THE INTERNATIONAL CENTRE FOR EXPERTISE OF THE
INTERNATIONAL CHAMBER OF COMMERCE

CASE No. EXP/419/ICANN/36 (c. EXP/425/ICANN/42)

MERCK KGAA(GERMANY)vs/MERCK REGISTRY HOLDINGS, INC.
(USA)

and

MERCK KGAA(GERMANY)vs/MERCK REGISTRY HOLDINGS, INC.
(USA)

This document is an original of the Expert Determination rendered in conformity with the
New gTLD Dispute Resolution Procedure as provided in Module 3 of the gTLD Applicant
Guidebook from ICANN and the ICC Rules for Expertise.

INTERNATIONAL CENTRE FOR EXPERTISE
OF THE
INTERNATIONAL CHAMBER OF COMMERCE

CASE NO. EXP/419/ICANN/36 (C. EXP/425/ICANN/42)

MERCK KGAA(GERMANY)OBJECTORV.

MERCK REGISTRY HOLDINGS, INC.
(UNITED STATES OF AMERICA)RESPONDENTEXPERT DETERMINATION BY
BERNARDO M. CREMADESNOVEMBER 19, 2013

Parties’ Contact Details:
Merck KGaA

Merck Registry Holdings, Inc.

Bettinger Schneider Schramm
Dr. Torsten Bettinger
Cuvilliésstr. 14 a
81679 Munich
Germany

Hogan Lovells (Paris) LLP
Mr. David Taylor
17, Avenue Matignon
75008 Paris
FranceTel.: (+49) 89 599080-0
Email: info@bettinger.de

Tel.: (+33) 1 53 67 47 47
Email: domaindisputes@hoganlovells.com

TABLE OF CONTENTS
Page #I.

THE PARTIES AND THE EXPERT ....................................................................................................... 1
A.

Objector ..................................................................................................................................... 1

B.

Respondent ............................................................................................................................... 2C.

Expert ........................................................................................................................................ 3II.

APPLIED-FOR GTLD ............................................................................................................................ 3

III.

PROCEDURAL MATTERS ................................................................................................................... 3IV.

BACKGROUND ..................................................................................................................................... 5V.

OBJECTOR’S STANDING .................................................................................................................... 7
A.
B.

C.

D.

Standards .................................................................................................................................. 7
Is the Objector an Established Institution?................................................................................ 8(a)

Objector’s Position ....................................................................................................... 8(b)

Respondent’s Position ................................................................................................. 8(c)Expert’s Conclusion ..................................................................................................... 9

Is the Community Invoked by the Objector Clearly Delineated? .............................................. 9(a)

Objector’s Position ....................................................................................................... 9(b)

Respondent’s Position ............................................................................................... 14(c)Expert’s Conclusion ................................................................................................... 17(i)

Preliminary Matter ......................................................................................... 17(ii)

Analysis ......................................................................................................... 19

Is there an Ongoing Relationship Between the Objector and a Clearly Delineated
Community? ............................................................................................................................ 24(a)

Objector’s Position ..................................................................................................... 24(b)

Respondent’s Position ............................................................................................... 25(c)Expert’s Conclusion ................................................................................................... 25

VI.

SUBSTANCE OF THE OBJECTION................................................................................................... 27

VII.

COSTS ................................................................................................................................................. 29

VIII.

SUMMARY OF FINDINGS .................................................................................................................. 29

IX.

DECISION ............................................................................................................................................ 29-i-

LIST OF ABBREVIATIONS
Term

Meaning

1970/1975 Agreements

Means the Agreements entered into between MSD and the Objector in1970 and 1975, respectively (submitted as Annex 13 to the Objections,Annex F to the Response 419 and Annex D to the Response 425)

Appendix III

Means Appendix III to the Rules for Expertise of the International
Chamber of Commerce, Schedule of expertise costs for proceedings
under the new gTLD dispute resolution procedure

ApplicantMeans Merck Registry Holdings, Inc.

ccTLD

Means country code top level domain

CentreMeans the International Centre for Expertise of the International
Chamber of Commerce

ExpertMeans Bernardo M. Cremades

Expert Determination
gTLD
GuidebookICC
ICC Practice Note

Means this expert determination rendered on November 19, 2013
Means generic top level domain
Means the gTLD Applicant Guidebook
Means International Chamber of Commerce
Means the ICC Practice Note on the Administration of Cases under the
New gTLD Dispute Resolution Procedure

ICANN

Means Internet Corporation for Assigned Names & Numbers

MSD

Means Merck, Sharp & Dohme, Corp.

Objection 419

Means the community objection filed by the Objector against
Respondent’s Application No. 1-1704-73085 for the String on March 13,
2013

Objection 425

Means the community objection filed by the Objector against
Respondent’s Application No. 1-1704-28003 for the String on March 13,
2013

Objections

Means Objection 419 and Objection 425 collectively

Objector

Means Merck KGaA

Parties

Means collectively Merck KGaA and Merck Registry Holdings, Inc.

Party

Means individually Merck KGaA or Merck Registry Holdings, Inc.

ProcedureMeans the Attachment to Module 3 of the gTLD Applicant Guidebook,
New gTLD Dispute Resolution Procedure

Rejoinder

Means the rejoinder to the Reply filed by the Respondent on August 12,
2013

Reply

Means the reply to both Responses filed by the Objector on August 2,
2013

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Respondent

Means Merck Registry Holdings, Inc.

Response 419

Means the response to the Objection 419 filed by the Respondent on
May 23, 2013

Response 425

Means the response to the Objection 425 filed by the Respondent on
May 23, 2013

Responses

Means Response 419 and Response 425 collectively

Rules

Means the Rules for Expertise of the International Chamber ofCommerce

StringMeans the applied-for gTLD “.MERCK” by the Applicant (Applications
No. 1-1704-73085 and No. 1-1704-28003)

-iii-

1.

This expert determination (the “Expert Determination”) is issued under theRules for Expertise of the International Chamber of Commerce (the “Rules”),
supplemented by the ICC Practice Note on the Administration of Cases (the “ICC PracticeNote”), and under the Attachment to Module 3 of the gTLD Applicant Guidebook, New
gTLD Dispute Resolution Procedure (the “Procedure”) of the gTLD Applicant Guidebook(the “Guidebook”).
I.

THE PARTIES AND THE EXPERTA.

Objector

2.

The Objector is:

Name

Merck KGaA

Contact person

Mr. Jonas Koelle

Address

Frankfurter Straße 250

City, Country

64293 Darmstadt, Germany

Telephone(+49) 615 172 5303

Emailjonas.koelle@merckgroup.com

3.

The Objector is represented herein by:Name

Bettinger Schneider Schramm

Contact person

Dr. Torsten Bettinger

Address

Cuvilliésstr. 14 a

City, Country

81679 Munich, Germany

Telephone(+49) 89 599 080-0

Emailinfo@bettinger.de

4.

The Objector has appointed its legal representative to receive allcommunications and notifications in the present proceeding.

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B.

Respondent

5.

The Respondent (also referred to as the Applicant) is:Name

Merck Registry Holdings, Inc.

Contact person

Ms. Rashi Rai

Address

One Merck Drive

City, Country

Whitehouse Station, NJ 08889, U.S.

Telephone(+1) 908 423 1000

EmailRashi_rai@merck.com

6.

