Company files two lawsuits in .merck dispute.
Merck KGaA, one of the applicants for the .merck top level domain names, has filed two lawsuits against competing applicant Merck & Co.
According to a reconsideration request (pdf) Merck KGaA filed with ICANN, it has filed suit in District Court in Hamburg, Germany as well as in the United Kingdom.
Merck & Co was formerly a U.S. subsidiary of Merck KGaA that was confiscated by the US government during World War I and then established as an independent company. Both companies have territorial rights to the Merck name.
It seems that the two companies are going to use all legal options at their disposal to win the contention set.
Both filed Legal Rights Objections against each other. Merck & Co filed a string confusion objection against Merck KGaA’s .emerck application. MerckKGaA returned the favor with three community objections. (Merck & Co’s tardy legal rights objection filing is the subject of the reconsideration request.)
Add the two lawsuits to the mix (Merck KGaA says it’s filing more in other jurisdictions) and it’s going to be a costly battle for .merck.
Doug Mehus (@dmehus) says
Interesting – I knew about the two, totally separate pharmaceutical companies ‘Merck’ (one in the U.S. and one in Europe). As for the trademark dispute to the .merck TLD, both have equal rights to the name, I would think. It’s identified part of the problem with having domain name arbitration done on a global level whereas trademarks are registered territorially, as you said.
One solution might be to disallow the ‘.merck’ TLD as a prohibited string.
Another solution might be for the arbitrator to award the TLD to both companies, with a joint venture partnership owned equally by the two “Mercks” set up as the Registry Operator. Any name allocations could be adjudicated by the Registry Operator. If at some point down the road, one of the two “Mercks” decides to give up control of the .merck TLD, they can sell their interest in the Registry Operator to the other. Each partner could have a right to buy up the other’s interest before selling to a third party.
Andrew Allemann says
One would certainly think this is the perfect opportunity to partner rather than spend millions on legal bills.