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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merz Pharma GmbH & Co. KGaA v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) / Hank Merz

Case No. D2020-0744

1. The Parties

The Complainant is Merz Pharma GmbH & Co. KGaA, Germany, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Domain Admin / Privacy Protect, LLC (PrivacyProtect.org), United States of America / Hank Merz, China.

2. The Domain Name and Registrar

The disputed domain name <merz-therapeutics.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 7, 2020.

The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on April 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2020. The Center received a late Respondent communication on May 8, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 18, 2020. 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 privately held company active in the research, development and distribution of innovative products in the areas of aesthetic medicine and neurologically-induced movement disorders. It was founded in 1908 by the pharmacist and chemist Friedrich Merz and is still owned by the Merz family. The Complainant has affiliates in Europe, Asia Pacific, North and South America, and employs over 3,000 employees in 34 locations worldwide. The Complainant’s revenue for the fiscal year 2018-2019 was over 1 billion euros.

The Complainant is the owner of the following trademark registrations for “MERZ” (the “MERZ trademark”):

- the International trademark MERZ with registration No. 265722, registered on February 14, 1963 for goods in International Classes 1, 2, 3 and 5;
- the United States trademark MERZ with registration No. 1111173, registered on January 16, 1979 for goods in International Class 3 and 5;
- the United States trademark MERZ with registration No. 1777619, registered on June 22, 1993 for goods in International Class 5;
- the trademark MERZ with registration No.1307766, registered in China on August 28, 1999 for goods in International Class 5; and
- the European Union trademark MERZ with registration No. 003954021, registered on October 3, 2005 for goods in International Classes 3, 5 and 10.

The Complainant’s primary website is located at the domain name <merz.com>. On November 11, 2019, the Complainant registered the domain name <merztherapeutics.com>.

The disputed domain name was registered on November 27, 2019. It is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant submits that “Merz” is the surname of the company’s founder and is not a generally used word. In November 2019, the Complainant announced that it will restructure its business by creating three independent entities named Merz Aesthetics, Merz Therapeutics, and Merz Consumer Care, where the new Merz Therapeutics entity will offer a product portfolio centered on movement disorders and the Complainant’s core neurotoxin product Xeomin.

According to the Complainant, the disputed domain name is confusingly similar to the MERZ trademark, to which the dictionary word “therapeutics” was added, and this word is closely linked to the MERZ trademark, as the Complainant’s main line of business relates to healing and relieving the symptoms of diseases through various therapeutic products. The addition of a hyphen between the two elements of the disputed domain name does not distinguish it from the MERZ trademark, form the name of the new Merz Therapeutics entity and from its domain name <merztherapeutics.com>.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent is not sponsored by or affiliated with the Complainant, and the latter has not given permission to the Respondent to use the MERZ trademark. The Complainant notes that the WhoIs information for the disputed domain name indicates that Respondent’s surname is “Merz”, but the Respondent cannot claim to be commonly known by the disputed domain name, as the name “Merz” is a common surname in German-speaking countries, but not in China, where the Respondent resides, and the Respondent has not used the disputed domain name since its registration, which was made only 16 days after the Complainant formally announced the creation of its new independent business under the name “Merz Therapeutics”. The Complainant adds that there is no evidence that a person with the name Hank Merz exists in Beijing, China, and that the Respondent replied to the Complainant’s cease and desist letters with the name Jake Bufoer using an email address which reflected this name, and in its response claimed to have a legitimate interest to use the disputed domain name not because it reflected its own name, but for the benefit of its prospective clients with the last name “Merz”.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name many years after the Complainant registered the MERZ trademark and more than 110 years after the Complainant started using it in 1908, and this registration was made just 16 days after the Complainant announced that it would set up a new independent business under the name “Merz Therapeutics” and registered the <merztherapeutics.com> domain name. According to the Complainant, this shows that the Respondent must have known of the existence of the Complainant and its MERZ trademark and that it has targeted the Complainant with the registration of the disputed domain name, which is intended to cause confusion among Internet users or to be held for some future use in a way which would be competitive with or detrimental to the Complainant.

