WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck KGaA v. Paul Rostkowski
Case No. D2007-0482
1. The Parties
The Complainant is Merck KGaA, Darmstadt, Germany, represented by an Internal representative, Germany.
The Respondent is Paul Rostkowski, Hasbrouck Hts., New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <merckblog.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. As a refiled Complaint, applying the process laid down in Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490, the Center conducted a preliminary review to determine whether on a prima facie basis the Complainant appeared to have pleaded grounds which might justify a panel entertaining the refiled Complaint. Having made such a determination,on April 13, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On April 13, 2007, Register.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, 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 April 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2007. On April 30, 2007, the Respondent responded informally. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on May 8, 2007. In May 11, 2007, the Respondent made further informal submissions.
The Center appointed Alan L. Limbury as the sole panelist in this matter on May 18, 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.
4. Factual Background
This is a Refiled Complaint brought by the same Complainant against the same Respondent over the same domain name as in WIPO Case No. D2005-1017, in which relief was denied on February 17, 2006.
In that case the learned panelist found the disputed domain name to be confusingly similar to the Complainant’s trademark MERCK and that the Respondent has no rights or legitimate interest in the disputed domain name. Relief was denied because the Panel was of the opinion that “there is insufficient evidence to conclude that the disputed domain name was registered and is currently being used in bad faith, and nor does [the Panel] have enough information concerning the Respondent’s intentions to make such a finding”. The Respondent had submitted that the disputed domain name “was under consideration to be used as a repository of consumer input, both good and bad, regarding consumer experiences with the US product Vioxx, a Merck & Co. brand currently under fire”.
The disputed domain name was registered on May 2, 2005. The previous complaint was filed on September 27, 2005. At that time, the disputed domain name resolved to a Register.com holding page which contained sponsored links and stated:
“‘www.merckblog.com’ is coming soon to Register.com.”
At the time of filing the present Complaint, the disputed domain name remains linked to a holding page provided by Register.com, as it has done since registration.
5. Parties’ Contentions
The Complainant says the Refiled Complaint is based on the behavior of the Respondent since the decision of the previous Panel. As a result, the subsequent acts are in substance not the same as the acts relied on in the previous Complaint. Hence the Refiled Complaint is based on new evidence, which (a) could not have been obtained with reasonable diligence for use at trial, (b) probably has an important influence on the outcome of the case and (c) is credible.
In support of these contentions, the Complainant says that at the time of the previous decision there was no sufficient information about the Respondent’s intentions. The Panel decided in favour of the Respondent because there was insufficient evidence that the domain name was registered in bad faith and because there was not enough information about the intent of the Respondent concerning the registration.
The Complainant says the situation has become clearer through the action or rather the failure to act of the Respondent since the earlier decision. As a result, the evidence on which it now relies could not have been obtained with reasonable diligence for use at the time of the earlier decision.
The Complainant further says that, as nothing has happened towards a consumer experience website, it is more than likely that this was not the Respondent’s intent at the time of registration. This situation may have an important influence on the result of the case, since it shows that the Respondent acted in bad faith when he registered the domain name, a circumstance which may lead to the transfer of the domain name to the Complainant.
The Complainant says the evidence is credible because the Respondent’s claimed intention to ‘blog’ about Merck did not result in website content. The Complainant has checked the website’s content on a regular, monthly basis.
Turning to the substantive elements of the case it seeks to establish in order to secure the transfer to it of the disputed domain name, the Complainant contends that the domain name is confusingly similar to its MERCK trademark and that the Respondent has no rights or legitimate interest in the domain name. It notes that the previous panel found these contentions to have been established.
As to bad faith registration, the Complainant points out that the Respondent stated to the Center that his aim is to launch a portal for consumers on the website but nothing in this direction has happened. This leads to the assumption that this was not his primary intention at the time of registration. There is no evidence about what his real primary intention then was. Whether he intended to sell it or just wait and see what happens is irrelevant, since no legitimate purpose to use the domain name is apparent. Furthermore, the Respondent has made no attempt to fill the website with information.
