WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck KGaA v. Registrant [3644982]: Chen Yan Hua

Case No. D2011-1010

1. The Parties

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

The Respondent is Registrant [3644982]: Chen Yan Hua of Shanghai, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <merck-de.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2011. On June 15, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On June 16, 2011, Moniker Online Services, LLC 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 June 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2011.

The Center appointed Francine Tan as the sole panelist in this matter on July 15, 2011. 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 employing approximately 40,000 people in 67 countries around the world. The Complainant’s total revenue for the fiscal year 2010 was over 9 billion Euros. The Complainant owns over 500 registrations for the trade mark MERCK, spanning 171 countries (outside of the United States of America and Canada), including China.

The disputed domain name was registered on June 8, 2010 and the evidence submitted showed the Respondent has been using it in connection with a parking website which provides links relevant to the Complainant’s goods and services, namely to chemical equipment and supplies. The Complainant submitted evidence consisting of a page from the Respondent’s website which contained, inter alia, a link entitled “International Pharmacy” which directed Internet users to a website with pharmacy-related advertisements from third parties.

The Complaint also makes mention of the Respondent’s apparent involvement in at least two previous UDRP proceedings under the Policy, both which resulted in the transfer of the disputed domain names to the respective complainants: National Westminster Bank plc v. Chen Yan Hua, NAF Claim No. FA1293400 (<natwestoffhsore.com>) and Home Warranty of America, Inc. v. Chen Yan Hua, NAF Claim No. FA1368013 (<hwahomewarranties.com>). It also claims that the Respondent has registered numerous domain names which contain the well-known trade marks of third parties, e.g.:

- <altisourceomes.com> -- a deliberate mis-spelling of “www.altisourcehomes.com”, a website provided by Altisource Solutions, Inc.;

- <amatrollearning.com> -- targeting “www.amatrol.com”, a website provided by Amatrol, Inc.;

- <amorexigente.org> -- targeting “www.amorexigente.org.br”, a website provided by FEBRAE - Fed. Bras. de Amor Exigente;

- <wwwnctm.org> -- a deliberate mis-spelling of “www.nctm.org”, the official website of the National Council of Teachers of Mathematics; and

- <symposiummedicus.org> -- targeting “www.symposiamedicus.org”, the website of the Symposia Medicus.

5. Parties’ Contentions

A. Complainant

The Complainant claims, firstly, that the disputed domain name is identical or confusingly similar to the Complainant’s MERCK trade marks.

On this point, it was argued that the distinctive portion of the disputed domain name is the textual string to the left of the gTLD designator. In this case, the textual string of the disputed domain name contains the Complainant’s well-known and highly distinctive trade mark in its entirety, in addition to a dash and the geographic/ISO indicator “de”. The term “de” is indicative both of the country code for Germany, the Complainant’s primary business location, and of the ISO code for Germany. The addition of the suffix “de” does not serve to adequately distinguish the disputed domain name from the Complainant’s well-known MERCK trade mark. It was submitted, as has been established by earlier panel decisions, that the addition of a geographic term or abbreviation to a registered trade mark will be insufficient to avoid a finding of confusing similarity.

The dash included within the disputed domain name <merck-de.com>, which separates the Complainant’s trade mark MERCK from the geographic element “de”, also fails to differentiate the disputed domain name from the Complainant’s well-known MERCK trade mark.

The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name, for the following reasons:

(i) the term “merck-de” is neither a dictionary word nor a generic term;

(ii) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks and has not permitted the Respondent to register or use any domain name incorporating the MERCK trade mark;

(iii) there is no evidence that the Respondent has ever used the disputed domain name, nor made any demonstrable preparations to use the disputed domain name or a name corresponding to the domain name, in connection with a bona fide offering of goods or services; and

(iv) there is no evidence to suggest that the Respondent trades under the name “merck-de”, or is commonly known by the disputed domain name or the name “merck-de”. The WhoIs records indicate that the Respondent is an individual named Chen Yan Hua, and there is no information available on the parking website active at the disputed domain name to suggest otherwise.

In connection with point (iii) above, the Complainant referred to the fact that the Respondent had been using the disputed domain name for a parking webpage which displays sponsored links to third-party websites, many of which are related to goods or services in competition with those of the Complainant. The Respondent’s website had been used to earn pay-per-click-revenue by misdirecting Internet users to third parties’ websites and thus capitalizing on the Complainant’s marks.

Lastly, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. In this regard, the Complainant asserts that:

(i) The MERCK trade mark is well-known in the Chinese marketplace, where it has traded for over one hundred years. The Complainant has a number of offices throughout China, and operates a website targeted to the Chinese pharmaceuticals market (available in both the English and Chinese languages) at “www.merck-china.com” and “www.merck-chemicals.com.cn”, detailing its work in the chemicals industry. It is therefore inconceivable that the Respondent registered the disputed domain name without being aware of the Complainant’s rights in its MERCK trade mark. The fact that the links displayed on the disputed domain name have included inter alia “International Pharmacy”, “Chemicals”, “Chemical Containers” and “Chemical Mixer” further indicate that the Respondent had the Complainant in mind when registering the disputed domain name.

