Is Merck a community? It’s a murky argument.
An International Chamber of Commerce panelist has issued his rulings in three cases involving the Merck brand. In doing so, he has ruled that companies don’t qualify as communities, at least for new TLD community objections.
The three cases were filed by Merck KGaA against Merck Registry Holdings and MSD Registry Holdings and covered two applications for .merck and one for .merckmsd.
If you’re confused, let me clear things up a bit.
Merck & Co, which is essentially the latter two entities above, 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.
Apparently their brand sharing agreements over the years haven’t been working so well in practice. The two companies are tangled up in court in Germany over brand usage, and even the Merck.com domain name.
When both companies applied for .merck, trouble was brewing. Both filed legal rights objections against each other and are also in court over the new TLD matter.
The entities each filed community objections against each other, but apparently Merck & Co filed its complaints late so they weren’t accepted. Which left Merck KGaA’s three community objections to be decided.
You may be scratching your head as to how a pharma company could claim to be a community.
Well, Merck KGaA claimed that its group of companies, employees, etc. constituted a community.
Merck & Co argued it didn’t. But that’s where things get a bit silly.
You see, one of Merck & Co’s applications that was subject to the proceedings was filed as a community application. Merck & Co had also filed community objections against Merck KGaA (the ones that weren’t accepted). So how is it now claiming that there isn’t a Merck community?
Merck & Co tried to argue that it was a community, but Merck KGaA wasn’t. It argued that it “is composed of a richly diverse group of entities that includes not only [Respondent]’s core businesses, but wide ranging philanthropic endeavours, charitable foundations and leading medical and scientific publications.”
With this in mind, panelist Bernardo M. Cremades determined that both Mercks believe Merck is a community. But the parties don’t get to decide if it’s a community or not:
However, even if the Parties were to agree on an interpretation of the Guidebook, the Expert is not bound by such interpretation. On the contrary, the Expert is the gatekeeper of the Guidebook and must serve as a safety net for the correct interpretation thereof.
Cremades determined it’s not a community in the eyes of the guidebook. If it were, that would open new TLDs up to a lot of gaming:
As the Respondent correctly suggests, the Expert must avoid creating a dangerous precedent that may give rise to abusive community objections in the future. Allowing groups of companies to qualify as valid communities under the Guidebook will create every incentive for potential objectors to incorporate subsidiaries in order to build a synthetic community.