WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck KGaA v. Sunmeet Jolly
Case No. D2004-0195
1. The Parties
The Complainant is Merck KGaA, of Darmstadt, Germany, represented by Jonas Kölle, Germany.
The Respondent is Sunmeet Jolly, of Mountain view, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <merckindia.com> is registered with Go Daddy Software, Inc.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 16, 2004, and in hardcopy on March 17, 2004. An Acknowledgement of Receipt was sent by the Center to the Complainant, dated March 16, 2004.
On March 16, 2004, a Request for Registrar Verification was transmitted to the Registrar. On March 16, 2004, Go Daddy Software, Inc. transmitted by e-mail 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, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999, (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
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 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2004. The Response was filed with the Center on April 10, 2004. Thus, the Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for the submission of the Response. Accordingly, the Center notified the Respondent's default on April 13, 2004.
The Center appointed Jonas Gulliksson as the sole Panelist in this matter on April 23, 2004. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. 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.
In accordance with the Rules and the Supplemental Rules the Administrative Panel will decide in its sole discretion whether to consider the late filed Response. In accordance with i.a. The Board of Governors of the University of Alberta v. Michael Katz d.b.a. Domain Names for Sale, WIPO Case No. D2000-0378, Voigtländer GmbH v. John Voigtlander, WIPO Case No. D2003-0095 and BMW AG v. Loophole, WIPO Case No. D2000-1156 the Panel has decided to consider the Response, although the Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding.
The Administrative Panel shall therefore issue its decision based on the Complaint, the Response, the Policy, the Rules, and the Supplemental Rules.
4. Factual Background
The Complainant and its Registered Trademarks
The Complainant is the exclusive owner of over 500 trademark registrations in 171 countries for the trademark MERCK®, including a Community trademark and an International Registration for MERCK®. The Complainant attaches a list of current trademark applications and registrations for the trademark MERCK® as Annex 4. The Complainant is the owner of the Indian trademarks listed in Annex 5 to this Complaint.
The trademark MERCK® is registered in international classes 1, 2, 3, 5, 9, 10, 16, 29, 30, 35 and 42. The trademark MERCK® is used as the Complainant's company name in the business areas of pharmaceuticals, chemicals and laboratory distribution for the full range of products.
The Internet address of Merck & Co. is "www.merck.com" whereas you find Merck KGaA at "www.merck.de".
The Complainant further owns 265 domain name registrations containing its trademark MERCK (Annex 8 shows a list of them). In India the Complainant's subsidiary uses the domain name <www.merck.co.in>.
The contested domain name <merckindia.com> was registered on December 29, 2003.
5. Parties' Contentions
The Complainant's company name MERCK was first associated with pharmaceutical goods in 1668. The Complainant uses MERCK as its company name since 1850, when the company E. Merck was founded. The trademark MERCK® has acquired notoriety and fame throughout the world. Annex 3 includes an Affidavit of the Complainant showing evidence for such notoriety and fame throughout the world.
The Complainant as well as the American Company Merck & Co., Inc uses the name MERCK for the following historical reason:
In 1889, Georg Merck, a grandson of Heinrich Emanuel Merck, who founded company E. Merck took over the office in New York and established Merck & Co. After World War I, Merck lost many of its foreign affiliates, among them Merck & Co. in the USA. Merck & Co. became an independent American company and in the meantime it is one of the largest pharmaceutical companies in the world.
Both companies agreed that the name "Merck" may be exclusively used in the US and Canada by Merck & Co. and in Europe and the rest of the world by Merck KGaA (the former E. Merck). For that reason Merck & Co. sells its products with the label Merck Sharp & Dohme (in Germany MSD Sharp & Dohme GmbH) in the rest of the world. The Complainant's American branches are named EMD.
In India the Complainant established its first Asian Subsidiary in 1967. The Complainant established its own manufacturing plant at Taloja near Mumbai, followed by another plant at Usgaon, Goa. Merck Limited, India, went on to become the first company to go public in the Complainant's Group.
The Complainant's Group now holds 51% of the share-holding in Merck India, while the remaining 49% are traded on the Mumbai and Delhi stock exchanges, and also the National Stock Exchange (NSE). Today, we have a community of over 30,000 share-holders.
The name MERCK is well-known.
(1) The Domain Name is Identical or Confusingly Similar to a Trademark in which Complainant has Rights
The domain name <merckindia.com> is partly identical to the Complainant's trademark and company name MERCK®, because the relevant part of the domain name "merckindia" is textual partly identical to the company name and trademark MERCK®. The suffix "india" provides a local reference to the territory of India. The Complainant has registered a number of domain names referring to a specific country or city like <merckkorea.com>, <merckchina.com>, <merckegypt.com> or <merckdarmstadt.com>.