The Complainant submits that it first tried to contact the Respondent on February 4, 2020, through a cease and desist letter. In it reply, the Respondent denied the Complainant’s claims and demanded payment in exchange of the transfer of the disputed domain name, signing itself as Jake Bufoer and writing from an email address which reflected this name. According to the Complainant, this shows that the Respondent has intentionally provided false contact details for the registration of the disputed domain name, perhaps as a way of appearing to hold a legitimate interest in it.

B. Respondent

Following the expiration of the due date for the Response on May 4, 2020, the Center received a late Respondent communication on May 8, 2020, which did not address the substance of the Complaint.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

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

(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.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent however did not submit a Response in this proceeding but after the deadline for a Response had passed requested additional time to do so. The Center informed the Parties that this would be raised for the Panel’s attention; given the arguments of the Complainant set out above, notably including the Respondent’s reaction to the cease and desist letter (from a different name than was provided to and confirmed by Registrar), the Panel does not find a basis to grant such extension.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the MERZ trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “merz-therapeutics”. It consists of the elements “merz” and “therapeutics”. The “merz” element is identical to the MERZ trademark and dominates in the disputed domain name, while the addition to it of the dictionary word “therapeutics” does not sufficiently distinguish the disputed domain name from the MERZ trademark, which remains clearly recognizable in it. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of WIPO Overview 3.0.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the MERZ trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it has no relationship with the Respondent and has not given permission to it to use the MERZ trademark, and the Respondent has not used the disputed domain name since its registration. According to the Complainant, the real name of the Respondent is not Hank Merz, because there is no evidence that such person exists in Beijing, China, and the Respondent replied to the Complainant’s cease and desist letters with a different name altogether. The Complainant points out that the Respondent registered the disputed domain name only 16 days after the Complainant announced the creation of its new business entity under the name “Merz Therapeutics” and registration of a related domain name (identical to the disputed domain name but without a hyphen), and claims that this was the reason why the Respondent registered the disputed domain name. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not disputed the above statements of the Complainant. It has not alleged before the Panel that it has rights or legitimate interests in the disputed domain name. In its communication to the Complainant prior to the commencement of the dispute, the Respondent claimed to have a legitimate interest to use the disputed domain name for the benefit of its prospective clients with the last name “Merz”. However, it has not repeated this allegation in the present proceeding and moreover has not submitted any supporting evidence.

The disputed domain name incorporates the MERZ trademark in combination with the word “therapeutics”. This makes it confusingly similar to the products offered by the Complainant under the MERZ trademark and for which it is registered, as well as to the name of the new business entity of the Complainant with the name Merz Therapeutics and to its domain name <merztherapeutics.com>, both of which came into existence just days before the registration of the disputed domain name.

In view of the above, and in the absence of any evidence to the contrary and of any plausible alternative explanation by the Respondent, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s MERZ trademark and of the establishment of its new business entity Merz Therapeutics, has registered the disputed domain name by using a false name to achieve some undue benefit by exploiting the goodwill of the Complainant. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

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

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Respondent has registered the disputed domain name many years after the Complainant registered the MERZ trademark and started using it for its business, which has achieved a global scope. The disputed domain name incorporates the MERZ trademark in combination with the word “therapeutics”, and this combination directly refers to the Complainant’s business carried out under the MERZ trademark and to the name of the new business entity announced by the Complainant 16 days before the registration of the disputed domain name, and makes it confusingly similar to the Complainant’s domain name <merztherapeutics.com>. In view of this and of the scope of protection of the MERZ trademark and of the global extent of the jurisdictions in which it is registered, the Panel cannot conceive of any good faith use of the disputed domain name that would be legitimate without the consent of the Complainant.

As noted by the Complainant, it also appears that the Respondent has used a false name for the registration of the disputed domain name, since it has sent correspondence to the Complainant by using a different name and email address than the ones indicated to the Registrar.

Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent was aware of the Complainant’s MERZ trademark and of its goodwill when it registered the disputed domain name, and that the Respondent has registered and used the disputed domain name targeting the MERZ trademark and the name of the new business entity created by the Complainant in an attempt to achieve unfair commercial gain by exploiting the goodwill of the Complainant and of its trademark.

Therefore, the Panel finds that the disputed domain name has been 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 disputed domain name <merz-therapeutics.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 1, 2020

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