The Respondent is represented herein by:

Name

Hogan Lovells (Paris) LLP

Contact person

Mr. David Taylor

Address

17, Avenue Matignon

City, Country

75008 Paris, France

Telephone(+33) 1 53 67 47 47

Emaildomaindisputes@hoganlovells.com

Name

FairWinds Partners, LLC

Contact person

Mr. Joshua Bourne

Address1000 Potomac Street NW

City, Country

Washington, DC 20007, U.S.

Telephone(+1) 202 223 9252

Emailbourne.ms@fairwindspartners.com

7.

The Respondent has appointed Mr. David Taylor of Hogan Lovells (Paris)

LLP to receive all communications and notifications in the present proceeding.

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C.

Expert8.

The Expert is:Name

Mr. Bernardo M. Cremades

Firm

B. Cremades & Asociados

Address

Calle Goya 18 – Planta 2

City, Country

Madrid, Spain

Telephone(+34) 914 237 200

Emailbcremades@bcremades.com

II.

APPLIED-FOR GTLD
9.

The applied-for generic top level domain (“gTLD”) is “.MERCK” (Applications

Nos. 1-1704-73085 and 1-1704-28003) (the “String”).
III.

PROCEDURAL MATTERS
10.

On March 13, 2013, the Objector filed a community objection against the

Respondent’s Application No. 1-1704-73085 for the String in accordance with Article 3.2.1of the Guidebook and Article 2 of the Procedure (the “Objection 419”).1 On the same day,the Objector filed a community objection against the Respondent’s Application No. 1-170428003 for the String in accordance with Article 3.2.1 of the Guidebook and Article 2 of theProcedure (the “Objection 425”).2

The Objection 419 and the Objection 425 shallhereinafter be jointly referred to as the “Objections”.
11.

According to Article 3.2.1 of the Guidebook, a community objection is filed

when “[t]here is substantial opposition to the gTLD application from a significant portion of
the community to which the gTLD string may be explicitly or implicitly targeted”.
12.

On April 12, 2013, the International Centre for Expertise of the International

Chamber of Commerce (the “Centre”) invited the Parties to comment on the possibility ofconsolidating proceeding EXP/419/ICANN/36 with EXP/425/ICANN/42.3 The Respondent
1

Proceeding originally encaptioned EXP/419/ICANN/36.

2

Proceeding originally encaptioned EXP/425/ICANN/42.

3

Letter from the Centre to the Parties, dated April 12, 2013.

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filed its comments on April 15, 2013.4 On April 18, 2013, the Centre informed the Parties
about the consequences of the possible consolidation and requested further commentsfrom them.5 Both Parties submitted further comments in this regard.6 On April 23, 2013,
the Centre informed the Parties of its decision to consolidate both proceedings under thecaption “EXP/419/ICANN/36 (c. EXP/425/ICANN/42)”.7
13.

On May 23, 2013, the Respondent filed separate responses disputing

Objector’s standing and alleging that the Objector failed to meet the community objection
requirements of the Guidebook as regards the Objections filed in EXP/419/ICANN/36 (the“Response 419”) and EXP/425/ICANN/42 (the “Response 425”). The Response 419 andthe Response 425 shall hereinafter be jointly referred to as the “Responses”.
14.

On June 12, 2013, the Chair of the Standing Committee of the Centre

appointed Mr. Bernardo M. Cremades as Expert in accordance with Article 7 and Article
3(3) Appendix I of the Rules.
15.

On June 19, 2013, the Objector contacted the Centre to request a second

round of submissions.8 Two days later, the Centre suggested that the Objector address therequest directly to the Expert Panel once constituted.9 On June 25, 2013, the Objector
directed the same request directly to the Expert.10
16.

On July 16, 2013, the Centre transferred the file to the Expert and confirmedin writing that: (i) the estimated costs had been paid in full by each Party; and (ii) the fullconstitution of the Expert Panel had taken effect as of that same day.11
17.

On July 17, 2013, the Expert issued Procedural Order No.1 directing both

Parties to submit their views on certain procedural matters. The Parties replied on July 22,

4

Email from Mr. Joshua Bourne to the Centre, dated April 15, 2013.

5

Letter from the Centre to the Parties, dated April 18, 2013.

6

Letter from Dr. Torsten Bettinger to the Centre, dated April 19, 2013; Email from Mr. Joshua Bourne to theCentre, dated April 20, 2013.

7

Email from the Centre to the Parties, dated April 23, 2013

8

Email from Dr. Torsten Bettinger to the Centre, dated June 19, 2013.

9

Email from the Centre to Dr. Torsten Bettinger, dated June 21, 2013.

10

Email from Dr. Torsten Bettinger to the Expert, dated June 25, 2013.

11

Letter from the Centre to the Parties and Expert, dated July 16, 2013.

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2013. On July 23, 2013, the Expert issued Procedural Order No. 2 directing the Parties tosubmit additional evidence and allegations on very limited matters (Articles 17(a) and 18 infine of the Procedure).

The Expert also found that no hearing was necessary in thisproceeding (Article 19 of the Procedure) and that the Expert Determination should be
published in full (Article 21(g) of the Procedure).
18.

On August 2, 2013, the Objector filed a single second memorial, together withadditional evidence, for both proceedings (the “Reply”).

On August 12, 2013, theRespondent filed a single second memorial, together with additional evidence, for bothproceedings (the “Rejoinder”).12
19.

After a careful review of the Objections, Responses, Reply and Rejoinder,

and in agreement with the Centre, the Expert considers it more appropriate to render asingle Expert Determination for both proceedings.13
20.

In accordance with Articles 5(a) and 6(a) of the Procedure, as well as Articles

3.3.1 and 3.3.3 of the Guidebook, all of the Parties’ communications were submitted
electronically in English, which is the official language of this proceeding.
21.

For all purposes, the place of the proceedings is Paris (France), where theCentre is located (Article 4(d) of the Procedure).
IV.

BACKGROUND
22.

Both Parties generally agree on the background of this dispute.

The

Respondent’s parent company, Merck Sharp & Dohme, Corp. (“MSD”), was a subsidiary of
the Objector at the beginning of the 20th century.14 After World War I, MSD spun off the
Objector pursuant to the U.S. Trading with the Enemy Act of 1917.15 Since then, MSD hasoperated as a separate and independent company.
12

Due to maintenance works in the Expert’s email server, the Respondent’s email did not reach the Expert.
With the permission of the Expert, the Respondent re-submitted these materials by fax on August 13, 2013.
See Article 6(a) of the Procedure.
13

The Centre has granted the Expert discretion to decide whether to render one or two separate Expert
Determinations. Letter from the Centre to the Parties, dated April 23, 2013, p. 2 (“The Panel will examine
each Objection on its own merits and shall have the discretion to decide whether, based on the specificities ofeach case, to issue one or separate Expert Determinations in consolidated cases”).
14

Objections, p. 7; Responses, p. 5.

15

Objections, p. 7; Responses, p. 5. See also Response 419, p. 9.

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23.

MSD and the Objector have executed a series of agreements throughout theyears to regulate their co-existence and the use of the “MERCK” name, as well as thecorresponding trademark.16 The most recent agreements date back to 1970 and 1975 (thethe “1970/1975 Agreements”).17
24.

Pursuant to the 1970/1975 Agreements, MSD has operated in the U.S. andCanada under the name “MERCK” and under a family of Merck-composite trademarks
internationally (e.g., Merck Sharp & Dohme).

