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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Merck KGaA v. Taha Chhipa

Case No. D2004-0905

 

1. The Parties

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

The Respondent is Taha Chhipa, Karachi, Pakistan.

 

2. The Domain Name and Registrar

The disputed domain name <merck-euro.info> is registered with Key-Systems GmbH dba domaindiscount24.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2004, (the “Original Complaint”). The Original Complaint named Muhammad Arshad of Karachi, Pakistan as Respondent. On November 2, 2004, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. The request sought, inter alia, confirmation that Mr. Arshad was the current registrant of the disputed domain name. On November 9, 2004, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response. The Whois record at the end of the response showed, as at November 8, 2004, the domain name holder to be Taha Chhipa and provided inter alia the contact details for the administrative, billing, and technical contact of Taha Chhipa.

On November 8, 2004, the Complainant notified the Center that the disputed domain name had supposedly been transferred from Mr. Arshad to Taha Chhipa that day, a week after submission of the Complaint to WIPO and in breach of paragraph 8(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) forbidding any transfers of domain names during a UDRP administrative proceeding. On November 12, 2004, the Center replied, informing the Complainant that the domain name was locked and that the Center was investigating the transfer issue with the registrar. Those investigations resulted in confirmation by the registrar that the transfer to Taha Chhipa, the current registrant and Respondent in this proceeding, had occurred on November 1, 2004, prior to the registrar’s receipt of notification of this proceeding.

On November 15, 2004, the Center informed the Complainant that “the domain name transfer took place prior to the registrar’s receipt of the notification of the proceeding (apparently November 1, 2004)”. The Center notified the Complainant that the Complaint was administratively deficient in two respects. First, the Complaint needed to refer to the new registrant of the disputed domain name, Taha Chhipa. Second, the Complaint needed to address the issue of mutual jurisdiction.

On November 16, 2004, the Complainant sought, and on the same day was granted, an extension for responding to the Complaint Deficiency Notice until November 25, 2004. On November 22, 2004, the Complainant filed its amended Complaint (the “Amended Complaint”). The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of 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 December 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2004.

The Center appointed David A.R. Williams, Q.C. as the sole panelist in this matter on January 10, 2005. The Panel finds that it was properly constituted. On January 10, 2005, the Panel 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 Merck KGaA, a German corporation which has its principal place of business at Darmstadt, Germany. The Complainant operates worldwide in the business sectors of pharmaceuticals, laboratory and specialty chemicals. The name MERCK was first associated with pharmaceutical goods in 1668, and was first used as a trademark in 1850 when the company E. Merck, the Complainant’s predecessor, was founded.

The Complainant is the exclusive owner of over 500 trademark registrations for the trademark MERCK® in 171 countries, including a Community trademark and an International Registration for MERCK®. The trademark MERCK® is registered in international classes 1, 2, 3, 5, 9, 10, 16, 29, 30, 35 and 42. The Complainant further owns 354 domain name registrations containing its trademark MERCK. These include a number of domain names referring to “merk” in combination with “euro” or “europe”, such as <merckeurolab.info>; <merckeurope.com>, <merckeurolab.at>, <merckeurolab.be>, <merckeurolab.cz>, <eurolabmerck.cz>, <merckeurolab.dk>, <merckeurolab.hu>, <merckeurolab.es>, <merckeurolab.com.es>, <merckeurolab.org.es>, <merckeurope.net>, <merckeurope.com>, <merckeurope.org> and <merckeurolab.fi>.

The Complainant as well as the American company Merck & Co, Inc share the right to use the trademark MERCK® for the following historical reason. In 1850 Heinrich Emanuel Merck founded the business partnership E. Merck. On or about 1889 Heinrich Emanuel Merck’s grandson, George Merck, took over the office in New York and established Merck & Co. In the United States of America Merck & Co became an independent American company and has since become one of the largest pharmaceutical companies in the world. Both Merck KGaA and Merck & Co agreed that the name “Merck” may be exclusively used in the United States of America and Canada by Merck & Co, and in Europe and the rest of the world by Merck KGaA. For that reason Merck & Co sells its products with the label Merck Sharp & Dohme, except in Germany where it uses the label MSD Sharp & Dohme GmbH. The Complainant’s American branches are named EMD. The Internet address of Merck & Co is “www.merck.com” whereas the Complainant’s is <www.merck.de>.

