WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck KGaA v. Private Registration Service, NETNIC Private Registration Service
Case No. D2006-1433
1. The Parties
The Complainant is Merck KGaA of Darmstadt, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Private Registration Service, NETNIC Private Registration Service, of Prince Edward Island, Canada.
2. The Domain Names and Registrar
The disputed domain names <merck-serono.info> and <merckserono.info> are registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2006. On November 13, 2006 and November 21, 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain names at issue. On November 14, 2006 and November 22, 2006, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.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 November 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2007.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 15, 2007. 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.
On January 24, 2007, the Panel issued an Administrative Panel Order, requesting the Complainant to provide the Panel with a signed letter from an authorized representative of the trademark holder for SERONO, consenting to the remedy requested by the Complainant, i.e. that the disputed domain names be transferred to the Complainant.
On January 29, 2007, the Center received a signed declaration of consent from the trademark holders of SERONO, consenting to the Complainant requesting the remedy.
4. Factual Background
The Complainant is the holder of, amongst others, the following word marks, registered with the German Intellectual Property Office:
- MERCK, registered August 23, 1956, registration number 694178, most recently renewed on May 1, 2005;
- MERCK, registered September 24, 1900, registration number 45659, most recently renewed on July 19, 1999;
- MERCK SERONO, registered November 1, 2006, registration number 30659135.9;
- MERCK-SERONO, registered November 1, 2006, registration number 30659135.9.
The Complainant owns the domain name <merck.de>.
On September 21, 2006, the Complainant published a news release, announcing the acquisition of Serono SA. On the same day, the Respondent registered the disputed domain names.
5. Parties’ Contentions
Rights in MERCK and SERONO
The Complainant contends that its trademarks are widely known throughout the world. The Complainant’s company dates back to 1850 and the Complainant owns over 500 registered trademarks in the name MERCK in 171 countries. It also owns 121 domain name registrations for MERCK and a further 512 containing the name MERCK.
The Complainant also contends that it has acquired Serono SA on September 21, 2006.
The Complainant further contends that it owns the registered trademarks MERCK SERONO and MERCK-SERONO.
Identical or Confusingly Similar
The Complainant contends that the disputed domain names are confusingly similar to the MERCK trademarks because the disputed domain names wholly incorporate the MERCK trademarks.
The Complainant also contends that the disputed domain names are identical to the MERCK SERONO and MERCK-SERONO trademarks.
The Complainant further contends that Internet users who know of Complainant’s merger with Serono SA are bound to associate the disputed domain names with the Complainant. The same applies to Internet users who have no knowledge of Complainant’s merger with Serono SA, given the name and fame of Complainant’s trademark MERCK.
Respondent’s Rights or Legitimate Interests
The Complainant states it has not licensed, nor otherwise authorized the Respondent to use the MERCK mark, the SERONO mark, or any other trademarks of the Complainant.
The Complainant further contends that the Respondent is not using or preparing to use the disputed domain names in connection with a bona fide offering of goods or services, nor in connection with a legitimate noncommercial or fair use.
Registration and Use in Bad Faith
The Complainant contends that the Respondent must have been aware of the MERCK and SERONO trademarks, because both marks are famous throughout the world, and because the Respondent registered the disputed domain names on the very day that the news of Complainant’s merger with Serono AS was first published (September 21, 2006).
The Complainant further contends that Respondent’s registration of the disputed domain names is preventing the Complainant from reflecting its marks MERCK SERONO, MERCK-SERONO, MERCK and SERONO in a corresponding domain and that this is disrupting its business. According to the Complainant, legitimate use of the disputed domain names by the Respondent is inconceivable.
The fact that the Respondent is not actively using the disputed domain names does not alter the aforementioned.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the MERCK trademarks and in the MERCK SERONO and MERCK-SERONO trademarks. The Panel finds that the disputed domain names are identical to the MERCK SERONO and MERCK-SERONO trademarks.
B. Rights or Legitimate Interests
The Complainant has not licensed its trademarks to the Respondent, nor has it consented to the Respondent’s use of its trademarks as part of the domain names and there is no evidence of any other rights or legitimate interests of the Respondent.
Therefore, the Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Although there are no active websites accessible via the disputed domain names, the consensus amongst WIPO UDRP panelists is that ‘passive holding’ shall not automatically lead to the conclusion that ‘use in bad faith’ cannot be found. Instead, a panel should judge the matter in the light of all the circumstances of the case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 and Audi AG v Hans Wolf, WIPO Case No. D2001-0148).
The Respondent registered the disputed domain names on the very day of the Complainant’s public announcement of its acquisition of Serono SA. Therefore, it is likely to a degree of certainty that the Respondent was aware of the Complainant’s merger with Serono SA. The Panel finds use of the disputed domain names in good faith inconceivable, in view of the trademark rights of the Complainant.
By registering the disputed domain names, the Respondent disrupts the business of the Complainant and prevents it to reflect its trademark in the disputed domain names. The Panel notes that the Respondent (under various names) has been involved in other domain name disputes, including Julius Bear Holding Ltd. v NETNIC CORPORTATION, Hong Kong International Arbitration Center Case No. DCN-0500031 and Norisbank Aktiengesellschaft v. MSN, WIPO Case No. D2000-1307.
These cases evidence that the Respondent is a ‘serial (and unsuccessful) WIPO Respondent’. Therefore, the Respondent has engaged in a pattern of domain name registrations that consist of the trademarks of others.
Under these circumstances, the Panel finds that the disputed domain names were registered and are being used in bad faith.
The Panel notes that the holder of the SERONO trademarks has consented to the Complainant’s requested remedy of transfer of the disputed domain names.
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, disputed domain names be transferred to the Complainant.
Wolter Wefers Bettink
Dated: January 31, 2007