WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck KGaA v. yan xiansheng
Case No. D2011-2161
1. The Parties
The Complainant is Merck KGaA of Darmstadt, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is yan xiansheng of Suzhou, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <mercktrading.com> is registered with 35 Technology Co., Ltd. (“the Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2011. On December 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 13, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date. On December 13, 2011, the Center received an email communication from the Respondent, of which the Center acknowledged receipt.
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 the Respondent of the Complaint, and the proceedings commenced on December 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the parties of the proceeding update on January 10, 2012.
The Center appointed C. K. Kwong as the sole panelist in this matter on February 1, 2012. 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 one of the world’s largest pharmaceutical companies and is the owner of numerous trademarks embodying or comprising the word “Merck” (“the MERCK Mark”). These registrations include, in particular, the following:
(a) German Registration No. DD45659 for the mark MERCK which was registered with effect from January 11, 1900 in respect of certain goods under classes 1, 2, 3, 4 and 5;
(b) International Registration No. 547719 for the mark MERCK which was registered with effect from January 9, 1990 covering various countries including Germany and China in respect of certain goods under classes 2, 9 and 10;
(c) Community Trademark Registration No. 000283986 for the mark MERCK which was registered with effect from April 1, 1996 in the European Community in respect of certain goods/services under classes including, inter alia, classes 1, 5, 9, 10 and 42;
(d) Community Trademark Registration No. 002371938 for the stylized mark MERCK which was registered with effect from September 14, 2001 covering the European Community in respect of certain goods/services including, inter alia, those under classes 1, 5, 9 and 42;
(e) Chinese Trademark Registration No. G547719 for the mark MERCK registered with effect from January 9, 1990 in China in respect of certain goods under classes 2, 9 and 10.
The uncontradicted evidence produced by the Complainant shows that the registrations of its aforesaid MERCK mark occurred well over 10 years before the registration of the disputed domain name <mercktrading.com> on March 4, 2011.
Other than the particulars shown in the printouts of the database searches conducted by the Complainant of the WhoIs database (as provided in Annex 1 to the Complaint), the website to which the disputed domain name resolved or diverted (as provided in Annex 8 to the Complaint) and the WhoIs database search results updated to December 20, 2011 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions:
The Complainant has rights in its said MERCK mark. It has registered the said mark under 500 registrations in 171 countries including Germany, European Union and China. The Complainant has also has a strong Internet presence and registered over 120 domain names consisting of or comprising the word “Merck” including <merckgroup.com>, <merck-china.com>, <merck-chemicals.com.cn>. It is one of the world’s largest pharmaceutical companies employing approximately 40,000 people in 67 countries around the world with a total turnover of EUR 9 billion in 2010 and enjoying 30% sales growth in China that year with its development center in Beijing creating 200 new jobs. The Complainant claims that it started its business in China at as early as 1900 and that it is now represented in most developed cities in China including Suzhou, where the Respondent is located. Its main products include chemicals, pharmaceuticals and healthcare products.
The Complainant also alleges that the website to which the disputed domain name previously resolved used a trade name “Suzhou Merck Imp & Exp Co., Ltd.” in an attempt to pass off the said website as one used by a merck-affiliated company or otherwise connected with the Complainant. In such website, goods including medical consumable, protective products, stethoscope and sphygmomanometer which are products of or correspond to the types sold by the Complainant.
The Respondent has registered the disputed domain name for the purpose of commercial gain, through pay-per-click revenue generation or otherwise, by misdirecting Internet users to third parties’ websites and capitalizing on the Complainant’s mark. The Respondent is not a licencee of the Complainant. It has not been permitted to use or register the MERCK Mark or use any domain name incorporating the MERCK Mark. There is also no evidence to show that the Respondent is known by the name “mercktrading”.
The disputed domain name <mercktrading.com> is confusingly similar to the Complainant’s MERCK Mark. The disputed domain name has incorporated the whole of the MERCK Mark. The addition of the generic business term “trading” does not distinguish it from the trademark MERCK.
The use of the disputed domain name prior to its recent disconnection to any website, constituted passing off and could not constitute bona fide use.
The Complainant claims that the trademark MERCK is well-known throughout the world and which the Respondent must actually or ought to be aware of. The passive holding of the disputed domain name incorporating a well-known trademark is evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of Proceedings
The contact details of the Respondent and the disputed domain name were fully set out in the publicly available WhoIs search results provided in Annex 1 to the Complaint, which was filed on December 8, 2011 and the WhoIs search result updated to December 20, 2011 as provided by the Center (“the Data Base Records”) as required by the paragraph 2(a) of the Rules.