The fact that the discussions about Vioxx become more and more out of date (although there are still some pending cases), contradicts the assumption that the primary purpose of the Respondent was the launch of a consumer platform. This also leads to a finding that the registration was not done in good faith.
As to use in bad faith, the Complainant says there is no active use of the domain name by the Respondent and notes that mere passive holding of a domain name has been held to constitute use in bad faith. That conclusion should be drawn here because:
(a) the Complainant’s company name and trademark MERCK are well-known all over the world. Therefore it is likely that Respondent was aware of them at the time of registration of the domain name;
(b) the Respondent has not shown evidence of his use of the domain name in good faith. Within the one year after the decision of the previous Panel, he took no action in relation to the domain name. This period of time seems to be sufficient to negate the professed intent of the Respondent to launch a consumer platform;
(c) the Respondent tried to sell the domain name to the Complainant through the following email from the Respondent:
Thank you for your email. The Merckblog domain name is for sale if you wish to buy it. I advise this would be the easiest course of action for you to follow. Let me know if you are interested and what you would be willing to pay.
Thank yo [sic] once again”; and
(d) no active or contemplated use of the domain name in good faith is plausible which would not abuse the reputation of the Complainant’s trademark. The launch of a blog for consumers cannot be accepted because the Respondent has taken no action in this direction.
The Complainant submits that having regard to all the facts of the case and to the behaviour of the Respondent, it can be said that the Respondent both registered and uses the domain name in bad faith.
The Respondent did not reply formally to the Complainant’s contentions.
6. Discussion and Findings
As in the case of Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490, the important preliminary issue which arises in this case is whether the Refiled Complaint can be entertained under the Policy.
The learned panelist in Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703, set out the proper approach to this issue as follows:
“It is not appropriate to refer to a particular legal system in order to resolve the present problem, i.e., whether an unsuccessful Complainant to this special procedure can file an identical Complaint once a first defended Complaint has been rejected. One must resort to the broad principle found in most common law jurisdictions that, once a party has been given a defended hearing in a Court and a decision rendered, then a case cannot be re-litigated unless either (a) the decision is overturned on appeal and [scil.or](b) limited grounds for rehearing or reconsideration by the first-instance court have been established. Such limited grounds are usually specified in Rules of Court and can include, for example: (a) serious misconduct on the part of a Judge, juror, witness or lawyer; (b) perjured evidence having been offered to the Court; (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial and (d) a breach of natural justice. Usually, before ordering a new trial, a Court would have to be satisfied that a miscarriage of justice had occurred.” …
“In most common law jurisdictions with which this Panelist is familiar, the discovery of new evidence which, with the exercise of due diligence, would not have been reasonably available at the time of the original hearing can, in some circumstances, provide a ground for a new trial. The principle as stated by the English Court of Appeal in Ladd v Marshall  3 All ER 745, 748 and the New Zealand Court of Appeal in Dragicevich v. Martinovich  NZLR 306, 308 is as follows:
‘… first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial: second, the evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive: third, the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, although it need not be incontrovertible.’”
“The incorporation of ‘further evidence’ as a ground for a reconsideration of an ICANN administrative procedure needs careful thought. Certainly, there would have to be solid evidence in support of the three criteria mentioned in the quotation.”
As is apparent from the Complainant’s submissions, it bases its case for reconsideration on the ‘discovery of new evidence’ ground and has prepared its Refiled Complaint with the considerations mentioned in Grove Broadcasting in mind.
The approach laid down in Grove Broadcasting was refined in Creo Products, in which the learned panelist drew an important distinction between:
(a) Refiled Complaints that concern the act which formed the basis of the original complaint, which should be accepted only in specific, relatively narrowly-defined, circumstances, of which examples are set out in the passage from Grove Broadcasting quoted above, including the discovery of new evidence; and
(b) Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint, which, subject to an important exception, should be treated as fresh complaints and considered de novo on the merits.
