In two more WIPO decision out today Merck & Co., Inc. objection to the applications of Merck KGaA to .Merck and .eMerck were thrown out.
Those filing Legal Rights Objections have now lost all 27 decisions that have been issued by WIPO
However these case varied from many of the previous cases which dealt with front running trademark application.
In these case the objector is the global drug company Merck one of the largest drug companies in the world.
Here is the relevant parts of the decision:
Objector contends that Applicant cannot operate the Disputed gTLD String without infringing Objector’s trademark.
Objector contends that this Objection is valid and should be upheld because the potential use of the Disputed gTLD String by Applicant:
- (i) takes unfair advantage of the distinctive character or the reputation of Objector’s registered trademark; and/or
- (ii) unjustifiably impairs the distinctive character or reputation of Objector’s registered trademark; and/or
- (iii) otherwise creates an impermissible likelihood of confusion between the Disputed gTLD String and Objector’s mark.
If Applicant is granted the Disputed gTLD String necessarily, as contended for by Objector, Applicant will be using “EMERCK” in the course of trade; it will thus be using in certain territories in the course of trade a sign, which is similar to Objector’s trademark in relation to identical or similar services.
This is the essence of this dispute between the Parties. Objector has rights to use MERCK in certain parts of the world and Applicant has rights to use MERCK in other parts of the world. As a result Objector could infringe Applicant’s rights would it use MERCK in those last mentioned parts of the world and Applicant could infringe Objector’s rights when it uses MERCK in those first mentioned parts.
The starting point of this case is that Objector and Applicant are both bona fide users of the MERCK trademark, albeit for different territories.
The question is whether a bona fide trademark owner that owns trademark rights in certain countries but does not have rights to a certain trademark in all countries of the world, should for that reason be prevented from obtaining a gTLD. In the view of the Panel, such a proposition does not make sense. If the opposite view would be accepted, it would be expected from any trademark owner interested in a gTLD to have trademark registrations in all countries of the world as otherwise another party could register one trademark in an “uncovered” country and thus prevent the first trademark owner from applying for and using its own gTLD.
In essence there should not be a significant difference between the criteria for the legal rights objection as included in the Guidebook on the one hand and the provisions included in the Uniform Domain Name Dispute Resolution Policy (“UDRP”). If the applicant for a new gTLD is bona fide, it will not be likely that one of the three criteria will be met. It might be that advantage of the distinctive character or the reputation of the objector’s registered trademark is taken, but it is then likely not unfair. It might be that the distinctive character or reputation of the objector’s registered trademark is being impaired, but it is likely justified. It might be that a likelihood of confusion between the Disputed gTLD String and the objector’s mark is created, but it is not necessarily impermissible.
Of course a rejection of the Objection does not preclude Objector from taking regular legal action should the use of the Disputed gTLD String by Applicant be infringing. It is, however, not for this Panel to anticipate on all the possible types of use Applicant could make of the Disputed gTLD.
It is also not for this Panel to interpret the existing coexistence agreements and arrangements between the Parties. Should the application of a new gTLD allegedly violate any such agreement or arrangement, it will be for the Parties to settle their dispute by means of the dispute resolution provisions of the contracts governing their relationship or as provided under applicable law.