Schering-Plough Corporation and Schering Corporation v. Registrant [240614]:
Forum LLC c/o Moniker Privacy Services
Case No. D2006-1068
1. The Parties
The Complainants are Schering-Plough Corporation and Schering Corporation of Kenilworth, New Jersey, United States of America, represented by Pitney Hardin LLP, United States of America.
The Respondent is Moniker Privacy Services / Registrant [240614]: Forum LLC c/o of Reseau, Dominica.
2. The Domain Name and Registrar
The disputed domain name <sheringplough.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2006. On August 24, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 12, 2006, 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 administrative, billing, and technical contact. The Complainant filed an amendment to the Complaint on September 18, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2006.
The Center appointed R. Eric Gaum as the sole panelist in this matter on November 20, 2006. 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 Complainants are one of the world’s largest pharmaceutical companies. In 2005 alone, the Complainants had net sales of over $9.5 billion, selling products in over 125 different countries. The Complainants have over 30,000 employees worldwide. The Complainants focus their research efforts on allergic and inflammatory disorders, infectious diseases, cancer and cardiovascular disease, spending $1.85 billion on research and development in 2005. The SCHERING-PLOUGH Marks have acquired substantial worldwide recognition.
5. Parties’ Contentions
A. Complainant
The Complainants contend that they are the owners of all rights, title and interests in and to the SCHERING-PLOUGH trademarks and trade name (hereinafter “SCHERING-PLOUGH Marks”). The Complainants have used the SCHERING-PLOUGH Marks since at least as early as 1971, when Schering Corporation, a global research-based pharmaceutical firm, merged with Plough Inc., a worldwide manufacturer of consumer products.
The Complainant, Schering Corporation, currently owns 6 U.S. federal trademark registrations for the SCHERING-PLOUGH Marks. The Complainants owns over 100 foreign trademark registrations incorporating the SCHERING-PLOUGH Marks.
The Complainants currently own numerous top-level and country code domain names incorporating the SCHERING-PLOUGH Marks, including, but not limited to, <schering-plough.com>, <scheringplough.com>, <schering-ploughpipeline.com>, <schering-plough-jobs.com>, <schering-ploughcareers.com>, <schering-plough.us>, <schering-plough.info>, <schering-plough.com.cn>, <schering-plough.cn>, <schering-plough.biz>, <schering-plough.be>, <schering-plough.fr>, <schering-plough.co.jp>, and <schering-plough.com.au>.
In 2005 alone, there were over 682,000 unique visitors to the Complainants’ website, averaging over 1,700 unique visitors per day. Of these visitors, over 78% were new or first-time visitors to the site. Visitors came from over 20 different countries throughout North America, Europe, and Asia. Over 111,000 of the Complainants’ website visitors in 2005 visited the page of the Complainants’ site devoted to “Careers.”
The Complainants also offer a free patient support program called: Be In Charge, which is designed to provide education and support to people diagnosed with hepatitis B or C. This includes those who are either not on therapy or those receiving Schering-Plough’s hepatitis B or C therapy. People enrolled in the Complainants’ Be In Charge program have access to specially trained nurses and educational materials to help them understand the therapy. Participants may also choose to have a personal nurse counselor assigned to them, whom they can call to answer questions and encourage patients throughout their therapy. Be In Charge has helped thousands of people since its inception.
The Complainants vigorously police their rights to their SCHERING-PLOUGH Marks. As indicated above, the SCHERING-PLOUGH Marks are strong marks with goodwill. Indeed, as a result of this strength, worldwide use, and high consumer recognition, the SCHERING-PLOUGH Marks are famous.
The Respondent registered the Domain Name on February 3, 2006. When users type in the URL “www.sheringplough.com”, they are brought to a targeted search site that provides links such as Job Listings, Job Search, Careers, Patient Assistance, Travel and Finance.
When users click on the “Patient Assistance” link, they are brought to another page with “Sponsored Links” and “Top Sites.” Amongst these listings are links to various Medical Assistant Schools and Courses, Prescription Drug links, such as “Free Prescription Drugs,” a Credit Card consolidation website under the heading “Patient Assistance Your consolidated, patient assistance and debt relief source,” and a link to “www.medInsurance.com” under the heading “Get Medical Insurance Quotes”. On the far left side of the “Patient Assistance” page are more links, such as “prescription”, “medical insurance”, “pharmacy”, “pharmaceutical,”, and “health care products”.
When users click on the “Prescription” link, they are brought to another targeted search engine. The “Prescription” page provides links to various drug-related websites such as “www.canadadrugs.com”, which states “Canada’s Largest Internet Pharmacy Save on Generic or Brand Name Meds.” There is also a link entitled “Discount Rx Pharmacy,” where below reads “Fast & Easy Ordering – US Pharmacy Free FedEx Overnight on All Orders” and takes users to “www.netcarepharmacies.com”.
From the “Prescription” page, users may click on “On Line Pharmacy,” which again, takes users to another prescription drug-related targeted search page. This page also provides links to drug-related websites such as “www.netcarepharmacies.com” under the heading “Fill Your Prescription” and “www.safeusmeds.com” under the heading “Buy Rx Pills At Cost.”
Based on the above, it is obvious that the Respondent is trying to divert users looking for pharmaceutical, medical, and career related information, as well as the Complainants’ Patient Assistance programs found on the Complainants’ websites.
It is well known that such customized search engines are created to generate revenue for the registrant, and the Respondent undoubtedly receives click-through payments each time a visitor to the <sheringplough.com> website clicks on any of these links. Thus the Respondent is wrongfully profiting from the Complainants’ goodwill and famous name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements is present.
As the Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the allegations of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
Based upon the registered SCHERING-PLOUGH Marks and the continuous use of the marks, the Complainant clearly has rights in the marks.
The Complainant asserts that the domain name <sheringplough.com> is identical and/or confusingly similar to the SCHERING-PLOUGH Marks.
The Panel agrees with the Complainant that the actual differences between the Domain Name and the trademarks are the “www”, “.com,” the lack of a hyphen, and the letter ‘c’ in the Domain Name, all of which are trivial.
The Panel finds the domain name <sheringplough.com> is confusingly similar to the registered SCHERING-PLOUGH Marks, and that the Complainant has established it has rights in the SCHERING-PLOUGH Marks, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy. In particular, paragraph 4(c) of the Policy states:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the domain Name. There is no evidence in the record that would indicate that the Respondent has any rights or legitimate interests in respect of the domain name <sheringplough.com>.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the domain name <sheringplough.com>, pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the Policy states:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Bad faith has been found when “it appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned website for commercial gain due to confusion with Complainant’s marks.” InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.
Based on the evidence presented and the absence of contrary evidence, the Panel finds the Complainant has established that the Respondent registered and used the domain name <sheringplough.com> in bad faith, pursuant to paragraph 4(b)(iv) 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 name, <sheringplough.com> be transferred to the Complainant.
R. Eric Gaum
Sole Panelist
Dated: November 3, 2006