WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck KGaA v. Virginia Cross

Case No. D2013-1294

1. The Parties

Complainant is Merck KGaA of Darmstadt, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.

Respondent is Virginia Cross of Kemah, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <merckgroup.asia> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2013. On July 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on July 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 14, 2013.

The Center appointed Ross Carson as the sole panelist in this matter on August 19, 2013. 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

Complainant is one of the world’s largest pharmaceutical companies employing approximately 40,000 people in 67 countries around the world. In fiscal year 2012 Complainant saw total revenues of over EUR 11 billion. Complainant owns over 500 registered trademarks for the mark MERCK in 171 countries, and has used the Merck name in connection with its business for well over a hundred years. Complainant also has a strong presence on the Internet. It owns vast domain name registrations for or containing MERCK mark in the generic Top Level Domains (gTLD) and country code Top Level Domains (ccTLD) spaces, with its primary website located at “www.merckgroup.com”.

Respondent registered the disputed domain name on March 1, 2012 and is currently using it in connection with a parking website which provides links to a variety of topics, including science and technology “news”.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant is the owner of hundreds of registered trademarks located in over one hundred countries throughout the world for the trademark MERCK.

Complainant submits that the disputed domain name <merckgroup.asia> is confusingly similar to Complainant’s MERCK trademarks.

Complainant contends that the test for confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products or services for which the disputed domain name is used or other marketing and use factors. See, F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323.

Complainant submits that it is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. The distinctive portion of the disputed domain name is thus the textual string to the left of the gTLD designator.

Complainant further submits that in this instance, the textual string of the disputed domain name is comprised of Complainant’s MERCK trademark in conjunction with the dictionary term “group”. It has been long-established under the UDRP that the addition of generic or dictionary terms to a Complainant’s trademark will be insufficient to avoid confusing similarity for purposes the Policy. See, eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307 and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.

Complainant contends that this is particularly so in the present case, where Complainant uses the term “Merck Group” to refer to its collective organization inclusive of its subsidiaries and where Complainant’s primary website is located at “www.merckgroup.com”. It has long been held that where the generic or dictionary term appended to a complainant’s trademark suggests a connection with Complainant’s business, the resultant domain name may heighten the risk of consumer confusion. See, Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Sanofi-Aventis v. Ambien-meds.com, WIPO Case No. D2006-0859; and ACCOR v. For Sale, WIPO Case No. D2003-1011.

A.2. No Rights or Legitimate Interests in Respect of the Disputed Domain Name

Complainant states that it has not licensed or otherwise permitted Respondent to use its trademark and has not permitted Respondent to register or use any domain name incorporating its MERCK trademark. Respondent has no business or other relationship with Complainant.

Complainant submits that the textual string “merckgroup” constitutes neither a dictionary word nor a generic term. There is similarly no dictionary or generic meaning of the term “merck” other than as the Complainant’s widely-known trademark.

Complainant submits that there is no evidence that Respondent has ever used the disputed domain name, nor made any demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services.

Complainant further submits that Respondent uses the disputed domain name for a parking webpage which displays sponsored links to third-party websites. Many of these sponsored links are related to goods or services in similar fields to those in which Complainant operates. Respondent’s website is thus used to earn pay-per-click-revenue by misdirecting Internet users to third parties’ websites and thereby capitalizing on Complainant’s trademarks. Such use is neither a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See, Ford Motor Company v. Domain Administrator, WIPO Case No. D2008-1856 and Intesa Sanpaolo S.p.A., v. Shawn Chiu Wai, WIPO Case No. D2010-0946.

Complainant further submits that Respondent’s actions clearly represent an instance of cybersquatting. The disputed domain name is confusingly similar to Complainant’s primary website (“www.merckgroup.com”), and Respondent was obviously intending to capitalize on this similarity by diverting Internet users who unintentionally mistype Complainant’s domain name. Respondent hopes to commercially benefit from such misdirected traffic through its pay-per-click links. Moreover, Complainant conducts substantial business throughout Asia, including in China, Japan, Singapore and Thailand. Respondent’s website was clearly selected to attract Internet users searching for Complainant’s activities within the Asia-Pacific region.

Complainant states that there is no evidence to suggest that Respondent trades under the name “merckgroup”, or is commonly known by said disputed domain name or the name “merckgroup”. The Whols records instead indicate that Respondent is an individual named “Virginia Cross”, and there is no information available on the parking website active at the disputed domain name to suggest otherwise.

A.3. Registration in Bad Faith

Complainant states that it is internationally well-known in the pharmaceuticals field. Complainant’s MERCK trademark has been registered and used in commerce for over one hundred years, throughout which time Complainant has conducted substantial business on a global scale, including within Asia. Therefore, the trademark MERCK is obviously and clearly connected with Complainant and it is inconceivable that Respondent registered the disputed domain name unaware of Complainant’s rights in its MERCK trademark. The fact that the links displayed on the webpage associated with the disputed domain name have included inter alia “Science News Current Events”, “Science and Technology News” and “Science News and Videos” further indicate that Respondent had Complainant in mind when registering the disputed domain name in March of 2012.

A.4. Use in Bad Faith

Complainant submits that Respondent’s use of the disputed domain name constitutes bad faith use under paragraph 4(a)(iii) of the Policy.

Complainant states that printouts of Respondent’s website at “www.merckgroup.asia” show that the disputed domain name directs Internet users to a parking website that provides links to third party websites. By using the website for sponsored links Respondent is clearly attempting to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant’s Asia-specific websites. The use and exploitation of trademarks to obtain click-through revenue from the diversion of Internet users has in many decisions been found to be indicative of bad faith under paragraph 4(b)(iv) of the Policy. See, Gowrings Mobility Group Limited v. Cyber Domain Services Pvt. Ltd. / PrivacyProtectorg, WIPO Case No. D2010-0706 and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.

