WIPO Arbitration and Mediation Center


Merck KGaA v. Domains by Proxy Inc. / “-”

Case No. D2009-0511

1. The Parties

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

The Respondent is Domains by Proxy Inc. /“-” of Hamburg, Germany.

2. The Domain Name(s) and Registrar(s)

The disputed domain names <femibion.com> and <femibion.net> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2009. On April 21, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On April 22, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 27, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 6, 2009. The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on May 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 29, 2009.

The Center appointed Thomas Hoeren as the sole panelist in this matter on June 17, 2009. 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

The complainant is a big European pharmaceutical company doing business in 59 countries. One of the products of the Complainant is FEMIBON, a pregnancy food supplement. The product is available in 11 countries, including Germany, France, Sweden and India. It is sold since 1994. The complainant has registered the trademark FEMIBION in mostly all countries around the world, including Northern America and Germany where the Respondent is located. Among others, the Complainant has registered the trademark FEMIBION with International Registration No. 992201 (Date of priority November 14, 2008) and No. 829073 (Priority: May 19, 2004) for the United States. Furthermore, the trademark FEMIBION is registered at the German Patent and Trademark Office with No. 302008012988.3 (Priority: February 28, 2008) and No. 2095879 (Priority: June 30, 1994).

The identity of the Respondent is not known. The data given by the Registrar only mention a person living in Hamburg as an administrative contact.

5. Parties' Contentions

A. Complainant

The Complainant stated that the disputed domain names are identical or at least confusingly similar to the trademarks FEMBION registered for the Complainant; the Respondent has no rights or legitimate interests in respect of the domain names; and that the Respondent has registered and is using the disputed domain names in bad faith as he conducts no legitimate commercial or noncommercial business activity. He registered the domain names knowing that the highly distinctive trademark FEMIBION of the Complainant is long established and well-known. The passive holding of the domain names equates with a bad faith use of a domain name especially because the Respondent has taken active steps to conceal its true identity.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable.”

Paragraph 4(a) of the Policy states that, for the Complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

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

(iii) that the domain name has been registered and is used in bad faith

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks since they fully incorporate Complainant's trademarks adding only the necessary generic top level domains of “.net” and “.org”, which do not add the required level of distinctiveness in regards to this element.

B. Rights or Legitimate Interests

The Respondent of the disputed domain names has not filed any Response to the Complaint filed. Consequently, the Respondent has not alleged any facts or elements to providing a showing of prior rights or legitimate interests of the said domain names. As such, the Respondent has failed to rebut Complainant's prima facie showing of Respondent's lack of rights or legitimate interests, including, inter alia, that the Complainant does not appear to have authorized the Respondent to use its trademarks and in particular to register a domain name composed of the Complainant's trademarks.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith. Here, although there has been no active use of the disputed domain names, other than the passive holding of the web site, the circumstances present here are sufficient to establish bad faith registration and use. Those circumstances include the full incorporation of the Complainant's trademark, that does not correspond to a legitimate use by the Respondent and using the name of an unidentifiable business entity for its WhoIs details. The Respondent uses an unidentifiable name and avoids to clarify his real identity even during the UDRP proceedings. This strange behavior amounts to bad faith (See, 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110 (finding bad faith use and registration where the Domain Name “is an unidentified business name of an unidentified business entity”); Salomon Smith Barney Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668 (finding bad faith use and registration where Respondent has operated “under a name that is not a registered business name and by actively provided false contact details to NSI, and on Respondent's passive use of the domain name”).

7. Decision

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 <femibion.com> and <femibion.net> have to be transferred to the Complainant.

Thomas Hoeren
Sole Panelist

Dated: 22 June, 2009