Solution To Top Level Domain Fight — Merck vs. Merck? “Geo-Targeting Filters!” Seriously?!

Regular long term readers may recall that the German Merck, and the U.S. based one settled a flap over the claim to “Merck” on Facebook’s proprietary addressing conventions, a few years ago.

These longer term readers also know that since and after W.W. I, and the Treaty of Versailles, German Merck and U.S. Merck have been two completely unrelated but increasingly-vast multinational companies. Confusion has ensued — ever since the end of the first decade of the last century. [Amazing, to me at least, that neither one apparently sees an adequate benefit in resolving the issue, once and for all, by re-branding in a more distinctive way.]

Now, in any event, on to today’s news: the online edition of Lexology is reporting, overnight, that the similar (but much broader) dispute between the two, over top level domain names, will be solved, for now — by each entity using geo-targeting filters — when their names are typed in, by users around the globe.

If you are in Germany and type in “Merck.com”, you’ll get the local German one. In the U.S., you’ll get the one I blog about. Of course, if you are in New Jersey, and looking for the German one — well. . . you are going to have to figure it out for yourself. Sub-optimal, right? But each company has a largely self-inflicted wound here, right? Right.

Okay, here’s a bit of U.S. Merck’s less than thrilling result (as it brought the complaint, and essentially lost the claim):

. . . .The objector Merck & Co, Inc (MCI) and the defendant Merck KGaA (MKG), share a well documented common history in relation to the trade mark MERCK. MCI was originally founded as a subsidiary of MKG and after the companies split at the end of the First World War, they agreed to co-exist. MCI subsidiaries maintained the rights to use the name MERCK in the US and Canada and MKA had the rights to use the name everywhere apart from the US and Canada. MKA owns various trade mark registrations throughout the world for ‘EMERCK’ and ‘MERCK’. MCI’s group companies mainly use the name ‘MSD’ for their activities outside the US and Canada.

MRK-2FB-gTLD-2013 MCI argued that the gTLD strings .merck and .emerck were confusingly similar to its registered trade marks for the word ‘MERCK’ and that the applications by MKG took unfair advantage and unjustifiably impaired the distinctive character and reputation of their marks and therefore constituted an infringement of their rights. . . .

Although the panel noted that the disputed gTLD strings could create a likelihood of confusion with MCI’s marks, this would not be greater than any that may exist already as a result of the common history between the parties. MKG made clear that it would take all necessary measures, including so called ‘geo-targeting’, to prevent internet users in the territories in which MCI had relevant trade mark rights (US and Canada), from being able to visit websites that used the new gTLDs. Geo-targeting is a function that enables the targeting of websites to potential customers located in particular geographical areas. . . .

We will keep you posted — but either company could help themselves immeasurably here, by adding something truly distinctive to the branding they use. I guess they’d rather fight than switch. And I get that.

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