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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Serono S.A. v. Johnny Carpela

Case No. D2007-0925

 

1. The Parties

The Complainant is Merck Serono S.A., Geneva, Switzerland, represented by Ostrolenk, Faber, Gerb & Soffen, LLP, United States of America.

The Respondent is Johnny Carpela, Sumas, Washington, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <serophene.com> is registered with GoDaddy.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2007. On June 25, 2007, the Center transmitted by email to GoDaddy.com a request for registrar verification in connection with the Domain Name at issue. On June 25, 2007, GoDaddy.com 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 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 June 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2007.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on August 3, 2007. 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, Merck Serono S.A., is a company organized and existing under the laws of Switzerland and is focusing on prescription pharmaceuticals specializing in the core areas of oncology, neurology and other therapeutic areas. The Complainant claims to be a leader in the field of global biotechnology and produces amongst others an oral prescription drug of clomiphene citrate distributed under the brand SEROPHENE.

The Complainant through its subsidiaries and related companies is the owner of the following trademarks SEROPHENE:

- United States Trademark, Reg. No. 1.311.955, registered on January 1, 1985, for clomiphene citrate used to stimulate ovulation, in Class 5 (First Use Date: April 1981).

- International Trademark, Reg. No. 454470, registered on June 30, 1980, for goods in Class 5 and designating amongst others under the Madrid Agreement the following countries: Benelux, France, Russia, Portugal, Viet Nam, etc.

- European Community Trademark, Reg. No. 3.416.112, registered on February 2, 2005 for goods in Class 5.

The trademark SEROPHENE is used by the Complainant in connection with the mentioned goods of Class 5.

The Complainant, its subsidiaries and related companies have also registered “serophene” in other top level Domain Names (<serophene.net> <serophene.info> <serophene.eu>).

The Domain Name <serophene.com> was registered on February 26, 2002 by Johnny Carpella. It is being used for a website with various advertising links to pharmaceutical product and services like online pharmacies.

The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case.

In particular, the Complainant claims that the mark SEROPHENE has become well-known among relevant consumers like doctors, pharmacists and patients. This would be the result of long and widespread use as well as substantial advertisement and promotion. The Complainant had expended significant time and effort in developing and protecting its mark SEROPHENE.

The Complainant states that the Respondent has registered the domain without its permission. The Domain Name registered by the Respondent would be identical to the Complainant’s mark SEROPHENE. Adding a top-level domain such as “.com” to the Domain Name would not affect the overall Domain Name for the purpose of determining whether it is identical or confusingly similar.

Furthermore, the Complainant argues that the Respondent has no right or legitimate interest in the Domain Name that is the subject of the Complaint. The Respondent had not been using the Domain Name in connection with a bona fide offering of goods or services. The Respondent plainly uses his website for commercial purposes in linking to the websites of others and it is be obvious that the Respondent is compensated for directing traffic to the websites of online pharmacies.

The Complainant deducts there can be no doubt that the Respondent has in bad faith engaged in registering and using the Domain Name at issue by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and links to third party pharmaceutical websites provided on the Respondent’s website. The Respondent is damaging the Complainant and the reputation it enjoys in its mark by associating the Complainant and its mark with websites and businesses that are not related to or affiliated with the Complainant and over which the Complainant has no control.

What adds to that is the fact that the Respondent is a notorious cybersquatter. There had been several actions brought pursuant to the UDRP in which the Respondent has been ordered to transfer his Domain Name registrations to the legitimate owners (AstraZeneca AB v. Johnny Carpela, WIPO Case No. D2005-0352; CVS Pharmacy, Inc. v. Johnny Carpela, WIPO Case No. D2004-0038.

In an effort to amicably avoid any dispute, the Complainant provided the Respondent with two opportunities to voluntarily transfer the disputed Domain Name before filing this Complaint (On April 5, 2007 and April 23, 2007).

B. Respondent

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

 

6. Discussion and Findings

The Respondent is in default. In accordance with the Rules, in case of failure by the Respondent to provide a response to the allegations of the Complainant – as in the present case -, the Panel is directed to decide the administrative proceeding on the basis of the complaint (paragraph 14(a) of the Rules), and “shall draw such inferences therefrom as it considers appropriate” (paragraph 14(b) of the Rules) (cp. Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna Espaсa S.A v. Ocxon Media S.A., WIPO Case No. D2001-0128).

Notwithstanding the above, the Complainant must establish that the three elements listed in paragraph 4 (a) of the Policy are present. These are:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name registered by the Respondent is <serophene.com>. The Complainant has rights in trademarks for the denomination SEROPHENE. The contestations of the Complainant are construed in a way that its subsidiaries have granted the Complainant at least a standing to sue or claim for the Domain Name based on their trademark rights, which is sufficient as the basis for this UDRP complaint. The contestations of the Complainant regarding its ownership of the trademarks through its subsidiaries have remained uncontested and are therefore imputed as true.

The Panel finds that the Domain Name <serophene.com> is confusingly similar to the Complainant’s registered trademarks SEROPHENE. This conclusion is obvious, if it is considered, that for the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” must be disregarded as being simply a necessary component of a domain name indicating the nature of top level domain.

B. Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the disputed Domain Name.

According to consensus view of the WIPO panels under paragraph 4(a)(ii) of the Policy the Complainant must make at least a prima facie showing that Respondent has no rights or legitimate interests in the mark. After the Complainant has met its initial burden of proof and if the Respondent fails to submit a response the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy. (cp. Dow Jones & Company, Inc. and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant states conclusively that the Respondent had not been using the Domain Name in connection with a bona fide offering of goods or services. The fact that the website contains only a description of clomiphene, the active ingredient of SEROPHENE, and links to third party websites where pharmaceuticals were offered, emphasizes this finding.

Moreover, based on the recited circumstances of the commercial advertising by links to online pharmacies there is no evidence of a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain.

Ultimately, there is no evidence that the Respondent is commonly known under the Domain Name.

The Respondent himself has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the Domain Name in dispute.

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

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration as well as use in bad faith of the disputed Domain Name, even if the Respondent has not responded to the Complaint.

Paragraph 4(b)(iv) of the Policy lists as one of the typical situations, which shall provide evidence of the registration and use of a Domain Name in bad faith, that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or location or of a product or service on his website or location.

In this regard the Panel is satisfied with the Complainant’s contentions. The Complainant has submitted sufficient facts providing evidence that the Respondent has fulfilled the criteria set out in paragraph 4(b)(iv).

There can be no doubt that the Respondent knew of the Complainant’s trademark SEROPHENE. The word “serophene” is not a descriptive word. The mark was used continuously since the early 1980’s for pharmaceutical products in the United States of America, where the Respondent is located, and in other countries. Thus the Respondent must have known the trademark SEROPHENE when registering the domain <serophene.com> on February 26, 2002.

Subsequently the Respondent uses the domain to promote the advertisement and the sale of pharmaceutical goods by others. The Panel is convinced that the Respondent is compensated for channeling consumers to the websites of others who advertise on his website.

Furthermore, the assumed neutral information on clomiphene, the active ingredient of Serophene, demonstrates that the Respondent attempted to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.

Therefore, the Panel finds that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

Hence, Complainant has proven that each of the elements of the Policy are present.

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 < serophene.com > be transferred to the Complainant.

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Andrea Jaeger-Lenz
Sole Panelist

Dated: August 17, 2007