Nominet UK Dispute Resolution Service

DRS 04590

Merck KGaA
v
Solo

Decision of Independent Expert

1.	PARTIES
Complainant:  Merck KGaA

Country:	Germany	

Respondent:	Solo

Country:	Germany

2.	DOMAIN NAME
This complaint concerns the domain name merck.co.uk (the “Domain Name”):

3.	pROCEDURAL BACKGROUND
3.1	A Complaint in respect of the Domain Name under Nominet UK's Dispute Resolution Service Policy (the “Policy”) was received from the Complainant on 2 April 2007.  Nominet forwarded the Complaint to the Respondent. No Response was received. 
3.2	The dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Procedure (the “Procedure”) on 10 May 2007. I was appointed as Independent Expert on 14 May 2007 and confirmed to Nominet that I was independent of the parties and I knew of no other facts or circumstances that might call into question my independence in the eyes of the parties.
4.	Outstanding Formal/Procedural Issues (if any)
4.1	Under Paragraph 5a of the Procedure the Respondent was required to submit a Response to the Complaint to Nominet by 27 April 2007. The Respondent has failed to do so.
4.2	Paragraph 15b of the Procedure provides as follows: "If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint".
4.3	It is my view that there are no exceptional circumstances. The proceedings have been communicated by post to the address given by the Respondent as its address (electronic communication appears to have been automatically rejected) and the Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.
4.4	The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties' submissions (which consists of the Complaint and its Annexes in this case) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as he considers appropriate (paragraph 15c of the Procedure).
5.	The Facts
5.1	The filed evidence establishes that the Complainant is a very well known international chemical and pharmaceutical business and that it has either directly or through subsidiary businesses carried out significant levels of business (at least in excess of £10 million per annum) in the UK, supported by significant advertising. It owns a number of UK registered trademarks in respect of the word merck, for example no 1123545. covering, amongst other things, “pharmaceutical substances”.
5.2	The Domain Name comprises the word merck with the non specific .co.uk designations. The word merck is not a word that (so far as I am aware) has any meaning in the English language. The Domain Name was registered on the 7 June 2006.
5.3	The Complaint does not provide any information at all as to whether the Domain Name is being used, and if so how.
5.4	A request from the Complainant to the Respondent for return of the Domain Name has not been answered.
5.5	The Complaint establishes that the respondent has also registered msnchat.co.uk, chubs.co.uk, elefant.co.uk, goodle.co.uk and ebai.co.uk. 
6.	
The Parties’ Contentions
Complainant

6.1	The Complaint asserts that the Respondent’s use of the Domain name amounts to the English tort of passing off. It also asserts that the Respondent is not connected with the Complainant and the registration is abusive as it was primarily registered to stop the Complainant effecting its own registrations.
6.2	The Complaint also asserts that the Respondent has registered a number of other well known names in which it can have no legitimate interest.  
Respondent

6.3	As indicated above no Response has been filed.

7.	discussion and Findings:
	General

7.1	The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:
(a)	the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(b)	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

7.2	“Rights” are defined in the Policy and in the Procedure.  Rights “includes, but is not limited to, rights enforceable under English law.”  The filed evidence established that the name "Merck" has been widely used in the UK and that the Complainant owns a number of UK registered trade marks in respect of the word.  I am satisfied that the Complainant has Rights in the name merck.
7.3	The Domain Name is identical to the name in which the Complainant has rights.
7.4	Accordingly I find that the Complainant does have Rights in respect of a name which is identical to the Domain Name. 

Abusive Registration

7.5	Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:
(a)	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or

(b)	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

7.6	Paragraph 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These include 
(a)	"circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name" (paragraph 3aiA)"; and

(b)	“The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent  is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern”; (paragraph 3aiii)".

7.7	There is no evidence at all to suggest that the Respondent has any association with, or interest in, the word "merck".  I have not been provided with any details as to what, if any, use the Respondent has made of the Domain Name.
7.8	I do not need to decide whether the use in question amounts to passing off (the Complainant relies upon the doctrine in the well know “British Telecommunications plc v One in a Million” case in this respect). I am not convinced that the Complainant has established that the Respondent’s registration was intended to stop the Complainant registering its name, as I have no details at all about what use, if any, the Respondent has made of the Domain Name.  I do however take account of the following facts: (a) the Complainant is very well known and has a substantial business; (b) the word merck is not a normal English word; and (c) the Respondent has been offered an opportunity to provide any explanation it might have, but has not done so. Given these facts I am prepared to infer that the Respondent did effect the registration of the Domain Name because of its identity with the Complainant’s name and that its purpose in doing so was because it hoped that the Complainant would pay it more than its out of pocket costs in order to gain control of the Domain Name.  I accordingly find evidence that the registration was abusive as provided under paragraph 3aiA of the Policy.
7.9	If there was doubt in this I also take account of the fact that the Respondent has registered a number of other domain names which as a matter of general knowledge appear (again absent any information the Respondent might have provided) to correspond to well known names in which the respondent has no apparent rights  – of those identified above at least msnchat.co.uk (apparently relating to the well known msn chat service) and ebai.co.uk (apparently relating to the well known eBay service) and goodle.co.uk (apparently relating to the well known Google service) fall in this category, admittedly in the latter two cases being misspellings of the well known names rather than literally identical.  I conclude the Respondent is engaged in a pattern of registrations of the type referred to in paragraph 3a iii of the Policy and this is further evidence that the registration of the Domain Name was abusive.
8.	Decision
Accordingly, I find that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.  I therefore determine that the Domain Name should be transferred to the Complainant.

………………………………
Nick Gardner

5 June 2007