The Objector, on the other hand, hasoperated under the name Merck (without qualifying or additional text) internationally but
cannot use the name “MERCK” within the U.S. and Canada.18
25.

MSD and the Objector are in dispute over the use of the Merck name andtrademark, including the use of <merck.com> and the use of the Merck name in social
media.19 For this reason, in March 2013, the Objector filed a legal action in the District
Court of Hamburg, Germany, against inter alia MSD and Merck & Co., Inc. (which is MSD’s
parent company).20 The Respondent also mentions that the Objector commenced legal
proceedings in the UK on March 8, 2013 claiming trademark infringement and alleging
breach of the 1970/1975 Agreements.21

The Objector anticipates “additional legal

measures in other jurisdictions”.22
26.

The Objector has also filed a number of Legal Rights Objections under Article2(3)(ii) of the Procedure with WIPO’s Arbitration and Mediation Center against companiesof MSD’s group of companies, including regarding the String.23

16

Objections, pp. 7-8; Response 419, pp. 5, 8; Response 425, pp. 5, 7.

17

A copy of the 1970/1975 Agreements has been submitted as Annex 13 to the Objections, Annex F to the
Response 419 and Annex D to the Response 425.
18

Objections, p. 8; Response 419, pp. 5, 8; Response 425, pp. 5, 7. See also Response 419, p. 9.

19

Objections, p. 8; Responses, p. 4.

20

Objections, p. 8; Responses, p. 4. A copy of the Request for Relief in the District Court of Hamburg,
Germany, has been provided as Annex 15 to the Objections.
21

Responses, p. 4.

22

Objections, p. 8.

23

Id. See www.wipo.int/amc/en/domains/lro/cases/.

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V.

OBJECTOR’S STANDING
27.

In this section, the Expert will summarize the Parties’ positions relating to the

Objector’s standing to file the Objections. Thereafter, the Expert will draw his conclusions
in this regard.
A.

Standards

28.

Article 3.2.2.4 of the Guidebook provides guidance on who may file acommunity objection as follows:
Established institutions associated with clearly delineatedcommunities are eligible to file a community objection.
The community named by the objector must be acommunity strongly associated with the applied-for gTLD
string in the application that is the subject of theobjection. [. . .]24
29.

The Guidebook provides some explanation regarding the main requirements

set forth in the quoted passage. In this regard, the Guidebook states that, “[t]o qualify forstanding for a community objection, the objector must prove both of the following”, whichmakes abundantly clear that the two requirements that follow must be met.25 These two
requirements are: (i) the objector must be an “established institution”; and (ii) the objector
must have “an ongoing relationship with a clearly delineated community”.26 Both Parties
agree with this two-pronged test.27 Each portion of this test will be analyzed in the following
subsections of this Expert Determination.
30.

For each requirement, the Guidebook lists some “factors” to steer the Expert’s

judgment. As a threshold matter, the Expert will analyze the value of the “factors” outlined
in Article 3.2.2.4 of the Guidebook. The Guidebook states that the “[f]actors that may beconsidered [by the Expert] in making this determination include, but are not limited to. [. . .]”The use of the optional term “may” instead of any other mandatory term clearly implies that
the Expert has absolute discretion to apply or not the factors expressly included in the
Guidebook. In addition, the final portion of the quoted passage – “but are not limited to” –24

Guidebook, Article 3.2.2.4 (emphasis added).

25

Id. (emphasis added).

26

Id.

27

Objections, p. 4; Response 419, p. 6; Response 425, p. 5.

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opens the door to other factors not expressly listed in the Guidebook. This conclusion is
also supported by the last paragraph of Article 3.2.2.4 of the Guidebook, which states that
the Expert “will perform a balancing of the factors listed above, as well as other relevant
information, in making its determination”.28 The reference to “other relevant information”
eliminates any doubt as to the orientative nature of the factors contained in the Guidebook.
31.

All the above is consistent with the last phrase of Article 3.2.2.4 of the

Guidebook, which provides that “[i]t is not expected that an objector must demonstratesatisfaction of each and every factor considered in order to satisfy the standing
requirements”.
B.

Is the Objector an Established Institution?
(a)

32.

Objector’s Position

The Objector explains that Merck KGaA “is the parent company and head

institution of the international Merck Community, which is made up of the many regional
offices, subsidiaries and institutions which work together to provide state-of-the-art
pharmaceuticals, research instruments, chemical solutions and life sciences equipment toclients and patients around the world”.29 The Objector adds that, since its incorporation in
1668, it has become “a multinational organization with stakeholders in more than 180
countries, 2011 revenues of EUR 10.27 billion, and over 40,000 employees”.30 The current
version of the Objector’s Articles of Association is dated July 6, 1995, when the Objector
spun-off another corporation.31 The Objector also highlights that it has used the name“Merck” for centuries.32(b)33.

Respondent’s Position

The Respondent does not dispute that the Objector is an establishedinstitution.33

28

Emphasis added.

29

Objections, p. 4.

30

Id. See also Reply, p. 3 (in fine). For a history of the Objector, see Annex 8 to the Objections.

31

Annex 4 to the Objections, Commercial Register Excerpt, p. 4.

32

Objections, pp. 4-5. See also Annex 3 to the Objections.

33

Response 419, p. 6; Response 425, pp. 5-6.

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(c)
34.

Expert’s Conclusion

The Parties do not dispute that the Objector is an established institution.

However, this does not prevent the Expert from analyzing the issue.
35.

From the corporate documents submitted by the Objector, the Expert issatisfied that the relevant factors included in Article 3.2.2.4 of the Guidebook are met. As amultinational company, the Objector enjoys a worldwide reputation. Thus, the “[l]evel ofglobal recognition of the institution” factor is satisfied. Second, as to the “length of time theinstitution has been in existence”, the Expert is convinced that it has been in existence formore than a sufficient period and that it was not “established solely in conjunction with thegTLD application process”.34

In this regard, the Objector has furnished a copy of the

Objector’s registration with the Commercial Register B of the District Court of Darmstadt.35
This piece of evidence also satisfies a third factor from the Guidebook, namely that the
Objector has been officially registered with the national authorities of Germany.36
36.

For these reasons, the Expert agrees with the Parties that the Objector is anestablished institution.
C.

Is the Community Invoked by the Objector Clearly Delineated?
(a)

37.

Objector’s Position

The Objector relies on Article 4.2.3 of the Guidebook and sustains that“community status is defined broadly and may encompass a variety of organizations or
individuals who share common interests or work together to achieve common goals”.37 In
this regard, the Objector applies the definition of “community” included in Criterion 1 of
Article 4.2.3 of the Guidebook.38

Indeed, for the Objector, such definition comprises

associations “of individuals or entities who share a greater degree ‘of cohesion than a mere

34

Guidebook, Article 3.2.2.4 (“Established Institution” subsection).

35

Annex 4 to the Objections.

36

Guidebook, Article 3.2.2.4 (“Established Institution” subsection) (“Public historical evidence of its existence,such as the presence of a formal charter or national or international registration, or validation by agovernment, inter-governmental organization, or treaty.”).
37

Objections, p. 5. See also Reply, p. 1.

38

Objections, p. 5; Reply, p. 1.

-9-commonality of interest’”.39

The Objector adds that, according to Article 4.2.3 of the

Guidebook, the institution should have been in existence prior to 2007 and “it must be clearthat the Community will continue to exist long into the future”.40 In the Objector’s opinion,
all this is satisfied.
38.

