WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Merck KGaA v. The programmer adviser Case No. D2009-1647 1. The Parties
The Complainant is Merck KGaA of Darmstadt, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is The programmer adviser of Bophut, Samui, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2009. On December 5, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 14, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2010.
The Center appointed J. Christopher Thomas as the sole panelist in this matter on January 15, 2010. 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 one of the largest pharmaceutical groups of companies in Europe. It is the legal successor of Covion Organic Semiconductors GmbH (COS, a Germany based company which manufactured light emitting polymers for both the flat panel display and opto-electronic sectors). In March 2005, COS was acquired by the Complainant and integrated into the Complainant's Liquid Crystal Division. In August 2005, COS was renamed to Merck OLED Materials GmbH (MOM).
The Complainant owns numerous registered trademarks for COVION. A list of Complainant's trademark registrations was submitted with the Complaint. The trademarks are still registered in the name of COS and MOM, respectively.
Trademark
Registration No.
Date of priority
Area
Classes
COVION
001988856
December 7, 2000
EU
9,10,11
COVION
005004809
March 22, 2006
EU
1,17
COVION
00905898
November 10, 1999
TW
17
COVION
00949106
November 10, 1999
TW
1
COVION
272263
August 12, 1999
US
1,17
The disputed domain name was formerly owned by Aventis R&T Deutschland and was transferred to the Complainant on or about March 15, 2007. The disputed domain name registration thereafter lapsed due to a failure to renew it and the domain name was owned by several different persons/entities.
The Respondent is using the disputed domain name in connection with the former website of COS, which is still available in the Internet Archive database. The only difference between the Respondent's website and the original one is that the Respondent has added advertisements for third parties' products on the website. 5. Parties' Contentions A. Complainant
With respect to the issue of whether the disputed domain named is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant submits that is identical to Complainant's COVION mark. The specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
Turning to the second issue, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating any of the Complainant's marks. The word “covion” is said to be highly distinctive and obviously connected with the Complainant's COVION mark and it is not a word that a trader would legitimately choose unless it was seeking to create an impression of an association with the Complainant.
Moreover, there is no evidence of the 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. The Respondent is using the domain name for a website which is virtually identical to the website previously operated by the Complainant's legal predecessor. Such use does not constitute a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. Further, there is no evidence to suggest that the Respondent trades under the disputed domain name or a name corresponding to the disputed domain name, or is commonly known by said domain name or a name corresponding to the disputed domain name, or is making a legitimate non-commercial or fair use of the disputed domain name.
Turning to the third issue, it is asserted that the Respondent has registered and is using the disputed domain name in bad faith. It is asserted that the Respondent does not conduct any legitimate commercial or non-commercial business activity. The Complainant's distinctive COVION mark is long established. It is therefore inconceivable to the Complainant that the Respondent registered the disputed domain name unaware of the Complainant's rights in the COVION mark. This finding is supported by the fact that the Respondent uses the domain name to operate a website which is a copy of the website which was used by the Complainant's legal predecessor. This, in the Complainant's submission clearly indicates that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, or to otherwise profit commercially from likely Internet user confusion of the disputed domain name with the Complainant and its mark.
The Respondent uses the disputed domain name for the operation of a copy of the Complainant's former website which additionally includes advertising links to third parties' websites. It is therefore clear that the Respondent's purpose is, by creating a likelihood of confusion with Complainant's mark, to divert traffic intended for Complainant's site to his own, with the intent to earn click-through revenues from the diverted traffic.
All of the foregoing reasons, the Complainant submits, it is established that the Respondent has registered and used the domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is identical to the mark in which the Complainant has rights. The specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. B. Rights or Legitimate Interests
Turning to the second issue, the Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent has not taken issue with this assertion. It is accepted that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating any of the Complainant's marks. The word “covion” is plainly highly distinctive and connected with the Complainant's COVION mark and the Panel agrees that it is not a word that a trader would legitimately choose unless it seeking to create an impression of an association with the Complainant.
Moreover, there is no evidence of the 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. The domain name is being used for a website which is virtually identical to that once operated by the Complainant's legal predecessor. This is not a bona fide offering of goods and services.
There is no evidence that the Respondent trades under the disputed domain name or a name corresponding to the disputed domain name, or is commonly known by said domain name or a name corresponding to the disputed domain name, or is making a legitimate non-commercial or fair use of the disputed domain name. C. Registered and Used in Bad Faith
Turning to the third issue, the Panel is of the view that the disputed domain name is being used in bad faith. The Complainant's mark is long established and the Panel agrees that it is inconceivable in the circumstances that the Respondent registered the disputed domain name unaware of the Complainant's rights in the mark. The disputed domain name is being used for the operation of a copy of the Complainant's former website which additionally includes advertising links to third parties' websites.
The Panel agrees therefore that the Respondent's purpose is to create a likelihood of confusion with Complainant's mark and thereby divert traffic intended for Complainant's site to its own, with the intent to earn click-through revenues from the diverted traffic. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
J. Christopher Thomas, QC
Sole Panelist
Dated: January 29, 2010
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