The domain name <merck-euro.info> was registered by Mr. Arshad on September 24, 2004.

On October 27, 2004, the Complainant sent a cease and desist letter by email and certified mail addressed to Mr. Arshad but for the attention of a Mr. Florencio. The letter requested that the domain name be assigned to the Complainant. (Original Complaint, Exhibit 6.)

In his email reply of October 28, 2004, Mr. Arshad requested an amount of USD 2,000 for the transfer of the domain name to the Complainant. Mr. Arshad said:

“First of all your letter address to “Mr. Florencio” I don’t know who is that. I am Arshad and I don’t have any objection to transfer domain to your company but I need US$2000 to cover my setup and other management expenses. If you go to UDRP or any other legal matter you will pay more then 2000 if you are agree then let me know I will start transaction at escrow.com Also in domain market I will get this amount easily as name of big company.

Regards

Arshad” (Original Complaint, Exhibit 7.)

On November 1, 2004, Mr. Arshad sent a second email to the Complainant requesting USD 1,000 for the transfer of the domain name:

“Still if you did not pay a fee then I will transfer a domain name in just us$1000 which is less then a fee of wipo”. (Amended Complaint, Exhibit 8.)

On November 16, 2004, Mr. Arshad offered to transfer the domain name to the Complainant from the “new owner”:

“If you need domain fast and with 100% surety then let me know I can offer my service in getting a domain to you from new owner in just 1100”. (Amended Complaint, Exhibit 9.)

The sender of the email was recorded in all three emails at the header as “Muhammad Arshad Chhipa”.

 

5. Parties’ Contentions

A. Complainant

The Complainant requests the Panel to direct that <merck-euro.info> be transferred to the Complainant and it invokes the following legal grounds as the basis of the relief sought:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The disputed domain name is partly identical to the Complainant’s trademark MERCK.

The suffix “euro” provides a local reference to the territory of the European Union. The Complainant has registered a number of domain names referring to a specific area, country or city such as <merckeurope.com>, <merckkorea.com>, <merckchina.com>, <merckegypt.com> and <merckdarmstadt.com>.

Internet users would expect the Complainant to be the owner of the domain name <merck-euro.info>.

The term “euro” is not inventive enough to differentiate the domain name <merck-euro.info> from the Complainant’s trademark MERCK. As a geographical connecting factor to the continent of Europe the term “euro” has to be disregarded when evaluating the similarity between the Complainant’s trademark and the contested domain name.

2. The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply a domain name incorporating any of those marks.

Despite the fact that the Complainant closely monitors the use and any infringements of its trademark, it was never aware of the Respondent using a trademark or service mark identical or similar to MERCK by which the Respondent may have come to be known.

The Respondent has never used the domain name in connection with a bona fide offering of goods or services. According to the Complainant’s information the domain name <merck-euro.info> has referred Internet users to the registrar’s website since its registration on September 24, 2004. Simple stocking or parking of a domain name by the Respondent does not create any right or legitimate interest in the domain name: Audi AG v Hans Wolf, WIPO Case No. D2001-0148.

3. The domain name is registered and is being used in bad faith

The domain name was registered by Mr. Arshad on September 24, 2004, in bad faith.

The Complainant’s trademark is well known throughout the world. It is therefore likely that the Respondent was aware of the Complainant’s mark at the time of registration.

The domain name was then transferred to the Respondent and used in bad faith by the Respondent.