The Objector also quotes with approval the definition of “community” given by

ICANN’s Independent Objector,41 which says:
As for the community test, (the [Independent Objector]
determines if the community invoked is a clearlydelineated community), the notion of “community” is wideand broad, and is not precisely defined by ICANN’s
Applicant Guidebook for the new gTLDs program.42
39.

Moreover, the Objector relies on a Wikipedia article regarding the word“community”.43 The Objector states that – according to Wikipedia – there are three maintypes of eligible community arrangements, including “Community Organizations”, which inturn include inter alia “incorporated associations”, “economic enterprises”, and “professional
associations”.44
40.

The Objector points out that the guidelines for Criterion 1 of Article 4.2.3 of

the Guidebook provide examples of communities, including one that says that “acommunity can consist of legal entities (for example, an association of suppliers of aparticular service)”.45 For the Objector, this definition contemplates corporate communities
like the Objector’s group of companies, which is comprised of “literally hundreds of highlyspecialized companies work[ing] together to provide solutions to shared healthcare and life

39

Objections, p. 5.

40

Id.; Reply, p. 1.

41“ICANN” stands for Internet Corporation for Assigned Names & Numbers (“ICANN”). The Independent
Objector may file objections against “highly objectionable” gTLD applications to which no objection has been
filed. The Independent Objector is limited to filing two types of objections: (i) Limited Public Interest
objections and (ii) Community objections. The Independent Objector acts solely in the best interests of the
public who use the global Internet. See Article 3.2.5 of the Guidebook.

42

Reply, p. 1 (quoting Annex 1 to the Reply, p. 3 – “community objections” at ¶ 3).

43

Id.

44

Id. (citing Annex 2 to the Reply, p. 7)

45

Objections, p. 5; Reply, p. 1 (quoting Guidebook, Article 4.2.3, Criterion 1 Guidelines).

-10-sciences goals, united by a common identity, purpose and name”.46 The Objector mentions
that its group of companies is present in 67 countries and serves the interests of its
stakeholders in over 180 countries.47
41.

The Objector argues that all the members of its Merck Community work

together as an organic body and that they are identified as a “single network”.48 Indeed, theObjector sustains that the so-called Merck Community is a “synergistic network of
producers, developers and suppliers that work together to achieve common goals”.49 To
back this contention, the Objector furnishes several letters signed by officers of its
subsidiaries across the world endorsing the Objector’s position.50 For the Objector, the ideaof a Merck Community is further reinforced by (i) the existence of a Merck University,“which offers the employees of its many Community members the opportunity to receive
leadership training and take a more active role in the international organization”;51 and (ii)the fact that many companies which comprise the so-called Merck Community are
managed or led by members of the founding Merck family.52
42.

The Objector explains that a number of applicants filed applications for gTLDs

as corporate communities, including .IKANO, .STADA, .LAMBORGHINI, .BUGATTI,.大众汽车 (“Volkswagen” in Chinese), .AUDI, .OVH, .GEA and .EDEKA.53 For the Objector,
in each case, “these companies have applied for a controlled, single-registrant space which
is designed to promote and reflect their brands online” and “[o]nly members of theircorporate communities [. . .] are eligible to use domain names within the applied-for
spaces”.54 In the Objector’s opinion, these models correspond to the structure of its Merck
Community.

46

Objections, p. 5; Reply, p. 1

47

Objections, p. 6. See also Reply, p. 3 (in fine).

48

Objections, p. 5.

49

Reply, p. 3.

50

Objections, p. 5 (citing Annex 5 to the Objections).

51

Id. (citing Annex 6 to the Objections).

52

Id. (citing Annex 7 to the Objections).

53

Reply, p. 1 (citing Annex 3 to the Reply).

54

Id.

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43.

The Objector also explains why the so-called Merck Community is “clearlydelineated”. First, for the Objector, such community is composed of over 250 members
who have worked together as a unified group since 1968 and share inter alia unified logos,
branding, webpages and domain names.55 As a result, clients, customers and partners
worldwide recognize and associate all products and services with the Objector’s global
network, rather than with one of its specific subsidiaries.56
44.

Second, the Objector explains that all of the entities that comprise the so-called Merck Community share the following criteria:
1) the member is either Merck KGaA or a company which
is a fully owned subsidiary of Merck KGaA, 2) the member
uses “Merck” as the sole element or as a component of its
company name, and 3) the member uses as its umbrella
brand the German figurative trademark No. 30130670,“MERCK.”57
45.

For the Objector, members of its community also hold and operate 6 gTLDs

and 178 country code top level domains (“ccTLD”) consisting of “MERCK” as a soleelement upon which they showcase their participation in the Merck Community to a global
audience.58
46.

In light of the above, the Objector sustains that it is “extremely clear which

entities may, and may not, be included in this definition”.59 The Objector maintains a list of
all the subsidiaries which are included in the “Community”, and no other organizations or

55

Objections, pp. 5-6 (citing Annex 8 to the Objections). Later in this section the Objector reiterates this idea:“All members of the Community are engaged in a common purpose, which is the fulfilment of the Group’s
mission to develop and deliver high-quality products for the advancement of health care, pharmaceuticalresearch and life-sciences innovation around the world”. Id., p. 6. See also Reply, p. 3 (“The Community has
been in existence since 1967, has utilized a streamlined and unitary branding model since the 1990s, and the
Objector itself is the world’s oldest pharmaceutical company. The Community is physically present in 67
countries worldwide, and is comprised of over 250 unique members”.).
56

Objections, pp. 6, 8. In particular, the Objector states that the so-called Merck Community “is globally
recognized as a cohesive inter-corporational network by consumers and the public worldwide”. Id., p. 6.
57

Id., p. 6.

58

Id. (citing Annex 9 to the Objections).

59

Id.

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individuals would be eligible for inclusion in the group.60 As a result, all the requirements ofArticle 3.5.4 of the Guidebook are met.61
47.

In the Reply, the Objector finds unconvincing the Respondent’s theory that a

corporate community cannot meet the “community” definition of the Guidebook.

The

Objector sustains that this theory is contrary to the Respondent’s own arguments.62 In
particular, the Respondent filed Application No. 1-1704-73085 on “a Community basis,claiming rights in its alleged corporate community”.63 The Objector points out that, in suchapplication, the Respondent “defined its own corporate community as including its corebusiness divisions, philanthropic and corporate responsibility programs, and medical andscientific publications and websites”.64 For the Objector, all these entities fall under the
Respondent’s main parent company and thus follow an identical model to the one proposedby the Objector.65
48.

Furthermore, the Objector stresses that the Respondent itself filed“numerous” community objections against the Objector.66 Although these objections were
rejected by the Centre because they were untimely filed, the Objector argues that they
demonstrate that the Respondent shares the view that a corporate community is eligible
under the Guidebook to file a community objection.67 In particular, the Objector explainsthat such community objections filed by the Respondent contain identical arguments as
those now presented by the Objector regarding the validity of a corporate community under

60

Id.

61

Reply, p. 3.

62

See id., pp. 1-2.

63

Id., p. 1 (citing Annex 4 to the Reply).

64

Id.

