WIPO Domain Name Decision: D2005-1017

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck KGaA v. Paul Rostkowski

Case No. D2005-1017

1. The Parties

The Complainant is Merck KGaA, Darmstadt, Germany, represented by Jonas Kölle, Germany.

The Respondent is Paul Rostkowski, Hasbrouck Hts., NJ, United States of America.

2. The Domain Name and Registrar

The disputed domain name <merckblog.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2005. On September 27, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On September 28, 2005, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2005.

The Center appointed David Taylor as the Sole Panelist in this matter on November 11, 2005. 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. Procedural Order

On December 22, 2005, the Panel requested additional information from the Respondent by Administrative Panel Procedural Order No. 1, attached at Annex 1 (the “Procedural Order”). The Respondent was given until January 6, 2006, to file a supplemental filing providing such additional information. The Respondent did not respond.

5. Factual Background

The name MERCK was first associated with pharmaceutical goods in 1668, when Friedrich Jacob Merck purchased the Angel Pharmacy in Darmstadt, Germany. The E. Merck business partnership was founded in 1850, by Heinrich Emanuel Merck. (see next para)

In 1887, a branch office was opened in New York, leading to the formation of Merck & Co in 1891. The Complainant and Merck and Co are today no longer linked. Merck & Co. became an independent US company after World War 1 and today is one of the largest pharmaceutical companies in the world, based in New Jersey.

Merck & Co. holds the rights to the name MERCK within the United States and Canada and operates as Merck Sharp and Dohme (MSD) outside of this region (MSD Sharp & Dohme GmbH in Germany). The Complainant holds the rights to the name MERCK in Europe and the rest of the world and operates in North America under the umbrella brand EMD, formed from the initials of Emanuel Merck, Darmstadt. The Internet address of Merck & Co is “www.merck.com, whilst that of the Complainant is “www.merck.de”.

The Complainant owns over 500 registered trademarks for the mark MERCK in 171 countries (outside of the United States and Canada). It also owns 121 domain name registrations for MERCK and a further 512 containing the name MERCK.

The Respondent, based in New Jersey, United States, registered <merckblog.com> (the “Disputed Domain Name”) on May 2, 2005, using Register.com as the registrar. The Disputed Domain Name currently points to a Register.com holding page which contains sponsored links and states: “‘www.merckblog.com’ is coming soon to Register.com”.

6. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

The suffix “blog” is a generic term, commonly used in internet domain names to indicate that the websites to which such domain names point will contain web-based publications consisting primarily of periodic articles, normally in reverse chronological order. The public would therefore expect that the Disputed Domain Name would be used by the Complainant for web-based publications about the Complainant. The term “blog” is not inventive enough to differentiate the Disputed Domain Name from the Complainant’s trademark and has to be disregarded when evaluating the similarity between the Complainant’s trademark and the Disputed Domain Name. Given that the trademark MERCK is distinctive, the addition of the suffix “blog” makes the compound phrase “merckblog” confusingly similar to the Complainant’s trademark MERCK.

In support of this contention, the Complainant cites Dow Jones & Company, Inc. v. Down Jones Update, WIPO Case No. D2000-0495, and Barnes & Noble College Bookstores, Inc. v. Good Domains, WIPO Case No. D2002-0812.

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

None of the circumstances listed under paragraph 4(c) of the Policy relating to rights and legitimate interests are present. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for a domain name incorporating any of those marks. The registration and use of the Disputed Domain Name therefore clearly violates the Complainant’s company name and trademark rights.

The Complainant has been watching its trademark MERCK for decades and has taken note of every infringement of the trademark MERCK worldwide. The Respondent has never used a trademark or service mark identical or similar to MERCK, by which he may have come to be known. Therefore the Respondent has not been commonly known by the designation MERCK.

The Respondent has never used the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name is linked to a website announcing that a web presence will be coming soon. The website shown is a standard page used by the provider Register.com for unused domain names registered with it.

According to the Complainant’s information the Disputed Domain Name has been linked to this website since its registration. Simple stocking of the Disputed Domain Name by the Respondent does not create any rights or legitimate interests in it. In support of this contention the Complainant makes reference to Audi AG v. Hans Wolf, WIPO Case No. D2001-0148.

