WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck KGaA v. Super Privacy Service LTD c/o Dynadot / Oka Ayana
Case No. D2020-2443
1. The Parties
The Complainant is Merck KGaA, Germany, represented by Bettinger Scheffelt Kobiako von Gamm, Germany.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Oka Ayana, Japan.
2. The Domain Name and Registrar
The disputed domain name <merckmillipore.online> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2020. On September 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 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 September 22, 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 September 22, 2020.
The Center verified that the Complaint 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 September 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2020. On October 14, the Complainant renewed the disputed domain name until October 21, 2021 for the purposes of the proceeding. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2020.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 22, 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 the German pharmaceutical and chemicals company MERCK KGAa.
The Complainant is the owner of numerous trademarks including the term “MERCK”, “MILLIPORE”, and “MERCK MILLIPORE” among which:
- International trademark No. 1068427 “MERCK MILLIPORE”, registered on January 29, 2011 in classes 1; 5; 7; 9; 11; 16; 40; 42;
- European trademark No. 283986 “MERCK”, registered on February 22, 1999;
- European trademark No. 8552622 “MILLIPORE”, registered on May 10, 2010.
The disputed domain name <merckmillipore.online> was registered on October 21, 2019.
At the time of the decision, the website at the disputed domain name does not appear to be active.
5. Parties’ Contentions
The Complainant first alleges that the disputed domain name <merckmillipore.online> is:
- confusingly similar to its earlier trademark “MERCK”, which is well-known, and to its earlier trademark “MILLIPORE”;
- identical with its earlier trademark “MERCK MILLIPORE”
The disputed domain name incorporates the Complainant’s well-known trademarks “MERCK”, “MILLIPORE”, and “MERCK MILLIPORE” in their entirety.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not referred or commonly known by the name “MERCK MILLIPORE” and has no legal relationship with the Complainant.
The Complainant has never licensed or permitted the Respondent to use any of its trademark “MERCK”, “MILLIPORE” or “MERCK MILLIPORE”.
Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
According to the Complainant, as the Complainant registered its trademark “MERCK MILLIPORE” with the Trademark Clearinghouse (TMCH) on October 16, 2013, the Respondent “therefore received a warning notice from the TMCH when registering the [disputed] domain name that [it] matches the Complainant’s trademark MERCK.” And, according to the Complainant, it is “therefore established that [the] Respondent registered the disputed domain name knowing that it was identical with the Complainant’s trademark.” Accordingly, the registration of the disputed domain name was undertaken in bad faith.
(The Panel notes that the Complainant’s assertions as to the timing of the TMCH notice and the registration of the disputed domain name are incorrect – see below discussion of bad faith.)
The Complainant claims that its trademark is long-established and widely known, so the disputed domain name is not susceptible to be used in a generic sense.
The Complainant concludes that there does not appear to be any other possible or conceivable good faith use to which the Respondent could put the domain name that would not infringe the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the lack of response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”.
Having evidenced to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following:
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in “MERCK MILLIPORE”, which predate the registration of the disputed domain name <merckmillipore.online>.
The Panel finds that the disputed domain name is confusingly similar to the registered “MERCK MILLIPORE” trademark owned by the Complainant.
Indeed, the disputed domain name incorporates the entirety of the Complainant’s “MERCK MILLIPORE” trademark.
The applicable generic Top-Level Domain (“gTLD”) (“.online” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
See also Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances are situations that can demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Considering the difficulty to demonstrate a negative, UDRP panels generally find it is sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its “MERCK MILLIPORE” trademark.
It results from the circumstances that the Respondent does not own any right on the trademark “MERCK MILLIPORE” or is commonly known by the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 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 your web site or location or of a product or service on your web site or location.”
Since the disputed domain name is identical with the prior trademark “MERCK MILLIPORE”, which is not a generic term but the combination of two companies’ names belonging to the Complainant, it may be inferred that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name <merckmillipore.online>.
With respect to the Complainant’s claim about the Trademark Clearinghouse (TMCH), the Panel recalls that according to the Complaint the “Complainant registered the trademark MERCK MILLIPORE with the Trademark Clearinghouse (TMCH) on 16 October 2013.” The Complaint then goes on to add that the “notification service of the TMCH is mandated by ICANN for all new gTLDs for their first 90 days of general availability.” The Complaint overlooks however that the Sunrise period for the “.online” new gTLD was from June 18, 2015 to August 17, 2015 and that the corresponding TMCH Claims Notice period ran from August 19, 2015 to November 17, 2015. Given that the disputed domain name was registered some four years after this window in 2019, the Respondent could not therefore have been made aware of the Complainant’s rights via this TMCH Claims Notice process. Be that as it may, as the Panel has noted above, the combination of two of the Complainant’s marks in the disputed domain name puts aside any doubt that the disputed domain name was registered in full knowledge of the Complainant’s rights in its marks.
At the time of the decision, the disputed domain name is inactive, but the Panel cannot conceive any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark rights.
In the circumstances of the present case, the Panel finds that the Respondent’s passive holding of the disputed domain name <merckmillipore.online> also amounts to use of the disputed domain name in bad faith for the purpose of the Policy (see section 3.3 of the WIPO Overview 3.0).
See also Baidu Online Network Technology (Beijing) Co., Ltd. v. Registration Private / Chen Chunsheng, WIPO Case No. D2016-1417.
In all these circumstances the Panel holds that the disputed domain name <merckmillipore.online> was registered and is being used in bad faith.
The Panel finds that the above described circumstances constitute registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.
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, <merckmillipore.online> be transferred to the Complainant.
Date: November 1, 2020