(ii) The addition in the disputed domain name of the geographic indicator “de” is significant as it corresponds to the ISO code and ccTLD for Germany, the site of the Complainant’s primary business location. Moreover, as the Complainant’s main website operates from “www.merck.de”, this reflects the Respondent’s intention to take advantage of Internet users who mis-type the Complainant’s domain name.

(iii) By using the website for sponsored links, the Respondent is attempting to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant’s website. The use and exploitation of trade marks to obtain click-through revenue from the diversion of Internet users has, in many decisions, been found to be indicative of bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s registration of a well-known trade mark which is obviously connected with the Complainant and its products will likely result in significant disruption to the Complainant’s business and damage to the integrity of the Complainant’s trade mark. Internet users searching for information regarding the Complainant or its products may mistakenly believe the disputed domain name to be held by the Complainant, leading to consumer confusion or frustration. Given the widespread use of the Complainant's MERCK mark and name and the Respondent's lack of association with the Complainant, the Respondent's registration and use of the disputed domain name indicate opportunistic bad faith.

(iv) A finding of bad faith use is supported by the fact that the Respondent has demonstrated a pattern of capitalizing on well-known trade marks by registering such marks in domain names.

B. Respondent

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

6. Discussion and Findings

The Policy requires the Complainant to prove all three elements, namely that:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant’s rights in the MERCK trade mark have been clearly established in this case, both by virtue of its trade mark registrations as well as by virtue of its long term of use and reputation. The primary question therefore is whether the component “-de” in the disputed domain name is such as to render the disputed domain name not confusingly similar to the Complainant’s MERCK trade mark.

The Panel agrees with the Complainant’s assertion that the disputed domain name is confusingly similar to the Complainant’s MERCK trade mark. The trade mark MERCK has been incorporated in its entirety and has, in fact, been given prominence in the disputed domain name as it is the first element which appears in the disputed domain name, and is separated from the letters “de” by the hyphen. The element of confusion is further enhanced by the choice of the letters “de” which are the widely recognized abbreviation or country code for Germany. The effect of this is equivalent to the addition of a generic or descriptive word to a trade mark within a domain name. There is indeed strong precedence established by earlier UDRP panel decisions in support of the principle that the addition of a generic or descriptive word will be insufficient to avoid a finding of confusing similarity under paragraph 4(a)(i) of the Policy.

The Panel therefore finds that the Complainant has established that the disputed domain name is identical or confusingly similar to its MERCK trade mark.

B. Rights or Legitimate Interests

The Complainant would be able to satisfy its burden under paragraph 4(a)(ii) of the Policy if it makes out a prima facie case which shows the Respondent’s lack of rights or legitimate interests. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)

The Panel is of the view that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. The Respondent has not filed any Response in this case by which he could have sought to establish his/her rights or legitimate interests in the disputed domain name. In the absence of any evidence which shows that the Respondent has a right or legitimate interests in the disputed domain name, the Panel therefore finds in favour of the Complainant on this issue under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use can be found to be established in any of the following situations:

“(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the web site or location.”

The Panel finds, on a preponderance of the evidence submitted, that the Respondent registered the disputed domain name for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant's MERCK trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website for commercial gain. The Complainant is without doubt a

well-known entity and its trade mark is well-recognized throughout the world. The Panel therefore considers not to be baseless, the Complainant’s assertion that the Respondent must have known of the Complainant and of its mark, and had deliberately chosen the disputed domain name with the Complainant in mind. The incorporation of a well-known mark in a domain name without the trademark proprietor’s consent has been established in many earlier UDRP panel decisions to be evidence of bad faith registration.

The Panel draws a negative inference from the Respondent’s choice of adding the letters and hyphen “-de” in the disputed domain name as it creates the impression that the Respondent’s website is indeed that of the Complainant, as the latter’s primary business location is in Germany. The fact that the Respondent’s website reflects words such as “International Pharmacy” and “Chemicals”, all of which correspond with the products or industry that the Complainant is involved in, also supports an inference of bad faith registration and use.

Finally, another trait of the Respondent in this case which has been brought up by the Complainant relates to the former’s apparent pattern of cybersquatting or typosquatting. This assertion has not been disputed or challenged by the Respondent.

In the circumstances, in the absence of evidence to the contrary, the Panel concludes that the disputed domain name was registered and has been used by the Respondent in bad faith.

7. Decision

For 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 <merck-de.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Dated: July 18, 2011