The Complainant is Merck KGaA of Darmstadt, Germany, represented by Patent- und Rechtsanwälte Bettinger Scheffelt Kobiako von Gamm, Germany.
The Respondent is Rylle Aldrin Mamuyac of Salta, Argentina. 2. The Domain Name and Registrar
The disputed domain name is registered with 101domain GRS Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2018. On February 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 26, 2018.
The Center appointed Peter Wild as the sole panelist in this matter on April 6, 2018. 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 German multinational chemical, pharmaceutical and life sciences company headquartered in Germany and is one of the largest pharmaceutical companies in the world. The Complainant owns trademark registrations for the trademark MERCK in most countries, e.g. MERCK in Argentina 3037986 filed October 13, 2010 registered November 4, 2011 and MERCK in Germany filed January 11, 1900, registered September 24, 1900. The Respondent is a resident of Argentina and according to the WhoIs database registered the disputed domain name on December 7, 2017. The disputed domain name does not resolve to an active page but according to evidence provided by the Complainant was used for creating email addresses from which emails redirecting financial contact information were sent to customers of the Complainant. 5. Parties' Contentions A. Complainant
The Complainant claims that its more-than-a-century-old trademark MERCK is protected on an almost worldwide basis and is well-known, a fact confirmed by court and UDRP decisions. According to the Complainant, the trademark has been used for more than 100 years and is now actively used in around 180 countries. The Complainant also owns and uses, among many other domain names with the element MERCK, the domain name . The disputed domain name is younger, confusingly similar and registered and used in bad faith by the Respondent. In particular, the Complainant alleges that the disputed domain name was used fraudulently for creating email addresses from which emails redirecting financial contact information were sent to customers of the Complainant. Furthermore, there was, according to the Complainant, a pay-per-click ("PPC") website, directing the user to unrelated third party commercial websites active under the disputed domain name which was taken down after this Complaint was filed. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns numerous trademark registrations for the word "Merck" in many jurisdictions throughout the world. The Complainant's trademarks MERCK have acquired protection prior to the registration of the disputed domain name. The disputed domain name is confusingly similar to the Complainant's trademark MERCK as it contains the word "Merck" in its entirety. The similarity between the Complainant's MERCK trademarks and the disputed domain name is not eliminated by the addition of the term "groups" which is purely descriptive and differs from Complainant's domain name merely by the addition of the letter "s". Such differences are insufficient to distinguish the disputed domain name from the Complainant's MERCK trademark (see Telfonaktiebolaget L M Ericsson (Ericsson) v. Eighty Business Names,WIPO Case No. D2010-1485).
Furthermore, the similarity between the Complainant's MERCK trademarks and the disputed domain name is not eliminated by the addition of the generic Top-Level Domain ("gTLD") . It is the unanimous view of UDRP panelists that the gTLD in a domain name is disregarded under this test, except in certain cases where the applicable gTLD may itself form part of the relevant trademark (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")); Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363; Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253.
The Panel finds that Internet users are likely to regard the term "groups" within the disputed domain name as descriptive of a website where they could find information about the Complainant's group of businesses and the main distinctive element of the disputed domain name to be "merck".
For these reasons the Panel finds:
The Complainant has rights in respect of the Complainant's trademark. The disputed domain name is confusingly similar to the Complainant's trademark in so far as it contains the distinctive element "merck" accompanied by the descriptive and generic term "groups".
