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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Merck KgaA v. Mauritania Investments Ltd.

Case No. DBZ2005-0001

 

1. The Parties

The Complainant is Merck KgaA, Darmstadt, Germany, represented by in-house counsel (the “Complainant”)

The Respondent is Mauritania Investments Ltd., Nassau, Bahamas (the “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name <merck.bz> (the “Domain Name”) is registered with Belize Network Information Center.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2005. On December 16, 2005, the Center transmitted by email to Belize Network Information Center a request for registrar verification in connection with the domain name at issue. On January 26, 2006, Belize Network Information Center 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 27, 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 February 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2006.

The Center appointed Alfred Meijboom as the sole panelist in this matter on February 28, 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 Complainant is a worldwide operating pharmaceutical company.

Its company name “Merck” was first associated with pharmaceutical goods in 1668, and was first used as a trademark in 1850, when the company E. Merck, the Complainant’s predecessor, was founded.

The Complainant is the exclusive owner of over 500 trademark registrations for the trademark MERCK in 171 countries, including a Community trademark and an International Registration for MERCK, as well as trademark applications for MERCK in Belize of October and November 2001. The MERCK trademarks have mainly been registered in international classes 1, 2, 3, 5, 9, 10, 16, 29, 30, 35 and 42. The Complainant further owns 122 worldwide domain name registrations containing its trademark MERCK.

The Complainant as well as the American company Merck & Co, Inc use the trademark MERCK for historical reason. The Internet address of Merck & Co is “www.merck.com”, and the Complainant’s Internet address is “www.merck.de”.

The Domain Name was registered by the Respondent on December 28, 2001.

On July 19, 2005, the Complainant sent a cease and desist letter via certified mail and e-mail addressed to the Respondent, requesting the Respondent that the domain name be assigned to the Complainant. The Complainant could, however, not reach the Respondent by mail, and the Respondent did not respond to the e-mail.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Domain Name is identical to the Complainant’s well known trademark MERCK, because the relevant part of the Domain Name (which the Panel understands to be the second level domain name) is textually identical to MERCK.

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

None of the circumstances listed under paragraph 4(c) of the Policy are present. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for a domain name incorporating any of those marks. The registration and use of the Domain Name therefore clearly violates the Complainant’s company name and trademark rights.

The Complainant has been watching its trademark MERCK for decades and has taken notice of every infringement of the trademark MERCK worldwide. The Complainant never found that the Respondent ever used a trademark which was identical or similar to MERCK, by which it may have come to be known. Therefore the Respondent has not been commonly known by the designation MERCK.

The Respondent has never used the Domain Name in connection with a bona fide offering of goods or services. The Domain Name is not actively used by the Respondent, and the Complainant believes it has been inactive since its registration. Simple stocking of the Domain Name does not create any right or legitimate interest in the Domain Name.

For the same reason the Respondent is not making any fair use of the Domain Name.

(c) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant’s company name and trademarks MERCK are well known all over the world, and the trademark MERCK has acquired worldwide notoriety and fame which was confirmed by previous panel decisions in re Merck KgaA v. Douglas Draper, WIPO Case No. D2003-0203 and Merck KgaA v. Blue Sea Co. Inc., WIPO Case No. D2003-0394.

Registration of the Domain Name shortly after publication of the Complainant’s trademark registrations MERCK in Belize is an indication of Respondent’s intention to sell the Domain Name to the Complainant or Merck &Co. or profit otherwise of the registration of the Domain Name. This is confirmed as the Respondent does not operate a website under the Domain Name.

Respondent’s activities create a likelihood of confusion with respect to the source, sponsorship, affiliation or endorsement of the Domain Name. The public may expect that the Complainant owns the Domain Name and potential customers of the Complainant having troubles locating it may become frustrated or draw inferences concerning the status of Complainant’s business.

The Respondent has registered the Domain Name in order to prevent the Complainant from reflecting the trademark MERCK in a corresponding domain name.

The information of Respondent’s address and telephone number which it provided to the registrar is false. The use of false information is further evidence that the Respondent registered the Domain Name in bad faith.

The Complainant contends that the above arguments constitute enough evidence to demonstrate the Respondent registered and uses the Domain Name in bad faith.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has registered hundreds of MERCK trademarks worldwide, including several trademark applications for MERCK in Belize. Since the first level domain name .bz should be disregarded in establishing the similarity between the Domain Name and the Complainant’s trademarks, the Domain Name is identical to and confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

According to the Complainant, the Respondent did not use the Domain Name or a name corresponding to the Domain Name prior to the registration of the Domain Name, nor has the Respondent been commonly known by the Domain Name. The Respondent was further not authorized by the Complainant to register the Domain Name. There is no evidence of circumstances as described in Para. 4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests to the Domain Name.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

According to Para. 4(a)(iii) of the Policy this third element is met if the Domain Name was both registered and used in bad faith.

The Panel is satisfied that the Domain Name was registered in bad faith. The Complainant submitted sufficient evidence that the trademark MERCK has been used intensively for many decades and registered in many countries worldwide, so that it acquired a reputation and should be considered a well known trademark as meant in Article 6bis of the Paris Convention. It is therefore likely that the Respondent was familiar with the MERCK trademarks at the moment it registered the Domain Name. Further, the Respondent registered the Domain Name only shortly after the publication of the Belize trademark applications for MERCK.

The Panel considers these facts above as clear indication that the Respondent registered the Domain Name in bad faith. This is further enhanced by the fact that the Respondent provided incorrect or possibly even false details regarding its address and telephone number to the registrar, did not reply to a warning letter and e-mail of the Complainant and did not file a response in these proceedings.

The Domain Name has been inactive since it was registered in December 2001. Although, at first glance, “use” seems to mean that the Domain Name must be actively used, possibly under an active website, such interpretation of the Policy is, according to the consensus view in UDRP panel decisions, too strict. The Panelist refers to one of the standard case in this respect, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which provides guidelines indicating whether an inactive domain name should still be considered as being used in bad faith. The use in bad faith of a domain name depends on the circumstances of each case. The Panel, quoting from the Telstra case, holds that the Domain Name is used in bad faith because:

“(i) the Complainant’s trademark has a strong reputation and is widely known […],

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity […],

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”

For these reasons, the Panel finds that the Respondent registered and used the Domain Name 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 name <merck.bz> be transferred to the Complainant.

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Alfred Meijboom
Sole Panelist

Dated: March 13, 2006