65

Id., p. 2. More precisely, the Objector sustains that “[a]ll of the indicated members of the Respondent’s‘community’, as outlined above, represent subsidiaries or organizations which are owned by or under thecontrol, management and/or governance of Merck & Co.” [i.e., the Respondent’s ultimate parent company].
Id.
66

Id. However, the Objector has only provided evidence of two community objections filed by the
Respondent against the Objector. See Annex 5 to the Reply. In the Expert’s opinion, it remains unclear
whether Annex 6 to the Reply relates to one of the two proceedings referred to in Annex 5 or relates to a third
proceeding.
67

Reply, p. 2. See rejection letters from the Centre as Annex 5 to the Reply.

-13-the Guidebook.68

The Objector highlights the following statements made by the

Respondent in such community objections:69• “Over a period of decades, [Merck & Co. USA] has also built a family of
hundreds of subsidiaries, affiliates, foundations, licensees and related parties
that use its MERCK Marks in a range of economic and philanthropic
activities. These parties collectively act as a community (the ‘Merck
Community’)”.
• “As a community that exists only by virtue of its authorized use of the MERCK
family of marks, the use of which is restricted, its members are precisely
known”.
• “The Merck Community represents a highly organized network of businesses
and organizations”.
49.

For all the above reasons, the Objector sustains that the Merck Community isclearly delineated.
(b)
50.

Respondent’s Position

The Respondent sustains that the Objector does not have an ongoing

relationship with a clearly delineated community because the “Objector’s ‘community’consists of nothing more than Objector itself”.70 In other words, the “Objector’s proposed‘community’ is not a community at all – it is merely Objector’s own corporate
organization”.71
51.

The Respondent argues that if a corporate structure – such as the so-called

Merck Community – can be considered as a community, this would create a “significant
and unintended precedent for ICANN and future new gTLD rounds”.72
52.

The Respondent notes that the Guidebook gives a number of examples ofpossible communities in Article 4.2.3, but nowhere does the Guidebook suggest that asingle corporate organization can constitute its “own self-serving ‘community’”.73 In the
Respondent’s own words, the “Objector appears to have wilfully and mistakenly interpreted
68

Reply, p. 2.

69

Annex 6 to the Reply, pp. 4-5 (partially quoted by in the Reply, p. 2).

70

Responses, p. 6.

71

Id. See also id., p. 7.

72

Id., p. 6. See also Response 419, p. 13; Response 425, p. 11; Rejoinder, p. 3.

73

Response 419, p. 7; Response 425, p. 6; Rejoinder, p. 3.

-14-

[Article 4.2.3 of the Guidebook] to mean that any corporate entity and its wholly owned
subsidiaries would qualify as a clearly delineated community”.74

Otherwise, for the

Respondent, the notion of community would be meaningless and nonsensical because any
company with one or more subsidiaries would be able to qualify as a community under the
Guidebook.75 For the Respondent, citing Article 1.2.3.2 of the Guidebook, that was not theintention of ICANN when designing the system.76
53.

As to the Wikipedia article on the notion of community submitted by the

Objector with the Reply, the Respondent asserts that, “while possibly useful as a starting
point for a rudimentary discussion of the concept of ‘community’, [it] has no relevance to the
ICANN new gTLD program and the ‘narrow category’ of gTLD applications that should beconsidered as Community-based applications”.77
54.

In the Respondent’s opinion, “the evidence that Objector has submitted toshow a purportedly substantial ‘community’ opposition to [Respondent]’s applicationconsists of nothing more than a handful of slightly modified form letters prepared by
Objector itself and several of its wholly owned subsidiaries”.78 The Respondent adds that“[n]ot a single individual or entity outside of Objector’s own corporate organization has
submitted any objection to Applicant’s application”.79 For these reasons, the Respondentclaims that such letters are not “sufficient to be considered evidence of a clearly delineatedcommunity” and instead merely reinforce “that there is no community beyond Objector's
corporate structure”.80
55.

The Respondent also addresses the nine community-based applications

submitted by the Objector with the Reply in which the applicants are self-identified as

74

Rejoinder, p. 1.

75

Response 419, p. 7; Response 425; Rejoinder, pp. 1, 3.

76

Rejoinder, p. 1. The relevant portion of Article 1.2.3.2 of the Guidebook states as follows: “Communitybased applications are intended to be a narrow category, for applications where there are unambiguous
associations among the applicant, the community served, and the applied-for gTLD string”.
77

Rejoinder, p. 1 (referring to Article 1.2.3.2 of the Guidebook) (emphasis original).

78

Responses, p. 8 (referring to Annexes 5 and 16 to the Objections).

79

Id.

80

Rejoinder, p. 3.

-15-

communities. Contrary to what the Objector states in the Reply,81 the Respondent stresses
that not all the applicants in these community-based applications adopted a “singleregistrant” model or “made [. . .] reference to a community that consists of a corporate
entity and its wholly owned subsidiaries”.82 Additionally, the Respondent mentions that fourout of the nine applications were submitted by entities of the Volkswagen Group (and notby four unique, unconnected applicants).83 Consequently, “only five applicants out of 85
Community-based applications believed that their corporate structure of a parent company
and its wholly owned subsidiaries was sufficient to be considered as a clearly delineatedcommunity”.84 The Respondent concludes that this is a misinterpretation of the rule by aminority of the 1,930 applications received by ICANN and, therefore, cannot be taken into
consideration by the Expert.85
56.

In addition, the Respondent notes that none of these community-based

applications are in connection with another application and thus will never be tested under
the Community Priority Evaluation Procedure of Module 4 of the Guidebook.86
57.

The Respondent addresses in the Rejoinder the Objector’s argument that the

Respondent filed community-based Application No. 1-1704-73085. In the Respondent’s
opinion, the “Objector falsely claims that [the Respondent] has followed the same
‘corporate community’ model as Objector”.87 For the Respondent, the key difference is thatthe latter’s community “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”.88 On the contrary,81

Referring to Reply, p. 1 (“[T]hese companies have applied for a controlled, single-registrant space which isdesigned to promote and reflect their brands online. Only members of their corporate communities, including
wholly-owned or majority-interest group members, are eligible to use domain names within the applied-for
spaces. These models highly correspond to the structure of the Merck Community.”).
82

Rejoinder, p. 1.

83

Id.

84

Id., pp. 1-2.

85

Id., p. 2.

86

Id.

87

Id.

88

Id. See also Response 419, p. 6 (“Applicant, by contrast, represents a Community that includes not justApplicant and its corporate subsidiaries and affiliates, but also a broader family of foundations, licensees and-16-for the Respondent, the “Objector’s ‘community’ consists of a corporate parent and its
wholly owned subsidiaries”.89
58.

Among others,90 the Respondent describes the following entities which

purportedly form part of its community and are beyond its corporate structure and control:(i) the United Negro College Fund / Merck Science Initiative (a/k/a UMSI);91 (ii) the Merck
Institute for Science Education;92 and (iii) the MECTIZAN Donation program.93 For the
Respondent, the members of its community share “interests, aims, and commitments toservice”.94
59.

As to the Objector’s allegation regarding the fact that the Respondent also

filed community-based objections against the former in another proceeding, theRespondent insists that – as opposed to the Objector’s community – its community isdiverse and beyond any corporate structure.95
60.

For these reasons, the Respondent claims that the Objector has failed to

identify a clearly delineated community with which it has a relationship.
(c)

Expert’s Conclusion
(i)

61.

Preliminary Matter

As a preliminary matter, the Expert feels compelled to analyze whether the

Respondent’s arguments regarding the invalidity of a corporate community under the
Guidebook are consistent with the position that it previously sustained. Thereafter, theExpert will analyze the consequences of any inconsistency.
62.

