WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck KGaA v. Moniker Privacy Services and APS Water Services Corp
Case No. D2012-1622
1. The Parties
The Complainant is Merck KGaA of Darmstadt, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondents are Moniker Privacy Services of Pompano Beach, United States of America; and APS Water Services Corp, of Van Nuys, California, United States of America,
2. The Domain Names and Registrar
The disputed domain names <millipore.net>, <millipore-water.com> are registered with
GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2012. On August 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 14, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.
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 August 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2012. No official Response was filed with the Center by the due date however, two emails were received from the Respondent Moniker. In the second of these emails, dated September 21, 2012, the Respondent Moniker claimed that the listing with the Registrant was false and that it is not the true owner of the disputed domain name.
The Center appointed Michael J. Spence as the sole panelist in this matter on September 28, 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 a multinational pharmaceutical company operating in 67 countries and employing approximately 40,000 people. It has protection for the trade mark, MILLIPORE, which has been registered in the United States since 1960, in over 60 countries. The disputed domain name <millipore.net>, resolves to a website “www.millipore-water.com” which discusses the products offered by the Complainant, and then redirects Internet users to a website on which cheaper substitute products are advertised.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainants, MILLIPORE trade mark; that the Respondent has no rights or legitimate interests in the disputed domain names; and that they have been registered or are being used in bad faith.
No Response was filed by the Respondents other than the email sent by the Respondent Moniker on September 21, 2012, denying ownership of either disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names contain the Complainant's trade mark in its entirety. The addition of a descriptive term such as “water”, relating as it does to the function of the Complainant's products, does nothing to distinguish the disputed domain names from the Complainant's trade mark. There can be no doubt that the disputed domain names are identical or confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain names.
B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455, Beluppo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110).
In this case, the use to which the Respondents have put the disputed domain names is not such as to give rise to rights or legitimate interests in its use. While a website might legitimately comment on the products of a competitor, it cannot do so in a way that exploits the initial impression of a connection between the owner of the domain name under which the website is operating and the competitor itself. This type of selling practice is appropriately characterised by the Complainant in this case as “bait and switch” and does not give rise to rights or legitimate interests in the use of the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain names.
C. Registered and Used in Bad Faith
To use a disputed domain name to “bait and switch” is a classic example of its registration or use in bad faith. In this case, bad faith is further evidenced by an apparent attempt on the part of the registered owner of the disputed domain names to conceal their true identities from the Registrar, and therefore from the public more generally.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <millipore.net> and <millipore-water.com> be transferred to the Complainant.
Michael J. Spence
Dated: October 1, 2012