WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck KGaA v. sertap binboga / seher tufanoglu / rengin pinarbasi

Case No. D2019-0889

1. The Parties

Complainant is Merck KGaA, Germany, represented internally.

Respondent is Sertap Binboga / Seher Tufanoglu / Rengin Pinarbasi, Turkey.

2. The Domain Names and Registrar

The disputed domain names

<bimeritys.com>
<bimunos.com>
<bimyti.com>
<bryumfa.com>
<bykiviq.com>
<bykuviq.com>
<bymastry.com>
<bynovlia.com>
<bypruviq.com>
<bypruvis.com>
<bytravup.com>
<duvsentia.com>
<imsentio.com>
<imsentyo.com>
<imysence.com>
<imzeneos.com>
<jexmyti.com>
<navkuro.com>
<tunovla.com>

(the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 29, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on the same date.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 5, 2019.

The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on June 12, 2019. 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

Complainant is the world’s oldest pharmaceutical and chemicals company, founded in 1668. It operates in 66 countries and employs approximately 52,000 people worldwide.

In Healthcare, Complainant‘s Biopharma business regularly discovers, develops, manufactures and markets innovative pharmaceutical and biological prescription drugs to treat cancer, multiple sclerosis, infertility, and growth disorders, as well as certain cardiovascular and metabolic diseases.

Complainant states that it is the owner of the following trade marks, which were all filed with the German Trademark Office on January 15, 2019, and registered on April 10, 2019, as follows:

Trademark

Registration No.

BIMERITYS

302019000553

BIMUNOS

302019000554

BIMYTI

302019000555

BRYUMFA

302019000574

BYKIVIQ

302019000575

BYKUVIQ

302019000557

BYMASTRY

302019000558

BYNOVLIA

302019000559

BYPRUVIQ

302019000577

BYPRUVIS

302019000560

BYTRAVUP

302019000561

DUVSENTIA

302019000579

IMSENTIO

302019000562

IMSENTYO

302019000563

IMYSENCE

302019000583

IMZENEOS

302019000565

JEXMYTI

302019000567

NAVKURO

302019000585

TUNOVLA

302019000587

(“Complainant’s Marks”).

According to the WhoIs, all 19 Domain Names were registered on February 1, 2019, and currently resolve to Registrar parking pages.

5. Parties’ Contentions

A. Complainant

Complainant requests that the complaint be consolidated as one complaint against all three Respondents based on grounds that all three Respondents:

1. share the same phone number, indicating that there must be a connection between them;
2. use the same e-mail domain address, distinguished by the name of the person;
3. belong to the same company;
4. have their physical address in close proximity in the same street; and
5. use the same privacy service for all the Domain Names, namely privacyguardian.org, and the same registrar, NameSilo LLC.

On the basis of the above Complainant argues that all the Domain Names are under common control.

Complainant asserts that the Domain Names are identical to Complainant’s Marks and that the identity between Complainant’s Marks and the Domain Names is not eliminated by the addition of the generic Top‑Level Domain (“gTLD”) suffix “.com”.

Complainant submits that Respondent has no rights or legitimate interests in the Domain Names. Respondent is not a licensee of Complainant, nor has he been otherwise allowed by Complainant to make any use of Complainant’s Marks, in a domain name or otherwise.

Complainant argues that Respondent cannot assert that, prior to having notice of this dispute, Respondent was using, or had made demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. Further, Complainant notes that no goods or services are offered under the Domain Names.

Complainant contends that Respondent is also not commonly known under any of the names of Complainant’s Marks, and nor can Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the Domain Names.

Complainant notes that Respondent had registered all Domain Names on February 1, 2019, being 15 days after Complainant’s trade mark applications for Complainant’s Marks on January 15, 2019, indicating that Respondent has systematically registered domain names identical to Complainant’s German trade mark filings, as soon as the trade marks were visible on the homepage of the German Trademark Office.

Complainant states that because all Complainant’s Marks are invented words and are not dictionary words, nor do they have any generic or descriptive meaning, then it is highly unlikely that Respondent did not have Complainant’s rights in mind when Respondent registered the Domain Names.