The Objector maintains that the Respondent’s argument that a corporate

community cannot be considered as a valid community under the Guidebook is inconsistent
related parties, all of whom use its MERCK family of marks and names internationally in connection with theiractivities, including philanthropy, all in furtherance of their community’s collective purpose and interest”).
89

Rejoinder, p. 2.

90

A larger sample of members of the Respondent’s community is included in its Application No. 1-170273085. See Annex D to the Response 419, section 20(a) (transcribed in the Response 419 at pp. 5-6).
91

Rejoinder, p. 2. (citing Annex 1 to the Rejoinder).

92

Id. (citing Annex 2 to the Rejoinder).

93

Id. (citing Annex 3 to the Rejoinder).

94

Response 419, p. 6 (citing Annex E to the Response 419).

95

Rejoinder, pp. 2-3.

-17-

with: (i) the definition of community included in Application No. 1-1702-73085 filed by the
Respondent;96 and (ii) the allegations contained in the related but independent community
objection filed by the Respondent against the Objector regarding the string “.MERCK”.97
63.

In essence, the Respondent argues that its community is different to the

Objector’s community because, as opposed to the latter, the former’s community includes
entities beyond a mere corporate structure.

For the Respondent, its community “iscomposed of a richly diverse group of entities that includes not only [Respondent]’s corebusinesses, but wide ranging philanthropic endeavours, charitable foundations and leading
medical and scientific publications”.98 Among other examples, the Respondent includes
within its community the United Negro College Fund / Merck Science Initiative (a/k/a
UMSI); (ii) the Merck Institute for Science Education; and (iii) the MECTIZAN Donation
program.99
64.

In the Expert’s opinion, the above entities purportedly beyond subsidiarycorporations are not very different to the Merck University included by the Objector as amember of its community.100 Although they may not be owned by MSD, they are under thecontrol, management and/or governance – whether directly or indirectly – of MSD.
65.

The Expert is convinced that the Respondent has specifically endorsed thetype of community now defended by the Objector, namely a community in which its
members are under the ownership, control, management and/or governance – whether
directly or indirectly – of a parent company. The community-based Application No. 1-170273085 is replete of undeniable assertions supporting this conclusion, including thefollowing:• “The family of subsidiaries, affiliates, foundations, licensees, and relatedparties that are authorized by Merck, to use the Merck marks in a range of
economic and philanthropic activities, collectively act as a community”.101

96

See Annex 4 to the Reply; Annex D to the Response 419.

97

See Annex 6 to the Reply.

98

See n. 88, supra.

99

See ¶ 58 and n. 90, supra.

100

See ¶ 41, supra.

101

Annex D to the Response 419, sections 18(a) and 20(a).

-18-• “As a community that exists only by virtue of its authorized use of the Merckfamily of marks, the use of which is restricted, its members are precisely
known”.102• “Only qualified subsidiaries and affiliates of Merck, approved licensees, andMerck foundations and related parties will be eligible for inclusion in thiscommunity”.103• “As such, registrations within the community may be made by the following
for-profit and not-forprofit businesses or organizations:(a) Qualified
subsidiaries and affiliates[;] (b) Merck foundations and related parties[;] (c)Approved licensees”.104
66.

The allegations contained in the community objection filed by the Respondent

against the Objector regarding the string “.MERCK” (submitted as Annex 6 to the Reply)
are also very illustrative. Examples of such allegations were transcribed in ¶ 48 above and,in the Expert’s view, they serve as additional evidence that the Respondent has previously
agreed with the Objector’s definition of community.
67.

As a result, the Expert finds that the Respondent is being inconsistent with its

previous understanding of the notion of a community. However, even if the Parties were toagree 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.105

Consequently, if the Parties agree on anincorrect interpretation of the Guidebook, the Expert must use its discretion to accept or
reject such interpretation. In the next section, the Expert will analyze the requirements of
the Guidebook and the evidence presented by the Parties in order to determine whether
the Objector’s community may be regarded as such for the purposes of sustaining acommunity objection.
(ii)
68.

Analysis

The Expert observes that both Parties cite Article 4.2.3 of the Guidebook(“Community Priority Evaluation Criteria”) to support their arguments, but the provisions ofArticle 4.2 of the Guidebook (“Community Priority Evaluation”) and its accompanying
102

Id., section 20(a).

103

Id., section 20(d).

104

Id.

105

Guidebook, Article 3.4.6 (“The findings of the panel will be considered an expert determination and advice
that ICANN will accept within the dispute resolution process”).

-19-subsections only apply “once all applications in the contention set have completed all
previous stages of the process”.106 Since not all previous stages have been completed yet,
it is not the appropriate time to carry out a community priority evaluation, which in any casefalls outside the Expert’s mission. The criteria and examples included in such sections of
the Guidebook may be used as a source of inspiration but are not binding upon the Expert.
69.

Instead, the Expert must concentrate on the rules and factors contained in

Module 3 of the Guidebook and, more precisely, on those relating to community objections.
Article 3.2.2.4 of the Guidebook specifically deals with the standing of an institution to file acommunity objection, but this Article does not provide any guidance on the assessment of
whether a community may be considered clearly delineated. For this reason, the Expert
must turn to Article 3.5.4 of the Guidebook (“Community” subsection), which contains
certain criteria to analyze whether a community is clearly delineated.107
70.

As a threshold matter, the Expert notes that Article 3.5.4 of the Guidebook

lists some “factors” to steer the Expert’s judgment. However, as with the factors specificallyrelating to the standing discussed in ¶¶ 30-31 above, the language of the factors is open.
In particular, all factors set forth in Article 3.5.4 of the Guidebook (“Community” subsection)
are introduced with optional language, such as “a panel could balance a number of factors
to determine this”. Once again, this proves the mere orientative nature of these factors.
Additionally, in all instances the Guidebook mentions that the factors included therein are
not exhaustive (i.e., the Guidebook uses language in the fashion of “including but limitedto”). Therefore, the Expert may weigh other factors if considered appropriate.
71.

The subsection of Article 3.5.4 of the Guidebook regulating the issue at bar

states that “[t]he objector must prove that the community expressing opposition can be
regarded as a clearly delineated community”.108 The same subsection expresses that, “[i]fopposition by a number of people/entities is found, but the group represented by the106

Emphasis added.

107

The Objector appears to acknowledge that the appropriate criteria to evaluate whether there is a clearlydelineated community are those contained in Article 3.5.4 of the Guidebook. Reply, p. 3 (“Under the
Guidebook, the requirements for a clearly-delineated community are provided in § 3.5.4. [. . .]”).

108

Emphasis added.

-20-

objector is not determined to be a clearly delineated community, the objection will fail”.109
Therefore, the threshold is not whether a great number of people or entities are opposing,
but rather whether the community may in fact be clearly delineated.

Yet, anotherconclusion may be drawn from the transcribed portion of Article 3.5.4 of the Guidebook:not every “group” or “community” (terms used in the Guidebook indistinctly) necessarily
qualifies as a “clearly delineated community”.
72.

Some of the factors included in Article 3.5.4 of the Guidebook (“Community”

subsection) shed light on the Expert’s analysis. The first factor in the Guidebook is:
The level of public recognition of the group as acommunity at a local and/or global level
73.