The Complainant does not know exactly when the domain name was transferred. The registered owner of the domain name on November 1, 2004, was Mr. Arshad (Amended Complaint, Annex 1b.) The domain name was transferred to the Respondent after the Complainant refused Mr. Arshad’s offer.

After receipt of the Complaint on November 1, 2004, Mr. Arshad’s second email dated November 1, 2004, requesting USD 1,000 for the transfer of the domain name, shows that Mr. Ashrad might still have owned the domain name after receipt of the Complaint.

Mr. Arshad’s email of November 16, 2004, offering to transfer the domain name to the Complainant, shows at least a relationship between the Respondent and Mr. Arshad.

Further evidence of a connection between Mr. Arshad and the Respondent is that the domain name has been transferred to the Respondent and both persons are citizens of Karachi, Pakistan.

Mr. Arshad and the Respondent registered the domain name in order to sell the domain name to the Complainant. This is evidenced by Mr. Arshad’s statement that he would get USD 2,000 for the domain name as it contains the name of a big company.

B. Respondent

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

 

6. Discussion and Findings

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(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 domain name; and

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

A. Identical or Confusingly Similar with a mark in which the Complainant has rights

To succeed under paragraph 4(a)(i) of the Policy, a Complainant must establish that (a) the domain name is identical or confusingly similar with the Complainant’s mark, and (b) that it has rights in the claimed trademark or service mark.

As to the first limb, the Panel upholds the Complainant’s submission that the disputed domain name is identical or confusingly similar with the Complainant’s trademark.

The domain name <merck-euro.info> comprises the Complainant’s mark, the geographic indicator “euro”, and the generic top-level domain space “.info”.

It has been held in several WIPO decisions that, in the absence of exceptional circumstances, a domain name comprised of the Complainant’s trademark followed by a geographic indicator renders the disputed domain name confusingly similar with the Complainant’s mark. The Panel refers to the three cases Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363; Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507, and Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601, mentioned in the Complaint.

In Dell Computer Corporation the majority of the contested domain names comprised of the Complainant’s trademark followed by a geographic identifier. The Panel held that such domain names were confusingly similar, following Bloomberg L.P. v Sein M.D., NAF case No. FA0101000096487, where it was said: “The mere addition of a geographic identifier does not render the distinctive trademark BLOOMBERG diminished, nor does an addition of the words China and Japan controvert the ownership of trademark service mark rights in the Complainant.”

In Honda Motor Company Limited the disputed domain name <hondaindia.com> was held to be identical and confusingly similar to the Complainant’s trademark, HONDA. The Panel said: “Complainant’s trademark is famous around the globe. The addition of a geographical suffix, therefore, does not sufficiently alter the underlying mark to which it is added.”

In Volvo Trademark Holding AB the disputed domain name <volvopolska.com> was held to be identical and confusingly similar to Complainant’s trademark, VOLVO. The Panel said:

“It has previously been held in very many other proceedings that a domain name created by appending a geographic term to another’s trademark or service mark does not change the domain name from being confusing[ly] similar to the trademark.”

The addition of the generic top-level domain space “.info” is not sufficient to distinguish the domain name from the trademark.

The Panel also finds that the Complainant has rights in its trademark MERCK. The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, confirmed that rights in a trademark or service mark may be acquired through use or through registration:

“…the Policy affords protection to those having common law trademark rights (acquired through use) as well as those having rights in registered trademarks: see, for example, David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO No. D2000-1459, … it is not necessary under the Policy that the Complainant have trade mark rights in any particular country, so long as the Complainant has some trade mark rights.”

As mentioned in section 4 above, the Complainant has submitted evidence of use of its mark in connection with pharmaceutical products for over 155 years and has registered its mark in 171 countries.

B. Rights or Legitimate Interests in respect of the domain name

It is generally accepted that under paragraph 4(a)(ii) of the Policy, once the Complainant has made a prima facie case, the burden of production then shifts to the Respondent to rebut the presumption by showing concrete evidence that it has rights to or legitimate interests in the domain name. This is reinforced by the fact that paragraph 4(c) of the Policy, entitled “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint”, discusses the kind of evidence the Respondent should provide to show that it has rights to or interests in the domain name. The burden of proof, however, does not shift as the Policy makes it clear that “the Complainant must prove that each of these three elements are present.” (See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270).

