WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayer Aktiengesellschaft v. Yongho Ko

Case No. D2001-0205

 

1. The Parties

The Complainant in this administrative proceeding is Bayer Aktiengesellschaft, a public limited company established under the Laws of the Federal Republic of Germany, having its principal place of business at 51368 Leverkusen, Germany.

The Respondent in this administrative proceeding is Yongho Ko, 300-5 Yuljeondong Jangangu, Suwon Kyungkido, Kyungkido, Kyungkido 440-320, Korea.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <wwwbayer.com>. The registrar with which the domain name registered is TUCOWS.com, Inc. ("the Registrar").

 

3. Procedural History

On February 8, 2001 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in digital form and the hard copy was received on February 12, 2001.

On February 12, 2001 the Center sent an acknowledgement of receipt of the Complaint to the Complainant by e-mail.

On February 13, 2001 the Center sent a request for Registrar Verification to the Registrar by e-mail. On February 15, 2001 the Registrar responded to the Center by e-mail and stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name <wwwbayer.com>, confirmed that the Respondent was at that time the registrant of the said domain name, provided contact details for the Respondent, the technical contact, the administrative contact and the billing contact for the said domain name, and confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the said registration.

On February 16, 2001, the Center contacted the Complainant by e-mail advising the Complainant that it was necessary to amend paragraphs 3 and 15 of the Complaint as filed relating to the contact details of the Complainant and the submission to court jurisdiction in accordance with paragraph 3(b)(xiii) of the Rules.

On February 20, 2001 the Center received amendments to paragraphs 3 and 15 of the Complaint.

On February 21, 2001 the Center finalised its review of the Complaint and was satisfied that the Complainant as amended complied with the Rules and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.

On February 21, 2001 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name <wwwbayer.com> to the Respondent by post/courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on February 21, 2001 and that the Respondent was required to submit a Response to the Center on or before March 12, 2001.

On March 5, 2001, the Center received an e-mail from the Respondent stating that he did not have fluency in the English langaute and requesting that these Administrative Proceedings be held in the Korean language.

On March 6, 2001 the Center replied to the Respondent to the effect that paragraph 11(a) of the Rules provides that unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement the language of the administrative proceeding shall be the language of the Registration Agreement and in followed that the language of these Administrative Proceedings is English. On the same date the representative of the Complainant sent an e-mail to the Center confirming that the Complainant did not agree that Korean or any language other than English should be the language of these Administrative Proceedings.

On March 16, 2001 as no Response had been filed by the Respondent, the Center sent a Notification of Respondent Default to the Respondent, the Administrative and Billing Contact of the Respondent and the Technical Contact of the Respondent by e-mail. A copy of said Notification was at the same time sent to the Complainant.

On March 21, 2001 the Center invited James Bridgeman to act as Administrative Panel in these proceedings.

On March 23, 2001 having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member. On the same date, the case file was transferred to the Administrative Panel.

In the view of the Administrative Panel, the proper procedures were followed and the panel was properly constituted.

 

4. Factual Background

The Complainant one of the worldís leading chemicals and health care companies, which has its headquarters in Leverkusen, Germany.

The Complainant owns, among a large number of other trademarks, more than 1.000 registrations of the trademark BAYER throughout the world, including the United States of America, Germany and South Korea. The Complainant has furnished this Administrative Panel with a list of the said registrations as an annex to the Complaint. Said registrations cover an extensive range of goods and services, including without limitation: pharmaceutical preparations, chemicals, waste water treatment chemicals for industrial use, pigments, synthetic and artificial resins, coatings, plastics, greases, lubricants, rubber, synthetic rubber and rubber chemicals for use in the automotive, tire, adhesives, fibers, yarns, threads, agricultural chemicals, pesticides, insecticides, fungicides, herbicides and cleaning materials. The Complainant has further furnished copies of the relevant certificates of registration issued by the Patent and Trademark Offices of the United States of America, Germany and South Korea.

The Complainant has also established Internet www sites located at a number of generic and country code Top Level Domains, inter alia <bayer.com> and <bayer.de>. These www sites allow Internet users to access information regarding the Complainant's group of companies, its products and its services.

 

5. Partiesí Contentions

A. Complainant

The Complainant requests that the said domain name be transferred to the Complainant. The Complainant further submits that in accordance with the Policy, Paragraph 4(a), the Complainant is entitled to succeed on the grounds that:

(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) The Respondent has no rights or legitimate interests in respect of the domain name; and

(3) The domain name was registered and is being used in bad faith.