Accordingly, the Panel is satisfied that the first element of the Policy is met. (Policy, paragraph 4(a)(i)). B. Rights or Legitimate Interests
According to the Complainant, the Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of its MERCK trademarks in a domain name or otherwise. The Complainant asserts that the Respondent was using the disputed domain name for a PPC website referring to unrelated third parties. In addition, the disputed domain name was used to create email addresses which in turn were used to send emails to customers of the Complainant, using the Complainant's name, address and contact details to create the impression that the email was sent from an employee of the Complainant, which was not the case. From the submitted email threads it appears that this must have been done in an attempt of inducing these customers to change payment details for orders from the Complainant, probably with the attempt to redirect such payments to the Respondent. In the Complainant's view, this amounts to a deliberate and fraudulent attempt to take commercial advantage of the Complainant's trademark without the Complainant's consent. Whether the Respondent has rights or legitimate interests in the disputed domain name must be assessed against the Complainant's rights taking into account the manner in which the Respondent uses the disputed domain name. In these circumstances, it is difficult to see how the Respondent's conduct could be characterized as legitimate and thus permissible. In the absence of the Respondent's comments, and in light of the evidence submitted by the Complainant, the Panel finds that Complainant has satisfied its burden to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the second element of the Policy has been met. (Policy, paragraph 4(a)(ii)) C. Registered and Used in Bad Faith
The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant's distinctive trademark MERCK is famous worldwide and also in Argentina where the Respondent appears to be is located. The company name and trademark MERCK are distinctive and have been strengthened with continuous and extensive use over more than 100 years. It is therefore hard to imagine that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its MERCK trademarks, especially as the Respondent later has been using the Complainant's details such as address and telephone numbers on the emails which were sent out, using email addresses based on the disputed domain name. (See Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269, citing Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415).
Given this subsequent use of the disputed domain dame for fraudulent activities, the Respondent's registration of the disputed domain name with knowledge of the Complainant's rights is evidence of bad faith registration of the disputed domain name with regard to Policy paragraph 4(a)(iii). (See Microsoft Corporation v. Cedric Thompson,WIPO Case No. D2004-1097: "It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant's ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental").
According to the record, the Respondent has been using the disputed domain name as basis for email addresses which were used to contact customers of the Complainant, pretending in a first step to be an employee of the Complainant and announcing that new payment details will be sent, probably changing the correct information (which would have resulted in proper payments to the Complainant) to account information leading to payments to an account of the Respondent. This second step never took place as the Complainant's customer reverted to the Complainant asking about the legitimacy of the Respondent's email. This behavior of the Respondent was clearly an attempt, by pretending to be part of the Complainant's group, to re-channel payments in an illegitimate way, to result in commercial gain for the Respondent. This fact alone shows that the Respondent was well aware of the Complainant and its business and trademark when it registered the disputed domain name. The Respondent's bad faith is evident. Prior UDRP panels deciding under the Policy have held that use of a domain name for fraudulent activities is inherently in bad faith. (See Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Technonics Solutions,WIPO Case No. D2017-1336).
There is also a presumption that the Respondent registered the disputed domain name in the knowledge of the Complainant's MERCK trademark, with the intention to gain commercially by hosting PPC links whose ability to generate revenue depended on the ability of the disputed domain name to attract Internet users seeking information on the Complainant. UDRP panels have routinely held that such behavior constitutes bad faith use of the disputed domain name, particularly as it demonstrates that the respondent was aware of the complainant and the trademark value of the domain. (See for example, Sara Lee Foods, LLC v. Qais Satarzadh,WIPO Case No. D2015-0918).
In light of the history and presence of the Complainant's MERCK trademark worldwide, including in Argentina, there simply cannot be any actual or contemplated good faith use of the disputed domain name by the Respondent or a third party other than the Complainant as they would invariably create a false association with the Complainant that would result in misleading diversion and taking unfair advantage of the Complainant's rights.
In light of all these elements, it is reasonable to infer that the Respondent wishes to take advantage of Internet users who are customers of the Complainant. In the present set of facts, it is inconceivable how the Respondent would be able to explain as to how and why it chose the disputed domain name in good faith and why confusion and deception is unlikely to occur. The Panel therefore finds that the Respondent registered and is using the disputed domain name in bad faith. That is, so as to take advantage of Internet users who know and trust the Complainant's trademark and to disrupt the Complainant's business.
The Respondent did not submit any explanation or possible justification for its choice of the disputed domain name.
In light of these factors, the third element of the Policy has been met and this Panel decides that the disputed domain name was registered and is being used in bad faith, in accordance with paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant.
Peter Wild
Sole Panelist
Date: April 10, 2018
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