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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck KGaA v. David Sun, China DNS, Inc.

Case No. D2010-1971

1. The Parties

The Complainant is Merck KGaA of Frankfurter, Germany represented by internally.

The Respondent is David Sun, China DNS, Inc. of Shanghai, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <merck-chemicals.net> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2010. On November 18, 2010, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp. a request for registrar verification in connection with the disputed domain name. On November 19, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 November 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2010.

The Center appointed Sebastian Hughes as the sole panelist in this matter on December 28, 2010. 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

A. Complainant

The Complainant is a company incorporated in Germany and the owner of numerous registrations worldwide for the trade mark MERCK (the “Trade Mark”). The Complainant is also the owner of numerous domain names comprising the Trade Mark, including the domain names <merck-chemicals.com>,<merck-chemicals.eu>, <merck-chemicals.de> and <merck-chemicals.asia>.

B. Respondent

The Respondent is an individual apparently with an address in China.

C. Disputed Domain Name

The disputed domain name was registered on March 2, 2010.

5. Parties’ Contentions

A. Complainant

The following facts are alleged by the Complainant in the Complaint.

The Complainant is a global chemical and pharmaceutical company. The Complainant has used the Trade Mark in its company name since 1850. The Trade Mark has obtained fame and notoriety throughout the world. It is registered worldwide in respect of international classes 1, 2, 3, 5, 9, 10, 16, 29, 30, 35 and 42.

The disputed domain name is confusing similar to the Trade Mark. The term “chemicals” is generic and not distinctive enough to distinguish the disputed domain name from the Trade Mark. Furthermore, the chemical business sector is one of the two business sectors of the Complainant, and the Complainant is the owner of many domain names comprising the wording “Merck Chemicals”.

The Respondent has held the disputed domain name passively since its registration. Such non-use is insufficient to establish a legitimate interest in respect of the disputed domain name.

The Complainant has not in any way authorised or approved the Respondent’s use of the Trade Mark or registration of the disputed domain name and the Respondent is not commonly known by the disputed domain name.

In communications with a service provider of the Complainant and with the Complainant, the Respondent has offered to sell the disputed domain name to the Complaint for, firstly, USD3,000 and, subsequently, for USD1,500. This amounts to registration and use of the disputed domain name in bad faith.

B. Respondent

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 Trade Mark acquired through use and registration which predate by over 160 years the date of registration of the disputed domain name.

UDRP panels have consistently held that domain names may be found identical or confusingly similar to a trade mark for the purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

The Panel has no hesitation in finding the disputed domain name is confusingly similar to the Trade Mark. The addition of a hyphen and of the generic word “chemicals” does not serve to distinguish the disputed domain name from the Trade Mark in any way. Such confusing similarity is heightened by the notoriety of the Complainant and the Trade Mark, and by the numerous domain names comprising the exact same wording “merck-chemicals” previously registered by the Complainant.

The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint has fulfilled the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 160 years. The Complainant has therefore shown a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, it is clear that the disputed domain name has been registered solely for the purpose of selling it to the Complainant or a third party.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain. The Panel finds on the record that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the disputed domain name has been registered and used in bad faith under paragraph 4(b)(i) of the Policy, by the Respondent’s conduct in offering to transfer the disputed domain name to the Complainant for valuable consideration far in excess of Respondent’s out-of-pocket costs directly related to the registration of the disputed domain name.

It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028). The Panel finds, in the circumstances of this proceeding, the Respondent’s passive use of the disputed domain name provides further evidence of bad faith.

The Panel also considers that, in the circumstances of this case, the failure of the Respondent to file a Response further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 name <merck-chemicals.net> be transferred to the Complainant.

Sebastian Hughes
Sole Panelist
Dated: January 11, 2011

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