In support of this application the Complainant submits that the company name BAYER dates back to 1863, when the firm of "Friedrich Bayer & Co." was established in the town of Elberfeld, now part of the city of Wuppertal. The name was transferred in 1881 to the newly formed stock corporation "Farbenfabriken vorm. Friedrich Bayer & Co.". This company began manufacturing and marketing pharmaceutical products in 1888, relocating its headquarters to Leverkusen in 1912. The use of the BAYER name as a trademark dates back to that time.

The Complainant further submits that it has spent substantial effort, time and money advertising and promoting the BAYER trademark throughout the world. As a result the mark has become world-famous, and the Complainant has developed an enormous amount of goodwill in the trademark.

The Complainant states that the Respondent registered the said domain name on October 7, 2000 without authorization from the Complainant.

Upon entering the domain <wwwbayer.com>, which any consumer attempting to visit the Complainantís official www site at <www.bayer.com> may inadvertently do if they omit the "dot", the user will be redirected to two connected www sites located at <inboxcash.com> and <freelotto.com> which offer a money earning facility by ordering e-mail advertisements and Internet gambling. In support of this submission the Complainant has furnished screenshots of the connected www sites as an annex to the Complaint. The connection between the Respondent and the operators of these www sites is not known to the Complainant.

The Complainant submits that the said domain name <wwwbayer.com> is confusingly similar to the Complainantís trademark and company name as required in Paragraph 4(b)(i) of the Policy. It submits that the addition of the letters <www> to the Complainant's trademark is not sufficient to avoid confusion. In support of this submission the Complainant refers to the administrative panel decisions in InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck (WIPO Case No. D2000-0069, April 3, 2000), and Microsoft Corporation v. Stoneybrook (WIPO Case No. D2000-1274, November 28, 2000).

It is the Complainant's submission that the incorporation of the letters <www> in the said domain name <wwwbayer.com> appears to be designed to take advantage of the mistake likely to be made by Internet users when trying to access the Complainantís www site, i.e. missing the "dot" before the second level domain <bayer>.

The Complainant submits that under Paragraph 4(c) of the Policy, evidence of a registrantís rights to and legitimate interest in the domain includes: demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute; an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The Complainant submits that there no such evidence before the Administrative Panel in these Administrative Proceedings. The Complaint states that the Respondent has no connection or affiliation with the Complainant, he has not received any license or consent to register the domain name. The Complainant further submits that the Respondent has not registered any similar trademark and is not known to act under the domain name, nor is the Respondent using the domain name in connection with a bona fide offering of goods or services according to paragraph 4(c) (i) of the Policy.

The Complainant submits that the Respondent is in fact, using the domain name misleadingly to divert users to a gambling site and a money earning facility through confusion. In this regard the Complainant refers to the decisions of the administrative panels in Chanel, Inc. v. Estco Technology Group, (WIPO Case No. D2000-0413, September 18, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, (WIPO Case No. D2000-0416, June 29, 2000), Microsoft Corporation v. Stoneybrook (WIPO Case No. D2000-1274, November 28, 2000).

As regards the requirement that the Complainant establish that the said domain name has been registered and is being used in bad faith. The Complainant argues that there can be no doubt that the domain name <wwwbayer.com> was registered and used for the sole purpose of creating a likelihood of confusion with Complainantís mark and web site address <www.bayer.com> to divert potential customers to the businesses run under <inboxcash.com> and <freelotto.com>. The Complainant further submits that the addition of the letters <www> to the Complainantís mark can only be explained as a deliberate attempt to exploit userís typographical mistakes when seeking Complainantís web site. This conduct is contrary to Paragraph 4(b)(iv) of the Policy and therefore a clear case of use in bad faith. In support of these submissions the Complainant again refers to the decisions of the administrative panels in InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck (WIPO Case No. D2000-0069, April 3, 2000), Microsoft Corporation v. Stoneybrook (WIPO Case No. D2000-1274, November 28, 2000).

B. Respondent

There was no response filed by the Respondent.

 

6. Discussion and Findings

In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and

(iii) the said domain name has been registered and is being used in bad faith.

It is clear that the Complainant is the owner of a substantial number of registrations and pending applications for registration of the trademark BAYER in numerous jurisdictions throughout the world. These registrations and pending applications include a number of registrations for the trade mark BAYER in South Korea where the Respondent is resident. The Complainant has furthermore established that it has an established goodwill and reputation in many jurisdictions throughout the world including South Korea.

