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Two world wars and one dot-brand? Americans beat Germans in long-running gTLD fight, kinda

Kevin Murphy, May 13, 2021, 08:13:56 (UTC), Domain Registries

A chemicals company called Merck has beaten another chemicals company called Merck for the right to run .merck as a dot-brand gTLD.

But it looks like we may be looking at an unprecedented case of a shared dot-brand.

US-based Merck Registry Holdings and Germany-based Merck KGaA appear to have resolved their long-running battle over the string, with the German company recently withdrawing its application, enabling its rival to sign a contract with ICANN and go live on the internet.

But it’s not as straightforward as one applicant emerging victorious over the other. Recent changes to the American company’s winning gTLD application strongly suggest that the two companies intend to share the space.

The application was substantially rewritten in March to make it clear that American Merck plans to allow unaffiliated third parties to register .merck names, and that it may substantially change its eligibility policies not long after launch.

Whereas its original 2012 application was pretty much boilerplate dot-brand territory, the March 2021 version is more nuanced. It now talks about extending eligibility to “other registrants” rather than merely “licensees”, for example.

The application now says it “reserves the right to consider allowing third party registrants outside of current affiliate or subsidiary relationships to own .MERCK domains at a future date.”

But, more importantly, it now also says that it intends to transfer its .merck Registry Agreement to a new shell company, London-based MM Domain Holdco Ltd, shortly after ICANN signs it off.

Company records show that MM Domain Holdco has directors — trademark lawyers — from both the American and German companies.

So we’re looking at some kind of shared dot-brand, it seems. If you don’t count Amazon’s uneasy deal with South American governments, that’s pretty much unprecedented for new gTLDs.

The US applicant is a subsidiary of Merck & Co Inc, a New York-listed company with a market cap of $197 billion. The German company is listed in Frankfurt with a market cap of €17 billion.

The German firm is 350 years old and was the parent of the American company until it was seized, and eventually re-privatized as a separate entity, by the US government during World War I.

Both have trademark rights to the term “Merck” and a decades-old cooperation agreement, but have nevertheless been in legal disputes over the mark in recent years.

It will be interesting to see whether the two Mercks ultimately share and actively use .merck, or like so many other dot-brands merely own a defensive, inactive gTLD.

The resolution of the contention set comes after the better part of a decade and many years of negotiations and legal tussles with ICANN.

ICANN had been bent on forcing the companies to a last-resort auction of which it would be the financial beneficiary. Whether this was because it wanted to force the Mercks to the negotiating table to resolve their differences amicably, or because it saw dollar signs… you decide. Maybe both.

The Mercks have in recent years repeatedly delayed the auction, using different ICANN appeals mechanisms. The contention set had been in a Cooperative Engagement Process since late last year, but had been slated to go to auction yesterday, May 12.

The settlement occurred before that date, however, so ICANN won’t be getting any auction money this time.

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Comments (1)

  1. Rubens Kuhl says:
    May 13, 2021 at 10:40 am

    Not unprecedented, as .sas is operated like this by the IT company and the airline that share the name.

    Reply

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