Complainant goes on to state that all Domain Names are being offered for sale for a minimum of USD 900, which indicates to Complainant that the Domain Names were registered primarily for the purpose of selling for commercial gain.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Consolidation of Respondents

Complainant argues that the Domain Names are under common control and that consolidation of the Domain Names and Respondents in a singular complaint is appropriate.

The Panel has the discretionary power to consolidate a complaint relating to multiple domain names into one complaint. In the particular circumstances of this case, the Panel is satisfied that it is reasonable, appropriate, and in the overall interests of justice to do so.

Complainant contends that all three Respondents share the same phone number, share a similar email domain address, appear to belong to the same company and have nearly the same physical address. The three Respondents also appear to use the same privacy service and the same registrar. This leads to an arguable case in favour of consolidation. Given that Respondent has failed to challenge Complainant’s evidence and arguments, the Panel is satisfied that consolidation is appropriate under these particular circumstances.

B. Identical or Confusingly Similar

For purposes of trade mark rights assessment under the first element, it is established practice to consider the date of the filing of the Complaint as dispositive to determining if and when trade mark rights exist (as opposed to the date the domain name was registered, which is relevant of course for the second and third elements). Section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element”.

In QIQ Communications Pty Ltd v. Netico, Inc., WIPO Case No. D2014-1024, the panel noted that registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identical or confusing similarity under the first element of the UDRP. The panel went on to state: “Whether the Complainant had rights in the trade mark at the time of registration of the Disputed Domain Name may be relevant to the consideration of bad faith under paragraph 4(a)(iii) of the Policy, but it is not relevant for the purposes of determining whether the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights.”

In the present case, Respondent registered the Domain Names on February 1, 2019, which was just 15 days after Complainant’s trade mark applications for Complainant’s Marks. Complainant asserts that Respondent systematically registered the Domain Names, which are identical to Complainant’s German trade marks, and that this was done as soon as the trade marks were visible on the homepage of the German Trademark Office.

More importantly, the trade marks cited in section 3, above, were entered on the register on April 10, 2019. This was eight days before the Complaint was filed, on April 18, 2019. As at April 18, 2019 Complainant plainly had rights pursuant to the Policy.

For these reasons, it is found that Complainant has rights in Complainant’s Marks for purposes of the Policy and that the Domain Names are identical to Complainant’s Marks pursuant to the Policy.

C. Rights or Legitimate Interests

Having found that Complainant has rights in Complainant’s Marks, the next question is whether Respondent has any claim to rights or legitimate interests in the Domain Names. Having failed to file a response, the Panel is unaware of any basis upon which Respondent might claim to have a legitimate interest in applying to register 19 domain names, which coincidentally correspond to 19 identical trade marks which, at least on the face of it, appear to be distinctive and which trade mark applications were lodged by Complainant shortly before Respondent’s registration of the Domain Names.

In the absence of any attempt to explain why Respondent registered the Domain Names under such circumstances, the Panel concludes that there are no circumstances suggesting Respondent has any rights or legitimate interests in the Domain Names and equally that Complainant has established this ground.

D. Registered and Used in Bad Faith

For the same reasons as articulated under the preceding ground in sections 6.B and 6.C, the Panel finds that Respondent knew that Complainant had applied to register Complainant’s Marks at the German Trademark Office and sought to steal a march on Complainant by registering the Domain Names and seeking to sell them for commercial gain or to disrupt Complainant’s business.

On that basis, the Panel is of the view that the Domain Names were individually and together registered and used 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 Domain Names, <bimeritys.com>, < bimunos.com>, <bimyti.com>, <bryumfa.com>, <bykiviq.com>, <bykuviq.com>, < bymastry.com>, <bynovlia.com>, <bypruviq.com>, <bypruvis.com>, <bytravup.com>, <duvsentia.com>, <imsentio.com>, <imsentyo.com>, <imysence.com>, <imzeneos.com>, <jexmyti.com>, <navkuro.com>, and <tunovla.com> be transferred to Complainant.

Clive L. Elliott Q.C.
Sole Panelist
Date: June 26, 2019