For same reasons as above the Complainant contends that the Respondent is not making any fair use of the Disputed Domain Name. The Respondent has never used the Disputed Domain Name for its own purposes.

The registration of the trademark MERCK is constructive notice of the Complainant’s claim of ownership of that trademark. By registering the Disputed Domain Name, the Respondent has precluded the Complainant from using its trademark MERCK in a corresponding domain name. In addition, the Respondent acted in bad faith for the following reasons:

The Complainant’s company name and trademark MERCK are well known all over the world and the trademark MERCK has acquired worldwide notoriety and fame. Therefore it is likely that Respondent was aware of Complainant’s company name and trademark MERCK at the time of registration of the Disputed Domain Name. The Complainant and Merck & Co. share the worldwide right to use the trademark MERCK. In the United States Merck & Co. is entitled to use the name MERCK. The name MERCK is well known in the United States, too. It cannot have escaped the Respondent’s attention that the name MERCK has been used as the Complainant’s company name or trademark for quite a long time.

On September 22, 2005, the Complainant sent a cease and desist letter including a request for assignment of the Disputed Domain Name to the Respondent. The Respondent answered as follows:

“Hello Jonas,

Thank you for your email. The Merckblog domaine name is for sale if you wish to buy it. I advise this would be the easiest course of action for you to follow. Let me know if you are interested and what you would be willing to pay.

Thank yo once again.”

The next day the Complainant answered as follows:

“Dear Paul,

As laid down in our letter your registration of <merckblog.com> infringes our trademark rights. We therefore do not intend to pay anything for the domain name registration. I request you to assign the domain name to our company otherwise we are forced to consider further legal measures to protect our trademark rights.

I herewith again point at the possibility to claim for any damages in connection with your registration of merckblog.com.

Best regards,”

On the same day the Respondent again refused to transfer the Disputed Domain Name and confirmed his intention to sell it to the Complainant or anyone else.

The Complainant contends that the Respondent’s behaviour clearly shows his intention when registering the Disputed Domain Name. The Respondent acted in bad faith when registering the Disputed Domain Name for the purpose of selling it to a third party.

In all probability the public would expect a web presence of the Complainant or Merck & Co. at the Disputed Domain Name. There is no other obvious reason for the Complainant’s registration of the Disputed Domain Name than the abuse of the well known status of the Complainant’s trademark MERCK.

In summary, the Complainant contends that the above arguments, plus the Respondent’s reaction to its warning letter and the notoriety and fame of trademark MERCK, constitute enough evidence to demonstrate the Respondent’s registration and use of the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, after having been notified of the Complaint, the Respondent wrote to the Center on October 10, 2005, and made the following four points:

(i) The Respondent had not agreed to participate in any mediation or arbitration process;

(ii) The Respondent’s attorney had advised him that he was a legitimate owner of the domain name under the United States Lanham Act and there was no evidence of bad faith in the Respondent’s ownership, nor was there anything to show that the Respondent had damaged the name of the Complainant;

(iii) The Respondent had specific good faith intentions regarding the use of the Disputed Domain Name and it could be sold to the Complainant if necessary; and

(iv) The Respondent had spoken with Register.com who had informed him that the case seemed outside jurisdiction.

On October 18, 2005, the Respondent again wrote to the Center and made the following three points:

(i) The Complainant had not provided any evidence that the Disputed Domain Name or any variation of it had been registered by it. If the Complainant’s Complaint had merit then any letters around the word “merck” would be in violation of the MERCK trademark;

(ii) The Disputed Domain Name was under consideration to be used as a repository of consumer input, both good and bad, regarding consumer experiences with the US product Vioxx, a Merck & Co. brand currently under fire. The Lanham Act and the US Constitution both allowed for freedom of speech via the press or Internet. This would also be a good faith use of the word <merckblog.com>; and

(iii) Several parties were interested in buying the Disputed Domain Name from the Respondent.

7. Discussion and Findings

Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with Paragraph 10 of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

“(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) the domain name has been registered and is being used in bad faith.”

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

Based on the extensive evidence put forward by the Complainant, the Panel finds that the Complainant has rights in the trademark MERCK.