The three circumstances listed in paragraph 4(c) (in particular but without limitation) are as follows:

“(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) has been commonly known by the domain name, even if you have acquired no trademark or service rights; or

(iii) you are making a legitimate noncommercial 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.”

The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interests in the domain name. There is no evidence that the Respondent has ever used, or has made preparations to use, the domain name in connection with a bona fide offering of goods or services; nor that the Respondent has been commonly known by the designation MERCK; nor that the Respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain. The Panel upholds the Complainant’s case that the Respondent is merely holding this domain name and follows Audi AG v. Hans Wolf, WIPO Case No. D2001-0148, in holding that such stocking does not create any right or legitimate interest in the domain name.

In reaching this conclusion the Panel visited <merck-euro.info>. The domain name did not lead to an active website but merely displayed the words “Coming Soon” and “Contact taha@[e-mail]”. (The Panel was entitled to conduct this enquiry: paragraph 10(a) of the Rules entitles the Panel to “conduct the administrative proceeding in accordance with the Policy and these Rules”. It was concluded in InfoSpace.com, Inc. v Hari Prakash, WIPO Case No. D2000-0076, and affirmed in Eroski, S Coop v Getdomains Ishowflat Ltd, WIPO Case No. D2003-0209, that paragraph 10(a) “empowers the Panel to independently search over the Internet, in order to obtain as much information as required to render a decision” (in the latter case the Panel visited the website of the Respondent)).

The Respondent’s failure to file a Response means that it has failed to rebut the prima facie case against it.

C. Registered and Used in Bad Faith

It is accepted that the requirements of registration and use in bad faith under paragraph 4(a)(iii) are conjunctive: the Complainant must prove that “the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith” Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453.

It is not permissible to equate transfer with registration to overcome the conjunctive requirement: PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338. In that case the Panel conducted a search of the WIPO case database and found that “no cases … have been indexed to the effect that abusive renewals (or transfers) have been considered equivalent to abusive registration.”

The conjunctive requirement of paragraph 4(a)(iii) can be resolved by looking into the reality of the transferal of the domain name to the Respondent. If there has been a transfer of the registration of the disputed domain name after the administrative proceeding has been commenced, then there is a clear case of “cyberflighting” and this itself constitutes bad faith. Transfer orders have been made against the nominated registrant at the time when a Complaint was received by the Registrar: Unilever PLC v. ABC Corp. WIPO Case No. D2003-0164.

In this respect the Panel notes that there is conflicting evidence as to when the transfer of the disputed domain name from Mr. Arshad to the Respondent took place. In a query to the Registrar the Center suggested that on November 8, 2004, the Respondent in this case, Muhammad Arshad, transferred the domain name from himself to Taha Chhipa, at a similar address in Karachi, Pakistan. This transfer occurred after the Respondent and registrar were made aware of this proceeding and apparently is in breach of paragraph 8(a) of the UDRP forbidding any transfers of the domain name during a UDRP administrative proceeding.

In its response the register said that the transfer of the domain name occurred on or before November 1, 2004. The Center accepted this evidence and required Complainant to amend the Complaint.

The Whois database search results show the registrant of the domain name on November 1, 2004, to be Mr. Arshad (Original Complaint, Exhibit 1), and the registrant on November 8, 2004, to be the Respondent (Amended Complaint, Exhibit 1b).

This conflicting evidence itself is indicative of cyberflight. Moreover, the evidence suggests that there was no effective transfer of the domain name from Mr. Arshad to the Respondent and the two should, for the purposes of this administrative proceeding, be treated as the same entity. This is indicated by Mr. Arshad’s offers after the alleged transfer of the domain name to sell the domain name to the Complainant. As noted in section 4 above, in each email the sender was recorded as “Muhammad Arshad Chhipa”, a combination of the original registrant and the Respondent’s name.