The Internet users expect the Complainant to be the owner of the domain name <merckindia.com>.
The term "india" is not inventive enough to differentiate the domain name <merckindia.com> from the Complainant's trademarks MERCK®. As a geographical connecting factor to the country India the term "india" has to be disregarded when evaluating the similarity between the Complainant's trademark MERCK® and the domain name registration for <merckindia.com>.
Reference is made to the WIPO Decisions in Dell Computer Corporation v. Diabetes Education Long Life, WIPO Case No. D2002-0363 (Trademark); Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507 and Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601.
Given that the trademark "merck" is distinctive the inclusion of the suffix "india" with the word "merck" in the domain name makes the compound phrase "merckindia" confusingly similar to the Complainant's trademark MERCK®.
(2) Respondent has No Rights or Legitimate Interests in the <merckindia.com> Domain Name
None of the circumstances listed under 4 (c) of the Policy are given. The Respondent has no right or legitimate interest in respect of the domain name.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply 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 monitoring its trademark MERCK® for decades. The Complainant has taken notice of every infringement of the trademark MERCK® worldwide. The Complainant found no evidence indicating that the Respondent is using a trademark or service mark identical or similar to MERCK®. Therefore the Respondent has not been commonly known by the designation MERCK®.
In an e-mail message to the Complainant of February 29, 2004, attached as Annex 6 to this Complaint Respondent claims that his purpose of registering the domain name <merckindia.com> is a future business of selling cars in India via Internet.
Nevertheless the Respondent has never used the domain name <merckindia.com> in connection with a bona fide offering goods or services. The Respondent does not use the domain name <merckindia.com> so far. According to Complainant's information the domain name <merckindia.com> has been inactive since its registration on December 29, 2003. Simple stocking of the domain name by the Respondent does not create any right or legitimate interests in the domain name. Reference is made to the Audi AG v. Hans Wolf, WIPO Case No. D2001-0148.
For the same reasons as mentioned above the Respondent is not making any fair use of said domain name. The Respondent never used the domain name <merckindia.com>.
(3) Respondent Registered and is Using the <merckindia.com> Domain in Bad Faith
The domain name <merckindia.com> has been registered and used in bad faith by the Respondent. Besides the fact that the registrations of the trademark MERCK® are a constructive notice of the Complainant's claim of ownership of that trademark and the fact that by registering <merckindia.com> the Respondent has precluded the Complainant from using its trademark MERCK® in a corresponding domain name Respondent acted in bad faith for the following reasons:
The Complainant's company name and trademark MERCK® are well-known all over the world. As Annex 3 shows trademark MERCK® has acquired worldwide notoriety and fame.
Therefore it is likely that Respondent had been aware of Complainant's company name and trademark MERCK® at the time of registration of the domain name. Complainant and Merck & Co. share the worldwide right to use the trademark MERCK®. In the United States Merck & Co. is entitled to use the name MERCK®. In addition to the trademark registrations listed in Annex 4 Merck & Co. is the owner of various trademark registrations in the United States. The name MERCK® is well-known in the United States, too. It cannot have escaped Respondent's attention that the name MERCK® is used as Complainant's company name or trademark for quite a long time as Annex 3 shows.
On February 10, 2004, Complainant sent a cease and desist letter including a request for assignment of the domain name <merckindia.com> to the Respondent (Annex 7).
In his answer of February 29, 2004, (Annex 6) Respondent proposes two solutions to solve the conflict: He offers the Complainant to license the rights for the domain name for a fee of USD 125 per month or to buy the domain name for a sum of USD 4900.
This behavior of the Respondent is enough evidence for the registration of the domain name <merckindia.com> in bad faith, since it shows the intention that Respondent registered the domain name only for the purpose of selling or renting the domain name to the Complainant who is owner of the trademark MERCK®.
In all probability the public would expect a web presence of the Complainant or Merck & Co. at the domain name <merckindia.com>. There is no other obvious reason for the Respondent's registration of the domain name <merckindia.com> than the abuse of the well-known status of the Complainant's trademark MERCK®.
Mentioned arguments and the notoriety and fame of trademark MERCK® constitute enough evidence for Respondents registration and use of <merckindia.com> in bad faith.
The Respondent has contested the allegations of the Complainant and stated the following.
The Respondent states that it had no knowledge of the existence of Merck and its business until it received the letter from the Complainant and researched further.