The Panel considers that, as previously held in several Panel decisions, the gTLD suffix “.com” is without legal significance and has no effect on the issue of similarity.

As the Complainant points out, websites to which domain names containing the word “blog” point usually contain periodic articles (or indeed comments) normally in reverse chronological order. Although the actual content found on such websites may be positive or negative, the word “blog” itself is essentially neutral. The Panel therefore agrees with the Complainant’s submission that the Disputed Domain Name is confusingly similar to the Complainant’s trademark because the word “blog” is generic and not inventive enough to differentiate the two.

On the basis of these considerations, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (Policy, paragraph 4(a)(ii)). The Policy (paragraph 4(c)) sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 organization) have been commonly known by the domain name, even if you have acquired no trademark 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 trademark or service mark at issue.”

Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a Complainant to prove a negative, i.e. that a Respondent has no rights or legitimate interests in respect of a Disputed Domain Name. It has therefore become generally accepted under the Policy that, once a Complainant has presented a clear prima facie showing of a Respondent’s lack of rights or legitimate interests in a Disputed Domain Name, the Panel should find for the Complainant unless the Respondent demonstrates a plausible case of rights or legitimate interests.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has succeeded in presented a clear prima facie showing of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name. The Respondent has failed to rebut that showing, despite the correspondence between the Respondent and the Center.

In particular, as far as paragraph 4(c)(i) is concerned, the Policy requires “demonstrable preparations” to use the Disputed Domain Name. Therefore, in line with previous panel decisions, the Panel finds that mere assertions of intent are not sufficient to meet this burden.

Paragraph 4(c)(ii) is not relevant, as the Respondent has not submitted any evidence of being commonly known by the Disputed Domain Name.

As far as paragraph 4(c)(iii) is concerned, the Respondent cannot be said to be making a legitimate non-commercial or fair use of the Disputed Domain Name at the present time, regardless of his stated intentions, as the Disputed Domain Name is currently pointing toward a Register.com holding page containing what appear to be sponsored links.

However, the above circumstances are without limitation, and it is possible for a respondent to show rights and legitimate interests in a disputed domain name by demonstrating the existence of other circumstances. In the interests of fairness, the Panel therefore issued the Procedural Order referred to above. The Procedural Order requested that the Respondent clarify his intentions in relation to the registration of the Disputed Domain Name. However, the Respondent did not respond.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The third element that the Complainant must prove is that the Disputed Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). The Policy (paragraph 4(b)) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:

“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 website 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 website or location or of a product or service on your website or location.”

As far as paragraph 4(b)(i) is concerned, although the Respondent clearly made the Complainant an offer for sale, this was only after the Respondent’s receipt of the Complainant’s cease and desist letter. In order for the circumstances at paragraph 4(b)(i) to be fulfilled, the Respondent must have acquired the Disputed Domain Name primarily for the purposes of selling it to the Complainant or to a competitor of that Complainant for an amount in excess of the Respondent’s out-of-pocket costs. In view of the Respondent’s stated intention to use the Disputed Domain Name for a consumer discussion website, the Panel is not convinced that selling it for a profit to the Complainant or to a competitor of that Complainant was the Respondent’s primary intention at the time of registration.

In order for the Panel to find that the Respondent registered the Disputed Domain Name to prevent the Complainant from reflecting it in a corresponding domain name, as referred to in paragraph 4(b)(ii), the Respondent has to have engaged in a pattern of such conduct, and the Complainant has presented no evidence of this.

The Respondent is not a competitor of the Complainant and so paragraph 4(b)(iii) is not relevant in the present case.

Turning to paragraph 4(b)(iv), the Disputed Domain Name is currently pointing to a Register.com holding page which contains sponsored links, and so it is likely that the Respondent is in fact currently obtaining some commercial gain as a result of his ownership of the Disputed Domain Name. However, the Panel is not convinced that the Respondent is intentionally attempting to attract internet users to the website in question by creating a likelihood of confusion with the Complainant’s trademark specifically in order to be able to make such commercial gain. The wording of paragraph 4(b)(iv) requires the Respondent to be deliberately playing on the confusion created by the Disputed Domain Name in order to make a commercial gain (as evidenced by the word “intentionally”), and the Panel is unconvinced that this is the case.