The Expert is persuaded that the Objector enjoys worldwide publicrecognition. Such public recognition is in the form of a transnational group of companies
which share a number of common elements. The Objector notes that all of the companies
that form the group:110 (i) are all directly or indirectly under the ownership of Merck KGaA;(ii) use a “Merck” composite name; (iii) use common trademarks, brands, websites,
domains, etc.; and (iv) file joint financial statements. In the Expert’s opinion, all theseelements allow the public to identify the Objector as an integrated group of companies.
However, as mentioned earlier, not all groups qualify as clearly delineated communities.
74.

The factor under analysis requires that the group be recognized as a“community” by the public. Although the members of the Merck group of companies may
see themselves as a community, it has not been evidenced to the Expert that the generalpublic sees the so-called Merck Community as being anything more than a global
corporation with highly coordinated subsidiaries throughout the world. Therefore, this first
factor favors the Respondent.
75.

The second factor in the Guidebook is:
The level of formal boundaries around the community andwhat persons or entities are considered to form thecommunity;

109

Emphasis added.

110

Objections, pp. 5-6.

-21-

76.

The Expert interprets this factor to allow him to analyze the nature of thepersons or entities that form the group or community. In our case, the boundaries of thecommunity as viewed by the Objector were outlined in ¶¶ 44-45 above. As the Objector
contends, the so-called Merck Community is composed of “250 unique members” which
are all part of Merck KGaA’s group of companies.111 The Objector does not intend toinclude within this group any other individual or entity which is not part of the same
corporate structure.
77.

In the Expert’s opinion, a community of corporations or of other legal entities

may sometimes qualify as a delineated community. However, this is not the case in the
Objector’s community. The key element in our analysis is that the members of the socalled Merck Community are not associated with Merck KGaA but are rather owned –directly or indirectly – by the latter. Indeed, in order to form a clearly delineated community,
the link must be of association and not of ownership, control, management and/or
governance. Otherwise, as in the case at hand, we may stand before a sole consolidated
entity.
78.

Together with the Reply, the Objector submitted evidence of 9 different

community-based applications for new gTLDs filed by groups of companies in order toevidence that: (i) its theory of a corporate community is valid under the Guidebook; and (ii)other applicants share such theory.

As mentioned earlier, for the Objector “thesecompanies have applied for a controlled, single-registrant space which is designed topromote and reflect their brands online” and “[o]nly members of their corporate
communities [. . .] are eligible to use domain names within the applied-for spaces”.112
79.

As explained in ¶ 68 above, in the Expert’s opinion, the present proceeding is

not the appropriate forum to discuss issues pertaining to Module 4 of the Guidebook. The
Expert must reiterate that the provisions of Article 4.2 of the Guidebook and its
accompanying subsections only apply “once all applications in the contention set havecompleted all previous stages of the process”.113 Since not all previous stages have been

111

Id.

112

Reply, p. 1 (citing Annex 3 to the Reply).

113

Emphasis added.

-22-completed at the moment, it is not the appropriate time to carry out a community priority
evaluation. When the time comes, if necessary, said 9 applicants will have to undergo acommunity priority evaluation process where their corresponding communities will betested against the criteria of Article 4.2.3 of the Guidebook (which differ from those in
Article 3.5.4 of the Guidebook).114 The same is true for Respondent’s community-based
Application No. 1-1702-73085.115
80.

In light of the foregoing, the Expert is reluctant to approve a community

composed of subsidiaries of the same parent company.

As the Respondent correctlysuggests,116 the Expert must avoid creating a dangerous precedent that may give rise toabusive community objections in the future. Allowing groups of companies to qualify as
valid communities under the Guidebook will create every incentive for potential objectors toincorporate subsidiaries in order to build a synthetic community.
81.

For these reasons, in the Expert’s opinion, the second factor favors the

Respondent.
82.

The third factor in the Guidebook is:
The length of time the community has been in existence

83.

The Expert reads the term “community” in this factor as interchangeable with“group”. In the Expert’s Opinion, the Objector has satisfied this test by evidencing that it
was originally incorporated a few centuries ago and was formally re-incorporated in 1996.117
Notably, the Respondent does not challenge this.

Therefore, this factor favors the

Objector.
84.

The fourth factor in the Guidebook is:
The global distribution of the community (this may not
apply if the community is territorial)

114

The Expert reads Article 3.5.4 of the Guidebook as only allowing the Expert to determine whether there isa clearly delineated community or not. Conversely, Criterion 1 (subsection A) of the Guidebook appears toinclude 3 levels of delineation and pre-existence of a community. Compare Article 3.5.4 of the Guidebook(“Community” subsection) with Article 4.2.3 of the Guidebook (Criterion 1, subsection A)

115

Annex D to the Response 419.

116

Response 419, pp. 6, 13; Response 425, pp. 6, 11; Rejoinder, p. 3.

117

Annex 4 to the Objections, Commercial Register Excerpt, p. 4.

-23-

85.

Again,

theExpertinterchangeable with “group”.

reads

the

term

“community”

in

this

factoras

Neither Party disputes that the Merck KGaA group ofcompanies is a multinational company with presence in many parts of the world. The
Objector contends that it has subsidiaries in 67 countries without citing any support.118 The
Expert has, however, been able to corroborate this with the Merck Annual Report for2011.119 Therefore, this factor favors the Objector’s position.
86.

The fifth factor in the Guidebook is:
The number of people or entities that make up thecommunity.

87.

The Expert reiterates that the alleged members of the so-called Merck

Community are not associated with Merck KGaA but rather owned – directly or indirectly –by the latter.

Therefore, in the Expert’s opinion, the so-called Merck Community iscomposed of one member only. Consequently, this factor favors the Respondent.
88.

On balance, the Expert finds that the so-called Merck Community cannot be

considered as a clearly defined community for the purposes of the Guidebook.
D.

Is there an Ongoing Relationship Between the Objector and a Clearly
Delineated Community?
(a)

89.

Objector’s Position

The Objector claims to be “the parent company of the Merck Community, andas such serves as the head of the Community’s vast international network”.120 The Objector
describes the role of its subsidiaries as follows:
The individual companies which make up the Community
are all, in their own ways and capacities, advancing theinterests of the group through continued research,development, product testing and consumer outreach, andat each step the Objector is there to provide guidance,
leadership and a unified vision for their work.121

118

Objections, p. 6; Rejoinder, p. 3.

119

Annex 2 to the Objections, p. 34.

120

Objections, p. 6.

121

Id.

-24-

90.

The Objector further argues that the community will continue to exist in the

future and that the Objector itself will remain the center of the community’s activities.122(b)91.

Respondent’s Position

The Respondent maintains that the Objector is “nothing more than Objector’s

own corporate organization – a parent company and its wholly owned subsidiaries”.123 In
other words, for the Respondent, the “Objector has an ongoing relationship with itself”.124
Therefore, the Objector lacks standing to file the community Objections at bar.
92.

In addition, the Respondent claims that it is impossible for the Objector toclaim an unambiguous association with the String because the former “is the third largest
healthcare company in the world, with more than $47 billion in annual revenue and morethan 83,000 employees around the world”.125 In the Respondent’s opinion, its community“is globally renowned for its foundations, licensees and related parties, all of whom use its
MERCK-related marks and names in connection with their activities, including philanthropy,
all in furtherance of their community’s collective purpose and interest”.126(c)93.

Expert’s Conclusion

The Expert will now turn to analyze whether the Objector is “associated withclearly delineated communities” or, in other words, whether it “has an ongoing relationshipwith a clearly delineated community”.127 Because of the absence of a clear definition ofwhat is a “community” under Article 3.2.2.4 of the Guidebook, the Parties referred to Article
4.2.3 of the Guidebook. However, this does not preclude the Expert from looking into thefactors contained in Article 3.2.2.4 of the Guidebook.
94.

