name <merckspeakerservices.com>.

The Complainant contends that it is one of the world’s largest pharmaceutical companies and that in 2009 alone, the Complainant had sales of over USD 27 billion of its products worldwide. It has over 100,000 employees worldwide. It focuses its research efforts in the therapeutic areas of cardiovascular, diabetes, obesity, bone, respiratory, immunology, dermatology, infection, infectious disease, oncology, neurosciences, ophthalmology, women's health and endocrine, spending USD 5.8 billion on research and development in 2009. Given such extensive worldwide operations and sales, it contends that the MERCK Family of Marks has acquired substantial worldwide recognition.

The Complainant contends that the disputed domain names are virtually identical and confusingly similar to the MERCK mark and the MERCK Family of Marks in which it has rights. It points to the fact that the disputed domain name <mercksveterinarymanual.com> incorporates the whole of the Complainant’s trademark, THE MERCK VETERINARY MANUAL. The only difference is that the <mercksveterinarymanual.com> domain name does not include the word “the” and has an “s” between the words “Merck” and “Veterinary.” Similarly, the disputed domain name <merckspeakersservices.com> incorporates the MERCK trademark and is identical to the Complainant’s own <merckspeakerservices.com> domain name, except that the disputed domain name <merckspeakersservices.com> adds an extra letter “s” between the words “speaker” and “services.”

The Complainant relies on numerous decisions under the Policy that have held that merely adding descriptive words to a complainant’s mark will not preclude a finding of confusing similarity and that the addition of the “.com” gTLD will also not remove the element of confusing similarity if otherwise found. It argues that the disputed domain names incorporate the Complainant’s famous trademarks, varying them only with the addition of typos and descriptive phrases that are clearly intended to deceive Internet users. Internet users are likely to believe that the disputed domain names are related to, associated with, or authorized by the Complainant and that the Respondent registered the disputed domain names because of this association with the Complainant’s MERCK Family of Marks in order to cause confusion, and that this is a classic case of typosquatting and initial-interest confusion. The Complainant contends that the Respondent appropriated the disputed domain names with the intention of causing confusion, mistake, and deception as to the Complainant and the Respondent.

The Complainant contends, secondly, that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent cannot demonstrate any legitimate interests in the disputed domain names. It registered the disputed domain names well after the Complainant established rights in the MERCK Family of Marks. The Respondent is not commonly known by the disputed domain names and to the Complainant’s knowledge, the Respondent has never conducted a legitimate offline business under the name “Merckspeakersservices” or “Mercksveterinarymanual.” The Respondent has not been granted a license or other rights to use the Complainant’s marks as part of any domain name or for any other purpose. The Complainant is in no way associated or affiliated with the Respondent.

The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names; and the only possible use of the disputed domain names is to misleadingly use them to attract customers to its websites for its own commercial gain. The Respondent’s use of the disputed domain names as landing pages featuring pay-per-click links, including links to third party websites relating to the medical industry, is evidence of the Respondent’s intent to mislead.

The Complainant argues that where, as here, the Complainant’s marks and name are so widely recognized, and have been used in connection with pharmaceuticals and other products for so many years, there can be no legitimate use by the Respondent.

The Complainant contends, thirdly, that the disputed domain names have been registered and used in bad faith. The Complainant contends that bad faith is found where it appears more likely than not, from the evidence that the Respondent has registered a domain name in a deliberate attempt to attract users to its planned website, for commercial gain, due to confusion with Complainant’s mark; and that the use of a domain name that is confusingly similar to a trademark, in order to drive traffic to a website and generate revenue, is evidence of bad faith under the Policy.

It argues that the Respondent’s actions also constitute typosquatting, where a domain name is comprised of a common misspelling of a protected mark, and that typosquatting is of itself evidence of bad faith.