Paragraph 14(b) of the Rules permits the Panel to draw such inferences as it considers appropriate from a party’s failure to comply with a provision of, or requirement under the Rules. It could be inferred from the Respondent’s failure to file a Response that the Respondent does not dispute the allegations in the Complaint of the links between the Respondent and the original registrant.

British Sky Broadcasting Croup plc v Mr. Pablo Merino and Skyservices S.A., WIPO Case No. D2004-0131, has similarities with the present case. Also in that case the domain name was transferred to a new Respondent shortly before the Center received formal notice of the Complaint. The Panel summarized the facts as follows:

“Domain names are registered and used in bad faith, then, after a proceeding under the Policy is launched but before the official notification by the Center to the registrar, a purported transfer of the domain name to a third party is registered with the Registrar…”

The Panel in that case had no difficulty finding that both the transferor and transferee should be treated as the same person for the purpose of the administrative proceeding. Moreover, the Panel found that cyberflying and providing false contact information for inclusion in the Whois database has also been interpreted as a sign of bad faith.

Similarly in BolgnaFiere S.p.A v Currentbank-Promotools, S.A. Inc/Isdro Sentis a/k/a Bars, WIPO Case No. D2004-0830, a case where the Respondent re-registered the domain name under a different name after receiving email notification from the Complainant but before the registrar could lock the domain name, the Panel had no difficulty finding that the bad faith requirement of paragraph 4(b)(i) was satisfied:

“This violated paragraph 8 of the Policy and created confusion as the Center and the registrar tried to figure out why the Respondent’s name and contact details changed between the time the Complainant filed the Complaint and the time when the Center sought to verify the Respondent’s identity with the registrar. The Respondent then stated in the Response that he was not the owner of the disputed domain name but that the owner was a “client” of his. … The Panel is aware that this particular ground for finding bad faith is not one of the enumerated grounds in the policy, but these grounds are non-exhaustive, and paragraph 15(a) of the Rules allows the Panel to find additional grounds for bad faith where appropriate.”

In another case of cyberflight, ABB Asea Brown Boveri Ltd. V. Yvonne Bienen, Bienen Enterprises, WIPO Case No. D2002-0178, the Panel treated the Respondent and the original registrant as the same entity: “The name, Yvonne Biennen, is either an alias of the original registrant or an alter ego of the original registrant, being the name of another entity selected by the original registrant to suit his cyberflying purpose.”

Accepting that the Respondent and the original registrant are, for the purposes of this administrative proceeding, one and the same entity, there is clear evidence that the Respondent registered, and then used, the disputed domain name in bad faith.

First, the Panel is satisfied that the Complainant’s trademark was sufficiently well known for Mr. Arshad to have had actual or constructive knowledge that MERCK was the Complainant’s trademark at the time of registration.

Second, paragraph 4(b)(i) of the Policy specifically states that circumstances indicating that the Respondent has registered 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 for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, shall evidence the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. The repeated email offers to sell/transfer the domain name to the Complainant clearly come within this example of bad faith. The Panel is not convinced that the original offer of USD 2,000 comprised of legitimate “setup and other management expenses”– indeed the falsity of this claim was revealed by the subsequent lower offers of USD 1,000 and USD 1,100.

The Panel finds that the conjunctive elements of registration and use in bad faith under paragraph 4(a)(iii) of the Policy have been satisfied.

 

7. Decision

For all the abovementioned reasons, the Panel decides that the domain name registered by the Respondent, <merck-euro.info> is identical or confusingly similar to the Complainant’s mark MERCK®, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith.

In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the domain name <merck-euro.info> be transferred to the Complainant.


David A.R. Williams, Q.C.
Sole Panelist

Date: January 24, 2005

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0905.html

 

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