The threshold to qualify for standing under the factors of Article 3.2.2.4 of the

Guidebook is different than the threshold to win a Community Objection on the merits under
the factors of Article 3.5.4. For standing to object it is sufficient to be an established
122

Id.

123

Response 419, p. 7; Response 425, p. 6. See also Rejoinder, p. 3.

124

Response 419, p. 7; Response 425, p. 6

125

Rejoinder, p. 1.

126

Id.

127

Guidebook, Article 3.2.2.4.

-25-

institution associated with a clearly delineated community, whereas the community must be
strongly associated with the String in order for an objection to be successful.128
Consequently, the threshold is lower for the purposes of Article 3.2.2.4 than for Article 3.5.4of the Guidebook.
95.

In this case, the Expert will take into consideration three factors of therelevant subsection of Article 3.2.2.4 of the Guidebook. The first two relevant factors may
be analyzed together: (i) “Institutional purpose related to the benefit of the associatedcommunity”; and (ii) “Performance of regular activities that benefit the associatedcommunity”.

Both factors should be interpreted as a requirement of “giving” to thecommunity and not “receiving” from the community. In other words, they relate to a benefit
for the associated community and not to a benefit for the head of such associatedcommunity.
96.

As any group of companies, the subsidiaries of Merck KGaA’s group ofcompanies serve the main purpose of generating profits for the parent company, which inturn may be translated into dividends for the parent company’s shareholders.

This isachieved through the regular activities or ordinary course of business of the subsidiaries,
which mainly benefit the parent company (and not the community as a whole).
97.

In the Expert’s Opinion, any institutional purpose of the Objector with thecommunity is outweighed by the purpose of the community of advancing the Objector’s
economical benefit. Indeed, the situation presented is completely the opposite of what the
aforementioned factors of the Guidebook require.

Therefore, both factors favor the

Respondent’s position.
98.

The third relevant factor of the corresponding subsection of Article 3.2.2.4 of

the Guidebook is “[t]he level of formal boundaries around the community”.

As wasdiscussed in ¶¶ 75-77 above, the Expert is of the opinion that Merck KGaA’s group ofcompanies is not a clearly delineated community, but rather a group of companies. The
boundaries in the so-called Merck Community are of ownership, not membership. As aresult, this factor favors the Respondent.
128

According to Article 3.5.4 of the Guidebook, there should be “a strong association between the community
invoked and the applied-for gTLD string”. Emphasis added.

-26-

99.

In light of the foregoing, the Expert determines that there is no ongoing

relationship between the Objector and a clearly delineated community.
VI.

SUBSTANCE OF THE OBJECTION
100.

Although the Expert has found that the Objector lacks standing to file the

Objection, the Expert considers appropriate to clarify a few things on the substance of such
Objection. Article 3.5.4 of the Guidebook establishes the four tests that enable the Expert
to “determine whether there is substantial opposition from a significant portion of thecommunity to which the string may be targeted”. Article 3.5.4 expresses the four tests asfollows:
For an objection to be successful, the objector must provethat:• The community invoked by the objector is a clearlydelineated community; and• Community opposition to the application is substantial;and• There is a strong association between the community
invoked and the applied-for gTLD string; and• The application creates a likelihood of material detriment
to the rights or legitimate interests of a significant portionof the community to which the string may be explicitly or
implicitly targeted. Each of these tests is described infurther detail below.129
101.

The Expert notes that each of the four tests transcribed is separated by theterm “and”, which implies that each one of them must be met in order to sustain an
objection. This is further confirmed by the last sentence of Article 3.5.4 of the Guidebook,which states that “[t]he objector must meet all four tests in the standard for the objection toprevail”. This leaves no room for interpretation and evidences the high threshold that acommunity objection must satisfy.
102.

In Section V above, the Expert has determined that the Objector lacks

standing to file the community objections at hand because it is not associated with a clearlydelineated community. As a result, the first test of Article 3.5.4 of the Guidebook is not met
129

Guidebook, Article 3.5.4 (emphasis added).

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either (namely, “[t]he community invoked by the objector is a clearly delineatedcommunity”). Since all four tests listed Article 3.5.4 of the Guidebook must be met in order
for a community objection to succeed, the Objections must fail also on the substance.
103.

Notwithstanding the above, the Expert is of the opinion that an analysis of thetests of Article 3.5.4 of the Guidebook would be a futile exercise because the Expert has
already determined that the Objector lacks standing.
104.

On a separate note, the Parties are engaged in local litigation in Germany

and the UK, as well as in several Legal Rights Objection proceedings in WIPO’s Arbitrationand Mediation Center regarding the String and variations thereof.130 The Objector has also
anticipated more litigation in other jurisdictions.131
105.

Article 12(4) of the Rules provides that, “[u]nless otherwise agreed by theparties, the expert’s report shall be admissible in any judicial or arbitral proceeding in which
all of the parties thereto were parties to the expertise proceedings in which such report was
prepared”.

For this reason also, a full scale analysis of the substance of the case –specially the issue of possible detriment to one of the Parties132 – would add nothing but
nuisance to one of the Parties (as the Expert Determination may be later introduced as
evidence in one of the ongoing proceedings).
106.

Although it has included some discussion of the 1970/1975 Agreements in its

submissions, the Objector ultimately appears to suggest that the appropriate forum to
discuss any detriment or breach of the 1970/1975 Agreements is WIPO’s Arbitration andMediation Center, as well as the courts of Germany and the UK:
Although this agreement discusses both the acceptable
use of the Merck name and trademark, all considerations
regarding trademark concerns are left to the LRO
procedure and the parties’ ongoing court litigation.133

130

See ¶¶ 25-26, supra.

131

See ¶ 25, supra.

132

Guidebook, Article 3.5.4 (“The application creates a likelihood of material detriment to the rights orlegitimate interests of a significant portion of the community to which the string may be explicitly or implicitly
targeted. [. . .]”)

133

Objections, p. 7.

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107.

The Expert is of the opinion that the community objection proceeding is not

the appropriate forum to discuss the interpretation, scope or breach of the 1970/1975
Agreements.
VII.

COSTS
108.

In accordance with Article 14(e) of the Procedure, the Centre shall refund to

the prevailing party its advance payment of costs.
VIII.

SUMMARY OF FINDINGS
109.

Within the 45 day time-limit set forth in Article 21(a) of the Procedure, theExpert concludes as follows:

110.

(i)

the Objector lacks standing to file the Objections because it has failed
to evidence an ongoing relationship with a clearly delineatedcommunity;(ii)

the Centre shall refund to the prevailing party its advance payment ofcosts; and(iii)

this Expert Determination shall be published in full.

For these reasons, the prevailing Party is the Respondent and thus the

Objection shall be dismissed.
IX.

DECISION
111.

For the above reasons and according to Article 21(d) of the Procedure, I

hereby render the following Expert Determination:(i)

The Objections of Merck KGaA are dismissed;(ii)

Merck Registry Holdings, Inc. prevails in both consolidated cases; and(iii)

Merck Registry Holdings, Inc.’s advance payment of costs for bothconsolidated cases shall be refunded by the Centre.

***

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Date: 19/November/2013

Signature:___________________
Bernardo M. Cremades
Expert-30-