This Administrative Panel has compared Complainant's said trademark BAYER with the said domain name <wwwbayer.com> and it is clear that the said domain name is confusingly similar to the Complainant's said trademark.

This Administrative Panel accepts the submissions of the Complainant that the letters <www> in the context of a domain name, do not take away from the likelihood of confusion between the domain name and the trademark among users of the Internet. In this regard this Administrative Panel notes that the panelists in InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck (WIPO Case No. D2000-0069, April 3, 2000), and Microsoft Corporation v. Stoneybrook (WIPO Case No. D2000-1274, November 28, 2000) reached a similar conclusion with regard to the addition of the letters <www> to a trademark.

As regards the question of whether the Respondent has any rights or legitimate interest in the said domain name, the Complainant has submitted that there is no evidence of any such rights. It is for the Complainant to prove this element of the test also, however it has been accepted in other decisions that because of the difficulty in proving a negative, once the Complainant has made out a prima facie case that the Respondent has no such rights or interest, the Respondent is expected to explain its position. In this case, the Complainant has established that it has a distinctive mark. It has also established that this mark is known in the jurisdiction where the Respondent is resident. It has further established that it has not given the Respondent any permission to register the said domain name which is similar to the Complainant's trade mark. Furthermore the Complainant has established that it has an established presence on the Internet with domain names consisting of the Complainant's trade mark and the respective TLD. Furthermore, the Complainant has furnished evidence that the Respondent has caused or permitted the said domain name to be used as a link address to two gambling sites. There would appear to be no connection between the word <wwwbayer> and either of these sites.

In these circumstances, it would appear to this Administrative Panel that the Respondent has a case to answer on this element of the test and has failed to do so. In a number of decisions including the decision referred to by the Complainant in these proceedings: Universal City Studios, Inc. v. G.A.B. Enterprises, (WIPO Case No. D2000-0416,

June 29, 2000) administrative panels have accepted that once the Complainant has made out a prima facie case the burden shifts to the Respondent to explain that it has rights or a legitimate interest in the domain name. In the words of the administrative panelist in the latter case: "Once a complainant makes a prima facie case showing that the respondent lacks rights in the domain name, the burden of production shifts to the respondent to come forward with demonstrable evidence proving a legitimate interest in the domain name".

This Administrative Panel is therefore satisfied that the Complainant has made out a prima facie case which, in the absence of any Response from the Respondent addressing these questions, is sufficient to satisfy the second element of the test in paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interest in the said domain name.

As to whether the said domain name was registered and is being used in bad faith, the Complainant has made out a prima facie case that the said domain name <wwwbayer.com> was registered and is being used for the sole purpose of creating a likelihood of confusion with Complainantís mark and web site addresses <www.bayer.com> and <www.bayer.de> to divert potential customers to the businesses run at the www sites located at <inboxcash.com> and <freelotto.com>. In reaching this conclusion this Administrative Panel is conscious that in similar circumstances, in Microsoft Corporation v. Stoneybrook (WIPO Case No. D2000-1274, November 28, 2000) the administrative panel accepted such activities were sufficient to establish a prima facie case of bad faith on the part of the Respondent.

Furthermore this Administrative Panel is of the view that, in the absence of any other explanation forthcoming from the Respondent, the addition of the letters <www> to the Complainantís mark must on the balance of probabilities be considered to be a deliberate attempt to exploit userís typographical mistakes when seeking Complainantís web site. In this regard this Administrative Panel is conscious that in both InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck (WIPO Case No. D2000-0069, April 3, 2000), and Microsoft Corporation v. Stoneybrook (WIPO Case No. D2000-1274, November 28, 2000) the learned panelists accepted that the addition of the letters <www> to the Complainant's trademark in a domain name, is, in the absence of any other plausible explanation, best explained as a deliberate attempt to exploit the internet user's typographical mistakes when seeking the complainantís www site.

This Administraive Panel therefore concludes that in the absence of any explanation from the Respondent the Complainant has established that the said domain name has been registered and is being used in bad faith.

 

7. Decision

With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the domain name <wwwbayer.com> is confusingly similar to the Complainant's trademark mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <wwwbayer.com> should be transferred to the Complainant.

 


 

James Bridgeman
Sole Panelist

Dated: April 6, 2001