WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayer Aktiengesellschaft v. Dangos & Partners

Case No. D2002-1115

 

1. The Parties

The Complainant is Bayer Aktiengesellschaft, 51368 Leverkusen-Bayerwerk, Germany, represented by Thomas M. Williams, Esq. Of Brinks Hofer Gilson & Lione, Chicago, Illinois, United States of America.

The Respondent is Dangos & Partners, K Dangos, 150 Prospect Mira, Moscow, Russia.

 

2. The Domain Name and Registrar

The disputed domain names are:

<bayerchemicals.net>
<bayerchemicals.org>
<bayerhealthcare.org>
<bayerholding.com>
<bayerholding.net>
<bayerholding.org>
<bayergroup.net>
<bayergroup.org>
<bayergroup.biz>
<bayergroup.info>
<bayersucks.org>
<bayersucks.biz>
<bayersucks.info>

The Registrar for all the domain names is Register.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 4, 2002, by e-mail, and on December 10, 2002, in hardcopy. On December 6, 2002, the Center transmitted a request for registrar verification in connection with the domain names at issue to Register.com, Inc. On December 9, 2002, Register.com, Inc. replied to the Center confirming that the Respondent is the registrant of the disputed domain names and provided the information contained in the Registrantís WHOIS database. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "UDRP Rules"), the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "UDRP Supplemental Rules"), the Restrictions Dispute Resolution Policy for ".BIZ" ("RDRP"), and the Supplemental Rules for Restrictions Dispute Resolution Policy (the "Supplemental RDRP Rules"),

In accordance with the UDRP Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2002. In accordance with the UDRP Rules, paragraph 5(a), the due date for Response was December 31, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on January 9, 2003.

The Center appointed Angelica Lodigiani as the sole Panelist in this matter on January 20, 2003. The Panel finds that it was properly constituted, notwithstanding the Complainant designated three different individuals, asking the Center to attempt to appoint one of them as the Administrative Panel for the subject case, in accordance with Paragraph 6 of the UDRP Rules and Paragraph 7 of the UDRP Supplemental Rules. Indeed, under Paragraph 6 (b) of the UDRP Rules, "if neither the Complainant nor the Respondent have elected a three-member Panel, the Provider shall appoint (Ö) a single Panelist from its list of panelists". Only in case of a three-member Panel, the Provider shall endeavor to appoint one Panelist from the list(s) of candidates of the party(ies) that elected the three-member Panel (Paragraph 6 (c), (d) and (e) of the UDRP Rules).

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the UDRP Rules, Paragraph 7.

 

4. Factual Background

According to the Complaint, 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 in Germany. In 1881, the name was transferred to a stock corporation called "Farbenfabriken vorm. Friedrich Bayer & Co." This company began manufacturing and marketing pharmaceutical products in 1888, and has sold such products under the BAYER trademark since that time. Through more than 350 local subsidiaries, the Complainant does business on all five continents, manufacturing and selling everything: human pharmaceutical and medical care products, veterinary products, diagnostic products, agricultural chemicals, industrial chemicals, fabrics, paints, and specialty polymers.

The Complainant is the owner of over 1000 trademark and service mark registrations and pending applications for registration of the BAYER trademark worldwide. The Complainantís 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 industry. The Complainant enclosed to the Complaint a printout referencing its worldwide trademark registrations and pending applications.

The Complainant is also the owner of the domain name <bayer.com>, whose corresponding website is used to promote the BAYER name and provide consumers with a resource regarding Complainantís business and products (Annex 24). Furthermore, the Complainantís affiliates Bayer Corporation and Bayer Inc., as well as selected divisions, have registered numerous domain names comprising the trademark BAYER in conjunction with generic terms that describe specific business units. For instance, Bayer Corporation owns the domain names <bayerdiagnostics.com>, <bayerplastics.com>, and <bayerleather.com>, while Bayer Inc., is the owner of <bayerhealth.com>.

