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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Merck KGaA v. Douglas Draper

Case No. D2003-0203

 

1. The Parties

The Complainant is Merck KGaA, of Darmstadt, Germany, represented by Jonas Kölle of Germany.

The Respondent is Douglas Draper, of Knoxville, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names, <merck.net> and <merck.org> ("the Domain Names"), are registered with Network Solutions, Inc. ("Network Solutions").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 14, 2003. On March 17, 2003, the Center transmitted by email to Network Solutions a request for registrar verification in connection with the Domain Names. On March 18, 2003, Network Solutions 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 contacts. 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 March 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2003. The Response was filed with the Center on April 11, 2003.

The Complainant elected to have these proceedings decided by a three-member panel. The Center appointed Christopher P. Tootal, Torsten Bettinger and David H. Tatham as panelists in this matter on May 14, 2003. The Panel finds that it was properly constituted. Each member of 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 is due to deliver its decision by May 28, 2003.

 

4. Factual Background

(a) The Domain Names were registered on October 24, 1998.

(b) The Complainant has registered numerous domain names incorporating the name MERCK, including in particular <merck.de>.

(c) The domain name <merck.com> is owned by Merck & Co. Inc. of the U.S.A.

(d) At one time, the German company, E. Merck (now Merck KGaA), was the parent company of Merck & Co., Inc., but that relationship was severed by the U.S. government during World War I. After the war, however, E. Merck still maintained trademark rights to the name "Merck" in many countries except the United States. Subsequently, both companies agreed that the name "Merck" may be used alone in the U.S. and Canada by Merck & Co., Inc., and in most of the rest of the world by E. Merck. Merck & Co., Inc. would use "Merck" in conjunction with "Sharp & Dohme" in the rest of the world, except Germany, where "Merck" could not be used at all, and thus, MSD Sharp & Dohme is used.

(e) The Complainant is the owner of over 500 trademark registrations in 171 countries for the trademark MERCK, including a Community trademark and an International Registration for MERCK ("the Trademark").

(f) The full extent of the communications between the Complainant and the Respondent is as follows:-

(i) March 7, 2003

Dear Mr. Draper,

I request you to assign domain names <merck.org> and <merck.net> to Merck KGaA.

Kindly acknowledge receipt of attached letter and agreement:

Sincerely yours,

Jonas Kölle
Attorney at Law

(ii) March 10, 2003

Hello Jonas:

I would like to inform you that the email and attachments concerning <merck.net> and <merck.org> have been received.

It is my understanding that the name "Merck" is shared by at least two corporations, Merck & Co. and Merck KGaA; along with an independent not-for-profit, The Merck Foundation.  Therefore, I do not see your company having exclusive rights to the name Merck.

I have reserved the domains <merck.org> and <merck.net> since 1998 without challenge from any entity.  My goal for the domains is to establish a public forum for discussion of medications.  I’m currently battling leukemia and have not had the energy to establish the forum.

If your company would like to negotiate transfer of the domains <merck.org> and <merck.net> for just compensation, I would be open to that idea.  You can reach me at (865) 671-1094, or address: 437 Sugarwood Dr., Knoxville, TN 37922.   Thanks for you interest in the domains.

Douglas Draper

(iii) March 13, 2003

Dear Douglas,

Thank you for your message of March 10^th.

We noted that you are willing to sell us the domain names <merck.org> and <merck.net>. Kindly give us an idea of your expenses on mentioned domain names. We would be willing to compensate you in this regard.

I am looking forward to hearing from you soon.

Sincerely yours,

Jonas Kölle

(iv) March 13, 2003

Dear Jonas:

I am not interested in transferring the domains for "maintenance expenses" only.  There is a scarcity value associated with the domains <merck.org> and <merck.net>.  If there were no value, I would transfer the domains to Merck & Company.

I will use any compensation received from the domains for treating my leukemia.  In that regards, I’m looking to start advanced treatment in the next few months and will need a bone marrow transplant within a few years. I am currently unemployed and considered uninsurable for medical insurance in the United States.

