Jun 10, 2019

ICANN to host first-ever dot-brand auction

Two chemical corporate giants are fighting for a domain name in court

Germany-based Merck Group will compete with American rival Merck & Co for .MERCK at an ICANN (The International Corporation for Assigned Names and Numbers) auction scheduled for July 17, states DomainIncite (www.domainincite.com).

The auction will be the first all-brand ICANN auction, but not the first global trademark complication as companies try to protect their brands on hundreds of new Internet domains. ICANN admitted earlier that brands were at risk of domain abuse with new top level domains issued by the NGO.

Two Merck pharmaceutical companies, one with rights to use the name in the US and Canada and the other with rights for the rest of the world, are now also fighting in court. Merck KGaA is suing Merk & Co. over the .MERCK top level domain name. The German company has filed two lawsuits against competing applicant in District Court in Hamburg as well as in the United Kingdom.

The German Merck is a chemicals company founded in 1668 and the US Merck was founded as its subsidiary in the late 19th century that was confiscated by the US government during World War I and then established as an independent company.

The German company uses merckgroup.com as its primary domain today. The US firm, which is by far the larger company, uses merck.com.

Both companies applied for .MERCK as “community” applicants and went through the Community Priority Evaluation process. Because it’s a “last-resort” auction for ICANN, the value of the winning bid will be disclosed, and all the money will flow to the NGO.

It will be the first ICANN gTLD auction since three years ago, when a Verisign proxy agreed to pay $135 million for .web.

The Merck companies could still avoid the ICANN auction by resolving their contention set privately.

International trademark disputes are very common, a company name trademarked in one country may belong to an entirely different corporation someplace else.


Also published on Medium.