In relation to Refiled Complaints in the latter category, the learned panelist said:
“With a Refiled Complaint of this type, the concept of res judicata does not arise. Because the subsequent complaint concerns acts which occurred after the original decision, it is not an action upon which an adjudication has already taken place; the subsequent complaint is truly a new action under the Uniform Policy. It follows that, subject to one exception, the merits of a Refiled Complaint of this type should be determined in the same manner as any new complaint under the Uniform Policy. The exception is that the acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based (even if those previous acts would likely be included as part of the facts and arguments asserted in the new complaint). That is to say, the acts on which the Refiled Complaint is based need to be such as to mean that the Refiled Complaint is truly a new action under the Uniform Policy, not just an application for readjudication of the previous complaint. (When properly applied, this exception would preclude an unsuccessful complainant from lodging, in the hope that the subsequent panel will come to a different conclusion on the facts, a Refiled Complaint based on subsequent acts that are either a repetition of or substantially the same as the acts on which the previous complaint was based.)”
In Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2006-0596, it was held, following Creo Products and Grove Broadcasting, that in a case involving the same complainant, the same respondent and the identical domain name as to which a previous panel decision under the Policy has been rendered, in order for the complaint to be considered, a complainant must present facts that raise the possibility of a serious defect with respect to the prior proceeding or present some materially changed facts occurring subsequent to that proceeding which reasonably might alter the analysis of the Panel and thereby alter the outcome of the proceeding.
This Panel is not satisfied that in this case the mere passage of time for a year subsequent to the earlier decision raises the possibility of a serious defect with respect to the prior proceeding or is a materially changed fact occurring subsequent to that proceeding.
In Internet AG -v- SSL  DRS 1136, a decision under the Nominet UK Dispute Resolution Service Policy, the learned panelist set out a series of questions that need to be addressed in order to apply the principles of Grove Broadcasting and Creo Products. These are set out below, together with this Panel’s answers based on its consideration of this case:
(1) Are the Complainant, the Respondent and the domain name in issue the same as in the earlier case? Answer: yes.
(2) Does the substance of the Complaint relate to acts that occurred prior to or subsequent to the earlier decision? Answer: having closely considered the Complainant’s submissions, this Panel is of the view that this Refiled Complaint should properly be regarded as concerning conduct subsequent to the earlier decision, namely the Respondent’s continued failure to use the disputed domain name for the professed purpose of a consumer information site.
(3) If the substance of the Complaint relates to acts that occurred prior to the earlier decision, [are] there any grounds for the rehearing or reconsideration? These grounds being limited and exceptional, examples being (a) serious misconduct on the part of the [Panel], a witness or lawyer; (b) perjured evidence having been offered to the [Panel]; (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time of the earlier decision and (d) a breach of natural justice. Answer: inapplicable. The ‘newly discovered evidence’ ground applies only where the acts relied on occurred prior to the earlier decision.
(4) If the substance of the Complaint relates to acts that occurred subsequent to the earlier decision, acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based. Answer: the fatal difficulty for the Complainant here is that the Respondent’s conduct is, in substance, the same as the conduct on which the previous complaint was based. Nothing has happened in the meantime except that time has passed. Even assuming (without deciding) that inaction may be treated as action for this purpose, the factual position today is the same as when the previous Panel made its decision.
In Internet AG -v- SSL the act of the Respondent was a continuing one. A significant factor influencing the learned panelist to accept the Refiled Complaint as a new set of proceedings, based on the criteria set out in Creo Products, was that subsequent to the initial decision the Complainant had secured rights in a trademark that it did not have at the time of the earlier proceedings. No such changed circumstance is present here. There may well be cases in which the passage of time might be found materially to alter the factual situation as presented to the previous panel so as to bring the Refiled Complaint within the narrow confines justifying its consideration. However, this is not such a case.
It should be noted in passing that the Respondent’s offer to sell the disputed domain name to the Complainant was a circumstance considered by the previous panel.
For these reasons, the Panel finds that this Refiled Complaint is ineligible for consideration under the Policy.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Dated: June 1, 2007