Therefore, I seek compensation for the domains <merck.org> and <merck.net> equal to the amount of a bone marrow transplant, or $250,000.  That is considered a small amount for a company the size of Merck KGaA, but will provide me with a life saving procedure.  Look forward to hearing from you soon.

Sincerely,

Douglas Draper

 

5. Parties’ Contentions

A. Complainant

The Complainant contends, inter alia, as follows:-

(i) The Complainant’s company name MERCK was first associated with pharmaceutical goods in 1668. The Complainant has used MERCK as its company name since 1850 when the company E.Merck was founded. The Trademark has acquired notoriety and fame throughout the world. An affidavit on behalf of the Complainant provides evidence for such notoriety and fame throughout the world.

(ii) The Trademark is used as the Complainant’s company name in the business areas of pharmaceuticals, chemicals and laboratory distribution for its full range of products.

(iii) The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to use a domain name incorporating any of those marks.

(iv) The Complainant has watched the Trademark for decades, and has taken notice of every infringement of it worldwide. The Complainant has never noticed the Respondent using a trademark or service mark identical or similar to the Trademark, by which he may have come to be known.

(v) The Respondent has never used the Domain Names in connection with a bona fide offering goods or services. The Domain Names are parked at a web page of Network Solutions. An Internet presence is announced with the words "UNDER CONSTRUCTION". According to the Complainant’s information the Domain Names have been inactive since their registration.

(vi) The behaviour of the Respondent clearly shows that the Respondent registered the Domain Names for the purpose of selling them to the Complainant or to Merck & Co., Inc., which is entitled to use the name MERCK in the United States and Canada and is a direct competitor to the Complainant.

(vii) The Complainant’s company name and the Trademark are well known all over the world. Therefore it is likely that the Respondent had been aware of the Complainant’s company name and the Trademark at the time of registration of the Domain Names. In referring to the Complainant’s company as well as Merck & Co., Inc. the Respondent himself submitted evidence in his message of March 10, 2003, of the fact that he knew the name MERCK as a company name and trademark.

B. Respondent

The Respondent contends, inter alia, as follows:-

(i) He has been the registrant of the Domain Names since October 1998. This was the time he was diagnosed with Chronic Lymphocytic Leukemia and he registered the Domain Names with plans of establishing a public forum for discussion of medications. [A biopsy report dated June 24, 1999, evidencing the leukemia is exhibited – Panel].

(ii) He was unaware of any trademark issues when he registered the Domain Names.

(iii) Due to financial problems and steadily declining health from the leukemia, he was never able to accomplish anything with the Merck Domain Names, other than maintain the registration. During his time as registrant of the Domain Names, he has never contacted Merck KGaA, or anyone else, to solicit payment for transfer.

(iv) The Complainant does not have exclusive rights to the name Merck. Although the Respondent does not have any such claim, he could legitimately transfer the Domain Names to Merck & Company were it not for the WIPO Complaint. It is his contention that the primary reason for Merck KGaA filing the WIPO Complaint is to prevent such a transfer to Merck & Company.

(v) In relation to the issue of bad faith, the Respondent states the following:-

"In my email dated March 10, 2001, I stated "If your company would like to negotiate transfer of the domains <merck.org> and <merck.net> for just compensation, I would be open to that idea." This statement clearly shows I was willing to negotiate for transfer of the domains. In Mr. Kölle’s March 13, 2001, response, he asserted that I offered to sell them the domains, all the while knowing that selling of a domain was grounds for Bad Faith. It is my contention that Mr. Kölle was deceptive in his response, and led me to believe his company was willing to "negotiate" terms for transferring the domains. I interpreted Mr. Kölle’s response "Kindly give us an idea of your expenses on mentioned domain names. We would be willing to compensate you in this regard." as a starting offer for negotiations. Never did I believe my March 13, 2001, email would be accepted or viewed as a legal document demanding payment for transfer of the domains. It was merely intended as an initial (informal) negotiation. I contend that Merck KGaA provoked me into making a case for the WIPO Complaint. They could have easily responded back with a negative reply and mentioned it is against the rules for payment above actual expenses. Again, I suggest Merck KGaA’s was eager to file the WIPO Complaint to ensure the domains cannot be transferred to Merck & Company.