Furthermore, the Respondent states that it is true that the Respondent has registered the domain name <merckindia.com> but with absolutely no intention to misdirect traffic from the Complainant's website "www.merck.com". According to the Respondent the domain name is not deceptively similar to <merck.com>. Therefore, the Respondent claims that there is absolutely no way any Internet user would reach the potential website of the Respondent by accidentally typing or missing a few letters.
Furthermore, the Respondent claims that its purpose of registering the domain name is to have a nomenclature for a business idea for starting an India based web business dealing in cars. It has come to the great surprise of the Respondent that the Complainant is claiming the rights to the domain name.
The Respondent claims that it is the legal owner of the domain name and that it has invested valuable time, money and efforts in the matter (without a penny of gain so far) and that Merck's interest in claiming the rights to the domain name will cost the Respondent not only its investments but also a lot of distress and frustration on losing a potential future business idea.
Furthermore, the Respondent states that the site has not yet been launched. According to the Respondent three months are not enough to prove that the Respondent does not have a legitimate business interest in this nomenclature.
Regarding financial benefits the Respondent states that it did not itself approach the Complainant with the offer to license/buy the domain name. It was the Complainant who showed interest in the domain name by sending a letter to the Respondent. Therefore, the Respondent cannot understand how its conduct can be called "bad faith". The Respondent claims that even if the Complainant does not offer the Respondent anything the Respondent will still be happy to carry the domain name and a full fledged website will be ready by the end of this year.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
The Complainant has shown that it is the proprietor of hundreds of trademark registrations throughout the world for the trademark MERCK, including a Community trademark and an International trademark registration.
It is the Panel's opinion that the domain name <merckindia.com> is confusingly similar to the trademark MERCK in which the Complainant has rights and to which the generic top-level domain ".com" and the geographically descriptive term "india" have been added. In accordance with the contentions of the Complainant the Panel finds that the term "india" as a geographical connecting factor to the country India has to be disregarded when evaluating the similarity between the Complainant's trademark MERCK and the domain name <merckindia.com>. As has been held in several previous WIPO cases, i.a. Dell Computer Corporation v. Diabetes Education Long Life, WIPO Case No. D2002-0363 (Trademark), Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507 and Volvo Trademark Holding AB v. SC-RAD Inc, WIPO Case No. D2003-0601 to which the Complainant refers, the Panel finds that the mere adding of a geographical term to someone else's trademark does not prevent the domain name from being confusingly similar to the trademark in question.
In view of the above, the Panel finds that the domain name at issue is confusingly similar to a trademark in which the Complainant has rights.
Furthermore, it is the Panel's opinion that the Respondent has failed to prove that he has any prior rights or legitimate interests in the domain name at issue. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply a domain name incorporating any of those marks. The Respondent has not been commonly known by the domain name. Nor has the Respondent used the domain name <merckindia.com> in connection with a bona fide offering goods or services. Thus, none of the circumstances listed under 4 (c) of the Policy are at hand.
The prerequisites in the Policy, Paragraph 4(a)(i) and (ii) are therefore fulfilled.
Paragraph 4(a)(iii) of the Policy further provides registration and use of the domain name in bad faith. The circumstances mentioned in Paragraph 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are examples of facts, which constitute evidence of the registration and use of a domain name in bad faith.
The Respondent has not established a website corresponding to the domain name at issue. As has been stated in previous WIPO cases, e.g. Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of a domain name may constitute use of the domain name in bad faith depending on the circumstances of the case.
Although the Respondent claims that it had no knowledge of the existence of Merck and its business until it received the Complainant's letter the Panel finds it unlikely that the Respondent would have been unaware of the Complainant's trademark when registering the domain name, in view of the fame of the Complainant's trademark.
Furthermore, upon being contacted by the Complainant the Respondent offered the Complainant either to license the rights in the domain name for a fee of USD 125 per month or to buy the domain name for a sum of USD 4900. It should be noted that the mere fact that the Respondent, when approached by the Complainant, showed a willingness to sell the domain name does not in itself constitute bad faith. However, the fact that the Respondent offered to license/sell the domain name for amounts, which must be considered as valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name, does indeed indicate bad faith on behalf of the Respondent.
Therefore, it is the Panel's opinion that the conduct of the Respondent constitutes registration and use of the contested domain name in bad faith in accordance with Paragraph 4(b)(i) of the Policy.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(i) of the Policy are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts, the Panel decides that the domain name registered by the Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <merckindia.com> be transferred to the Complainant.
Dated: May 3, 2004