Complainant submits that the elements expressly mentioned in paragraph 4(b) of the Policy are non-exhaustive, previous UDRP panels have held a number of additional elements to demonstrate bad faith on the part of a respondent.

Complainant further submits that Respondent’s registration of the disputed domain name which is confusingly similar to Complainant’s well-known trademark and its products will likely result in significant disruption to Complainant’s business and damage to the integrity of Complainant’s trademark. Internet users searching for information regarding Complainant or its products may mistakenly believe the disputed domain name to be held by Complainant, leading to consumer confusion or frustration. See, Aktiebolaget Electrolux v. Andrew Scherer, WIPO Case No. D2010-2024; Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Complainant submits that potential customers will likely believe that the disputed domain name is affiliated with Complainant. Given the widespread use of the Complainant’s MERCK trademark and name and the Respondent’s lack of association with Complainant, Respondent’s registration and use of the disputed domain name indicates opportunistic bad faith. See, F. Hoffmann-La Roche AG v. Contactprivacy. com / Mike Kazaros, WIPO Case No. D2010-2212 and America Online Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The fact that Respondent did not submit a formal Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a formal Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant is the owner of trademark registrations for the trademark MERCK registered in over one hundred countries throughout the world. The trademark MERCK has been in use for over one hundred years and is a well-known trademark throughout the world in association with research, production and distribution of pharmaceuticals.

The disputed domain name is comprised of Complainant’s trademark MERCK, the descriptive term “group” and the gTLD “.asia”. The descriptive term “group” does not distinguish the disputed domain name from Complainant’s trademark MERCK but contrarily suggests that the registrant of the disputed domain name is part of Complainant’s corporate group. The use of the gTLD “.asia” furthers the misleading suggestion that the disputed domain name belongs to Complainant by falsely associating the disputed domain name with Asia where Complainant carries on business.

This is particularly so in the present case, as Complainant uses the term “Merck Group” to refer to its collective organization inclusive of its subsidiaries and where Complainant’s primary website is located at “www.merckgroup.com”. It has long been held that where the generic or dictionary term appended to a complainant’s trademark suggests a connection with complainant’s business, the resultant domain name may heighten the risk of consumer confusion. See, Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Sanofi-Aventis v. Ambien-meds.com, WIPO Case No. D2006-0859; and ACCOR v For Sale, WIPO Case No. D2003-1011.

The inclusion of the gTLD “.asia” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Respondent’s use of the descriptive term “group”; and the (gTLD) “.asia” does not sufficiently distinguish the disputed domain name from Complainant’s registered trademark MERCK.

The Panel finds that Complainant has established rights in the trademark MERCK and the disputed domain name <merckgroup.asia> is confusingly similar to Complainant’s registered trademark MERCK.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name <merckgroup.asia>.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademark MERCK. Complainant has not permitted Respondent to register or use any domain name incorporating its MERCK trademark. Respondent has no business or other relationship with Complainant.

Complainant has been using its MERCK trademark for over 100 years in association with pharmaceuticals. Respondent appears to have registered or acquired the disputed domain name on March 1, 2012.

There is no evidence that Respondent has ever been known by or used the trademark MERCK in association with its own goods or services. Respondent has used the disputed domain name in association with a website that resolves to a webpageincorporating links to a variety of topics, including science and technology “news”. In addition the website includes links to a wide range of products and services having no connection to Complainant or reference to any goods or services offered by Respondent.

Previous UDRP panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See, Drexel University v. David Brouda, WIPO Case No. D2001-0067.

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith.

C.1. Registered in Bad Faith

In this Panel’s view, Respondent was aware of Complainant’s rights in its trademark MERCK at the time of registration of the disputed domain name on March 1, 2012. Complainant is internationally well-known in the pharmaceutical field. Complainant’s MERCK trademark has been registered and used in commerce in association with research, production and sale of pharmaceuticals for over one hundred years on a global scale, including Asia. Complainant uses the term “Merck Group” to refer to its collective organization inclusive of its subsidiaries and Complainant’s primary website is located at “www.merckgroup.com”. Respondent’s use of the descriptive term “group” does not distinguish the disputed domain name from Complainant’s trademark MERCK but contrarily suggests that the owner of the disputed domain name is part of Complainant’s corporate group. The use of the gTLD “.asia” furthers the misleading suggestion that the disputed domain name belongs to Complainant by falsely associating the disputed domain name with Asia where Complainant carries on business. The fact that the links displayed on Respondent’s webpage associated with the disputed domain name have included inter alia “Science News Current Events”, “Science and Technology News” and “Science News and Videos” further indicate that Respondent had Complainant in mind when registering the disputed domain name in March of 2012.

In view of the above findings, the Panel concludes that Respondent registered the disputed domain name in bad faith.

C.2. Domain Name Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The disputed domain name which is confusingly similar to Complainant’s MERCK trademark resolves to a webpage incorporating links to subjects such as: inter alia, “Science News Current Events”, “Science and Technology News” and “Science News and Videos” areas which may incorporate Complainant’s goods and services as well as links to goods and services advertising a wide range of products and services having no connection to Complainants or reference to any goods or services offered by Respondent. Respondent is using the disputed domain name to attract Internet users to its website based on the goodwill associated with Complainant’s trademark to obtain pay-per-click income.

The Panel finds that Complainant has proven, on a balance of probabilities, that Respondent uses the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that the Complaint satisfies the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <merckgroup.asia>, be transferred to Complainant.

Ross Carson
Sole Panelist
Date: August 28, 2013