I did not knowingly act in bad faith during my email correspondence with Mr. Kölle. I was only reacting to what I thought was a willingness by Merck KGaA to negotiate transfer of the domains. Being unemployed with leukemia, and facing staggering medical costs, my motivation for receiving compensation was to help pay for necessary medical expenses. I do not wish to continue as registrant of the domains <merck.org> and <merck.net>. However, as current registrant, I believe I should be granted the right to transfer the domains to the legitimate company of my choosing, i.e., Merck & Company."

 

6. Discussion and Findings

The Panel has much sympathy with the Respondent’s personal circumstances, suffering as he is from leukaemia. However, WIPO Panelists are under a duty to apply the Policy and Rules on a consistent basis to all disputes, and this Panel does not consider that the Respondent’s illness has any relevance to the issues it must determine in this case.

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:

(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

There can be no dispute that each of the Domain Names is identical to the Trademark (MERCK), and the Panel finds that the Complainant has established element (i) above.

B. Rights or Legitimate Interests

Despite the Respondent’s statement that he was unaware of any trademark issues when he registered the Domain Names, his intention at the time of "establishing a public forum for discussion of medications" suggests that he was well aware of the name MERCK in the pharmaceutical field (even if that awareness may have extended only to the U.S. Merck company). The Respondent would have been fully entitled to develop a website to establish such a public forum, but "the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views" (Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, (June 9, 2000). While both the U.S.Merck company and the Complainant have extensive rights in the name MERCK, its fame is such as to preclude the Respondent from establishing that he has any rights or legitimate interests in the Domain Names.

The Policy sets out the following, non-limitative, circumstances which would enable a Respondent to demonstrate he has rights or legitimate interests in a domain name:

(i) before any notice to you 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 non-commercial 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.

There is nothing in the Response to suggest that any of these circumstances apply in this case.

C. Registered and Used in Bad Faith

One of the circumstances which constitute registration and use in bad faith for the purposes of the Policy are set out in Paragraph 4(b)(i) of the Policy, as follows:-

"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."

The panel considers that the Respondent’s main purpose when registering the Domain Names was, if possible, to make money from those registrations – why else would someone register two top-level domain names (.net and .org) involving a famous trademark?

Further, the Domain Names were registered as long ago as October, 1998, yet the Respondent appears to have made no efforts to develop a website. He says that this was the time he was diagnosed with Leukaemia, but the biopsy report he has exhibited is dated 8 months later, in June 1999.

The evidence that brings this case firmly within Paragraph. 4(b)(i) of the Policy is the exchange of e-mails in March, 2003. The Respondent claims he was "provoked" by the Complainant into making his request for compensation of $250,000. The Panel does not accept this. The first mention of "compensation" came from the Respondent in his e-mail of March 10 ("If your company would like to negotiate ……..for just compensation ….." – see para. 4(f)(ii) above). When the Complainant offered only to compensate the Respondent for his expenses, the Respondent expressly rejected this offer, and made it very clear that he was looking for a sum considerably in excess of his out-of-pocket costs (see para. 4(f)(iv) above. The consequence of seeking a six-figure sum is inevitably to fall foul of Paragraph. 4(b)(i) of the Policy. The Panel accordingly finds that the Domain Names have been registered and used in bad faith.

 

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 <merck.net> and <merck.org> be transferred to the Complainant Merck KgaA.

 

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Christopher P. Tootal
Presiding Panelist

Torsten Bettinger
Panelist

David H. Tatham
Panelist

Date: May 27, 2003