Such contact details in the Data Base Records also match with the answers to Request for Registrar Verification provided by the Registrar to the Center on December 12, 2011.
On December 20, 2011, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding together with the Complaint including annexes to the Respondent in accordance with the contact details above by email with copies to the Registrar. The Center also forwarded Written Notice of the Proceedings in accordance with the relevant contact details to the post and facsimile addresses of the Respondent.
The Panel finds that as long as the Complainant and the Center have communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar, as reflected in the Data Base Records, their respective obligations of such communications will be discharged and the Respondent will be bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.
B. Language of Proceedings
In response to the Center’s notification in both English and Chinese of December 13, 2011 to both parties concerning the language of proceeding, the Complainant filed a request confirming its request for English to be the language of this administrative proceeding on December 13, 2011.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement for the disputed domain name is Chinese as confirmed by the Registrar.
In support of its request, the Complainant has inter alia argued that:
(a) The website to which the disputed domain name resolved previously was an English based website.
(b) The disputed domain name consists entirely of English letters (being a combination of (i) the English word mark of the Complainant and (ii) the English word “trading” which indicated that it was targeted to an English speaking audience).
(c) English is a language which is neutral to both parties.
(d) It is procedurally and economically efficient to proceed in English.
Other than an email sent by Mr. […] Yan on December 13, 2011 from the email address of […]@yahoo.com.cn which appears to be the email address of the Respondent to the Center and signed off by Jack/[…] Yan with contents in Chinese which did not address or assist in addressing the above points made by the Complainant, the Respondent has not submitted any arguments/supporting materials to explain why the proceedings should not be conducted in English.
In addition to the above, the Panel has also taken into consideration the fact that:
(a) the Respondent has provided its contact details in English to the Registrar;
(b) the entire contents of the website to which the disputed domain name previously resolved (as shown in Annex 8 to the Complaint) was in English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
C. The Three Elements
The said three elements are considered below.
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall 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 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in its trademark which essentially consists of the word “Merck” by reason of its various trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark which essentially consists of the word “Merck”. The addition of the generic dictionary English word “trading” as suffix is not sufficient to distinguish the disputed domain name from the Complainant’s said MERCK Mark. It is also a well-established practice to disregard the top-level part of a domain name like “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to rebut that it does not have any rights or legitimate interests in the disputed domain name.
In the present case, there is prima facie evidence that the Respondent lacks rights or legitimate interests in this disputed domain name. Further, the Panel notes that the names of the Respondent and its organization do not correspond in any way with the disputed domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as “mercktrading”. There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “mercktrading” in the disputed domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy is established.
3. Registered and Used in Bad Faith
The disputed domain name previously diverted to the site at “www.mercktrading.com”. The printout of the website as shown in Annex 8 to the Complaint showed the references to products of the types which are similar to those of the Complainant. In the absence of any evidence to the contrary, it appears that the Respondent was not using the disputed domain name for a purpose other than commercial gain. The Complainant has clearly stated that it has not authorized the Respondent to use the MERCK Mark or use it to register a domain name. It is the Complainant’s uncontradicted claim that references to goods of the aforesaid types at the website of “www.mercktrading.com” to which the disputed domain name previously resolved would result in the public being misled into believing that such products were associated or otherwise connected with the Complainant.
In the circumstances and given the Complainant’s uncontradicted claim of registration of its said MERCK Mark and apparent use of that mark for many years well before the registration of the disputed domain name in March 4, 2011, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent has not come forward with any defence.
On the basis of the evidence adduced, the Panel finds that the Respondent has registered the disputed domain name in bad faith primarily for the purpose of disrupting the business of the Complainant. The presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name in the manner described aforesaid, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel notes that at the time of this decision, the disputed domain name <mercktrading.com> does not appear to be currently used by the Respondent. However, passive holding of the disputed domain name may in appropriate circumstances constitute bad faith registration and use, and the Panel is of the view that such circumstances exist in this case. In this case, the Complainant’s MERCK mark is sufficiently known worldwide and in China, where the Respondent is located. The Panel cannot conceive of any use the Respondent might make of the disputed domain name that would not be a bad faith use. Some degree of deception or confusion would seem to be inevitable in any use the Respondent might make of the disputed domain name. Putting that circumstance together with the Respondent’s failure to file any formal response and the use as seen on the website to which the disputed domain name previously resolved, the Panel is satisfied that the overall circumstances are sufficient to constitute passive bad faith registration and use, of the kind found by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
For all 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 <mercktrading.com> be transferred to the Complainant.
C. K. Kwong
Dated: February 25, 2012