The Complainant further alleges that the Respondent has been engaging in a pattern of conduct where it has registered numerous distinctive domain names for improper purposes. The Complainant relies on Shaw Industries Group, Inc., Columbia Insurance Company v. Moniker Privacy Services/Janice Liburd, WIPO Case No. D2010-1645, Tractor Supply Co. of Texas LP and Tractor Supply Company v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2010-0976, Nilfisk-Advance A/S v. Moniker Privacy Services [2466703]/Janice Liburd, Porchester Partners, Inc., WIPO Case No. D2010-0859 and Européenne de Traitement de L'Information “Euro Information” v. Janice Liburd Porchester Partners, Inc., WIPO Case No. D2010-0751. The Complainant points out that in each of these cases, the panel found that the Respondent registered and used the disputed domain name in bad faith.

The Respondent’s use of the disputed domain names was either intended to divert Internet traffic of end users seeking to find the websites of Complainant, to capitalize on consumers’ typographic mistakes, and/or to suggest to potential customers that the Complainant is somehow related to, or affiliated with, the Respondent. In any case, the Respondent’s registration and use of the disputed domain names is disrupting and diverting the Complainant’s business; such registration and use constitute bad faith.

B. Respondent

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

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) of the Policy further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences,” from the Respondent’s failure to comply with the Rules, “as it considers appropriate.” While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case No. D2000-0003; and Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Having regard to the evidence adduced by the Complainant in relation to the MERCK Family of Marks, which include the marks, THE MERCK VETERINARY MANUAL, THE MERCK MANUAL, and THE MERCK MANUAL OF GERIATRICS, as discussed above, the Panel finds that it can hardly be in dispute that the Complainant has established rights in its MERCK mark. The Panel accepts the evidence adduced by the Complainant that MERCK is a well-known and famous mark that the Complainant owns, and that it also owns trademark rights in the mark, THE MERCK VETERINARY MANUAL. The Panel also accepts, absent any evidence to the contrary or response from the Respondent, that the Complainant provides speaker services and owns and operates a website using the domain name <merckspeakerservices.com>.

The Panel finds that the disputed domain name <mercksveterinarymanual.com> incorporates the registered trademark MERCK and is almost identical to the Complainant’s trademark THE MERCK VETERINARY MANUAL. With regard to the latter, the only difference is that the disputed domain name <mercksveterinarymanual.com> does not include the word “the” and has an “s” between the words “Merck” and “veterinary.”

The disputed domain name <merckspeakersservices.com> incorporates the trademark MERCK, and is almost identical to the Complainant’s own <merckspeakerservices.com> domain name, except that the disputed domain name <merckspeakersservices.com> adds an extra letter “s” between the words “speaker” and “services.”

The Panel notes that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself, to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

In this Panel’s view, this threshold test is satisfied. The mark MERCK is distinctive and is the dominant or principal component of the domain name. The addition of the descriptive words in the two disputed domain names, <mercksveterinarymanual.com> and <merckspeakersservices.com>, does not prevent the disputed domain names from being regarded as confusingly similar to the trade mark MERCK: see for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367, where the panel held that the addition of the generic term, “automotive” did not distinguish a respondent’s domain name <experianautomotive.com> from the complainant’s mark, as the domain name contained the complainant’s EXPERIAN mark in its entirety.

Further, the disputed domain name <mercksveterinarymanual.com> is, in the Panel’s view, clearly confusingly similar to the Complainant’s mark, THE MERCK VETERINARY MANUAL. The minor differences between the disputed domain name and the Complainant’s mark, as noted above, do not alter that conclusion. Neither would the presence of the top-level suffix “.com” be sufficient to escape a finding of substantial or confusing similarity, since that is a technical requirement of registration: see inter alia, CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. “Woofer” Smith, WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures, WIPO Case No. D2002-0567; and Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015.

This Panel accordingly finds that the disputed domain names are confusingly similar to the Complainant’s trademarks, in which the Complainant has rights.