If Internet users searching for information on the Complainant were to mistakenly access the Respondent’s website as a result of the confusing similarity of the Disputed Domain Name, the links (which relate primarily to blogging) are not clearly targeted at them. In the Panel’s view there is no link between the confusion and any resultant commercial gain, which would be merely collateral. Indeed, in the Panel’s experience the sponsored links were more than likely placed there automatically by the registrar.

The Panel therefore concludes that none of the circumstances in paragraph 4(b) have been proved. However, it should be noted that such circumstances are without limitation, and other factors noted by the Panel may lead to a finding of registration and use of the Disputed Domain Name in bad faith.

The Procedural Order requested that the Respondent clarify his intentions in relation to the registration of the Disputed Domain Name. In particular, it is not clear from the Respondent’s correspondence whether he intended to create the consumer discussion website himself, or whether he intended to sell the name to a third party who wished to do so. Selling the Disputed Domain Name to a third party who is not either the Complainant or a competitor of the Complainant is not covered by the strict wording of paragraph 4(b)(i), but could nevertheless be viewed as an indicator of bad faith at the discretion of the Panel. However, the Respondent did not respond.

Bad faith is often the most difficult element of the Policy to prove, as so much depends on the Respondent’s inner motivation. In this regard the Respondent’s correspondence to the Center rather ironically acts in his favour, as it demonstrates a lack of understanding of trademark law and the Policy in general. In short, bad faith cannot be equated with naivety or misunderstanding.

If the Respondent were to set up a consumer discussion website using the Disputed Domain Name, in accordance with the Respondent’s stated intentions outlined in his correspondence with the Complainant, would this be permitted under the terms of the Policy or not? In view of the current controversy surrounding Vioxx, a drug manufactured by Merck & Co., it is quite probable that such a website would contain criticism of Vioxx and thus of its manufacturer, as indeed it could also contain favourable comments on the drug.

The Panel is aware that the issue of criticism and free speech is one where panelists hold different views. On the one hand, certain panelists, mainly from the United States, are of the opinion that using a trademark as part of a domain name linked to a criticism website is acceptable, as long as such use is fair and non commercial (Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190). On the other hand, certain other panelists are of the opinion that the right to criticise does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark (Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314).

This particular Panel would hold that there can be no hard and fast rules as to whether or not a domain name containing a trademark may legitimately be used for the purposes of criticism. Whether or not such use is acceptable would depend on various factors, such as the nature of the domain name and the nature of the website itself. As far as the Disputed Domain Name is concerned, at the present time there is neither favourable comment nor criticism so the issue need not be considered here.

The Panel is not convinced that the public would automatically expect the Disputed Domain Name to belong to the Complainant. In the opinion of the Panel, a trademark followed by the word “blog” would not automatically convey that the corresponding website was run by that particular trademark owner, but could potentially convey that such a website contained information about the trademark owner instead. In this particular case it is not possible to comment on the nature of the website itself, given that it is currently pointing towards a Register.com holding page. However, what is more important to note here is that it is simply not possible to assert that one cannot conceive of a plausible circumstance in which the Respondent could legitimately register and use Disputed Domain Name.

The Panel is therefore of the opinion that there is insufficient evidence to conclude that the Disputed Domain Name was registered and is currently being used in bad faith, and nor does it have enough information concerning the Respondent’s intentions to make such a finding.

The Panel may well have found quite differently in other circumstances, for example if the website associated with the Disputed Domain Name contained links to other websites offering pharmaceutical products for sale by the Complainant’s competitors, or counterfeit products, or if the Complainant had produced evidence that the Respondent had engaged in a pattern of bad faith conduct. However, no such circumstances are currently present.

The Panel therefore concludes that the Complainant has not succeeded in proving that the Disputed Domain Name has been registered and is being used in bad faith.

The Panel would also stress that the Policy was originally intended to deal with simple and obvious cases of cybersquatting, and is not the most appropriate forum for more complex disputes. Such disputes may often be better handled by national courts.

8. Decision

For all the foregoing reasons, the Complaint is denied.

David Taylor
Sole Panelist

Dated: February 17, 2006