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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck KGaA v. Blue Sea Co. Inc
Case No. D2003-0394
1. The Parties
The Complainant is Merck KGaA, of Germany.
The Respondent is Blue Sea Co. Inc, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <merckonline.com> ("Disputed Domain Name") is registered with BulkRegister.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on May 23, 2003, and hard copies followed on May 26, 2003. On May 23, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On the same day, BulkRegister.com 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 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 May 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2003.
The Center appointed Alistair Payne as the sole panelist in this matter on
July 2, 2003. 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,
4. Factual Background
The Complainant’s company name MERCK was first associated with pharmaceutical goods in 1668 and has been used since 1850 when the company E.Merck was founded.
The Complainant (formerly E.Merck) was once the parent company of Merck & Co., Inc. Merck &Co., Inc became an independent company after World War I and both companies agreed that the name "MERCK" may be used in the U.S. and Canada by Merck & Co., Inc and in Europe and the rest of the world by the Complainant. Accordingly both the Complainant and Merck & Co., Inc use the "MERCK" name.
The Complainant is the owner of over 500 trademark registrations in 171 countries for MERCK, including a Community trademark and an International Registration. This trademark is used in its business areas of pharmaceuticals, chemicals and laboratory distribution for its full range of products. The Complainant has also registered numerous domain names incorporating the name MERCK, in particular <merck.de>.
The Disputed Domain Name was registered on January 12, 2000.
5. Parties’ Contentions
1. Identical or Confusingly Similar
The Complainant contends that the trademark MERCK has acquired notoriety and worldwide fame and that the Disputed Domain Name is confusingly similar to the Complainant’s MERCK trademark and company name as it incorporates the Complainant’s distinctive MERCK mark. The suffix "online" is a generic term and does not differentiate the Disputed Domain Name from the Complainant’s MERCK trademark.
2. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons:
• None of the circumstances listed under paragraph 4(c) of the Policy are present.
• The Respondent has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating any of those marks.
• The Complainant has never noticed the Respondent using a trademark or service mark identical or similar to the MERCK mark by which it may have come to be known.
• The Respondent has never used the Disputed Domain Name in connection with a bona fide offering of goods or services and the Disputed Domain Name has been inactive since registration. The Respondent is not making a fair use of the Disputed Domain Name.
3. Registered and Used in Bad Faith
The Complainant contends, inter alia, as follows:
• The Complainant’s MERCK name and mark are well known around the world and therefore it is likely that the Respondent was aware of the Complainant’s MERCK name and mark at the time of registration of the Disputed Domain Name;
• Respondent has failed to respond to any of the Complainant’s correspondence in which Complainant informed Respondent of Complainant’s rights in the MERCK mark and stated that Respondent’s use and registration of the Disputed Domain Name violated such rights in the mark.;
• In all probability the public would expect a web presence of the Complainant or Merck & Co., Inc at the Disputed Domain Name. There is no obvious reason for the Respondent’s registration of the Disputed Domain Name other than abuse of the Complainant’s MERCK mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
This element of the Policy requires the Complainant to prove that (a) it has rights in a trademark or service mark, and (b) the Disputed Domain Name is identical to or confusingly similar to such trademark or service mark.
It is clear that the Complainant has rights in the MERCK mark. Although not identical, the Disputed Domain Name is confusingly similar to this mark. The Disputed Domain Name incorporates the Complainant’s distinctive mark in its entirety at the beginning of the domain name and the addition of the generic and non-distinctive word "online" does not distinguish the domain name from the trademark.
The Panel finds that the Complainant has established this element of the Policy.
B. Rights or Legitimate Interests
In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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 Respondent has not replied to the Complainant’s contentions and on the evidence there is nothing to suggest that any of the circumstances set out above apply in this case. The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The Respondent has failed to provide an explanation as to why it registered the Disputed Domain Name incorporating the Complainant’s distinctive MERCK mark. It is clear that the MERCK name and mark are well known around the world and certainly in the United States where the Respondent appears to be based. Therefore, and in the absence of any evidence to the contrary, the Panel finds on the balance of probabilities that the Respondent was aware of the Complainant’s mark at the time of registration of the Disputed Domain Name.
Although the Respondent does not appear to have ever used the Disputed Domain Name to resolve to an active website since its registration in January 2000, in this Panel’s view any attempt to actively use the Disputed Domain Name would create a likelihood of confusion amongst Internet users as to the source, sponsorship, affiliation or endorsement of such website. This is particularly so as the Disputed Domain Name (excluding the .com suffix) comprises only the Complainant’s mark and the generic word "online".
As noted by the Panel in Telstra Corporation Limited v Nuclear Marshmallows
WIPO Case No. D2000-0003 and followed
by Panels (including this one) in subsequent UDRP decisions, passive holding
of a domain name can in certain circumstances satisfy the requirement of paragraph
4(a)(iii) that the domain name "is being used in bad faith" by the
Respondent. This Panel finds that the registration and passive holding of the
Disputed Domain Name in the circumstances set out above amounts to registration
and use by the Respondent of the Disputed Domain Name in bad faith.
This element of the Policy is also established. The Complaint succeeds.
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 be transferred to the Complainant.
Date: July 9, 2003