B. Rights or Legitimate Interests

As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name; and that once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Complainant has contended that the Respondent registered the disputed domain names long after the Complainant established its rights in the MERCK Family of Marks; that the Respondent is not commonly known by the disputed domain names; that to the Complainant’s knowledge, the Respondent has never conducted a legitimate offline business under the name “Merckspeakersservices” or “Mercksveterinarymanual”; and that the Respondent has not been granted any license or other rights to use the Complainant’s Marks for any purposes and that the Complainant is in no way associated or affiliated with the Respondent.

The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, and the only possible use of the disputed domain names would be to use them to mislead and attract customers to its websites for its own commercial gain. The disputed domain names, according to the Complainant, are used as landing pages featuring pay-per-click links, including links to third party websites relating to the medical industry.

The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain names.

In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent, namely that here it has no rights or legitimate interests. The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain names. As noted above, the Respondent has no known connection or affiliation with the Complainant, which has not consented to or authorized the Respondent’s use of the disputed domain names. There is no evidence that the Respondent is commonly known as “Merckspeakersservices” or “Mercksveterinarymanual”. The Respondent appears to be using the disputed domain names for pay-per-click links to third party websites and not for any bona fide offering of goods or services. Not is it making a legitimate noncommercial or fair use of the disputed domain names. It appears that the Respondent’s behavior constitutes “typosquatting,” by registering domain names that are close misspellings of Complainant’s Marks and domain names, which use does not constitute a legitimate business use under the Policy.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain names have been registered and used in bad faith.

The Complainant submits that the Respondent has registered and used the disputed domain names in bad faith. The evidence in the record establishes that the Respondent has no license or other authorization to use the MERCK trademark. There is no question that the Respondent registered the disputed domain names long after the MERCK trademark and the Complainant’s other marks in the MERCK Family of Marks were registered. The MERCK trademark was, and is, a well-known mark based on the evidence adduced by the Complainant, and clearly, in the view of the Panel, the Respondent must have known about the Complainant’s mark and business when registering the disputed domain names.

On the evidence presented, the Panel finds that the Respondent uses the disputed domain names as landing pages that feature pay-per-click links, including links to third party sites related to the medical industry. The Complainant’s assertion that the Respondent receives payment for every user that clicks on a pay-per-click link has not been disputed. The Panel accepts from the evidence offered by the Complainant that the Respondent has registered the domain names in a deliberate attempt to attract users to its websites for commercial gain by seeking to profit from the confusion with the Complainant’s marks.

The Panel accepts the Complainant’s contentions and arguments that the use of a domain name that is confusingly similar to a trademark, in order to divert traffic to a website and generate revenue, is evidence of bad faith pursuant to paragraph 4(b) of the Policy.

The Panel further accepts the Complainant’s contentions that the Respondent’s actions also constitute typosquatting, where, as here, there has been a misspelling of a protected mark. Typosquatting is evidence of bad faith. In this case, the Respondent’s disputed domain name <mercksveterinarymanual.com> differs from Complainant’s trademark THE MERCK VETERINARY MANUAL only by the omission of the word “the” and by the addition of the letter “s.”

Further, absent any response from the Respondent, the Panel accepts the evidence offered by the Complainant (as noted in the numerous cases cited above) that the Respondent has engaged in a pattern of conduct where it has registered numerous distinctive names for improper purposes. Such pattern of conduct is evidence of bad faith.

The Panel has no hesitation in finding on the undisputed evidence that the Respondent’s registration and use of the disputed domain names was intended to disrupt and divert the Complainant’s business, and that such registration and use constitute bad faith. The Respondent, it appears to the Panel, was clearly seeking to profit from the confusion created by the inclusion of the Complainant’s marks in the disputed domain names. The Panel finds that by intentionally attempting to attract, for commercial gain, users to the Respondent’s website through creating a likelihood of confusion with the Complainant’s marks, the Respondent’s registration and use of the disputed domain names was in bad faith.

The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant, the Panel accepts the Complainant’s contentions that the domain names were registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <merckspeakersservices.com> and <mercksveterinarymanual.com>, be transferred to the Complainant.

Richard Tan
Sole Panelist
Dated: April 18, 2011