According to the Complaint, and to the enclosed evidence, the Respondent registered several other BAYER formative domain names in the past. The Complainant filed its first combined UDRP/RDRP Complaint against the Respondent on or about February 8, 2002. That Complaint related to 23 unauthorized BAYER formative domain names. The WIPO Panelist decided to transfer all 23 domain names to the Complainant (Bayer Aktiengesellschaft v. K Dangos, Case No. D2002-0138 of April 27, 2002).

The Complaint highlights that the disputed domain names in the present case were registered on the same date as the domains that were the subject of the previous WIPO decision. However, the Complainant was not aware of these registrations at the time of filing and therefore did not include them in the first Complaint. To avoid the time and expense associated with a UDRP/RDRP proceeding, the Complainant attempted to purchase the disputed domain names of the instant case from the Respondent for a price equal to the Respondentís registration fees. However, the Respondentís e-mail and courier correspondence appearing in the relevant WHOIS database were returned as undeliverable (Annexes 20, 21 and 22).

All the aforementioned statements are uncontested and supported by the evidence. Therefore, the Panel takes the view that the Complainantís statements are a fair representation of the Complainantís activity and intellectual property rights, and of the Respondentís behavior with respect to the registration of other BAYER formative domain names.

 

5. Partiesí Contentions

A. Complainant

In addition to the statements already mentioned under Paragraph 4 above, according to the Complaint; (1) the domain names registered by the Respondent are confusingly similar to the BAYER trademark; (2) the Respondent lacks any rights and legitimate interests in respect of the disputed domain names that were registered; and (3) the domain names were registered and are being used in bad faith and not primarily for a bona fide business or commercial purpose.

As far as the similarity of the disputed domain names with the BAYER trademark is concerned, the Complainant states that the latter is well-known throughout the world. The Complainant further states that the fact that the BAYER trademark is renown also was recognized by at least three UDRP decisions enclosed to the Complaint. It is the Complainantís view that the mere addition of a descriptive term to an otherwise distinctive or well-known trademark, renders the domain names confusingly similar to the Complainantís famous trademark. In the instant case, the addition of descriptive words such as "healthcare," "chemicals," "holding," and "group," to the famous BAYER trademark results in confusingly similar domain names.

Consumers seeking information about BAYER goods and services are likely to assume that the Internet location would correspond to the trademark and products. In the present case, a consumer accessing one of the Respondentís websites corresponding to the disputed domain names (i.e., <bayerholding.com> or <bayerchemicals.net>), expecting to find information relating to the Complainantís business activities will instead find an offer to sell the domain names. At that point, the consumer, finding no content appearing at the site about the Complainant, may look to a WHOIS ownership listing to find that the Respondent owns these domain names. This could lead the consumer to erroneously conclude that the Complainant is in some way affiliated with the Respondent. Accordingly, as long as the Respondent owns the disputed domain names, it will be beyond the Complainantís control to prevent such use of the domain names. In addition, the Respondent will have the ability to tarnish the BAYER mark, as well as cause confusion. Therefore, the Complainant will be injured if the Respondent is allowed to keep the subject domain names because consumers are likely to assume that any websites set up at the domain names are related to or sponsored by the Complainant.

Regarding the domain names <bayersucks.org>, <bayersucks.biz> and <bayersucks.info>, in the Complainantís view, these domain names also should be considered confusingly similar to its BAYER trademarks. Although UDRP decisions relating to "sucks" domain names are not always consistent, the Complainant cites a 2001 WIPO decision to support its belief that the addition of the word "sucks" to a famous trademark will not avoid confusing similarity under the present facts (see Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC., Case No. D2001-1121, of November 7, 2001). Consequently, the Complainant submits that <bayersucks.org>, <bayersucks.biz> and <bayersucks.info> should be treated as the other unauthorized disputed domain names.

With respect to the Respondentís lack of rights or legitimate interests in the disputed domain names, the Complainantís arguments can be summarized as follows:

Today, the BAYER trademark is recognized worldwide, and the Complainant is acknowledged as a leader in the fields of healthcare, agriculture, chemicals, and polymers. The Respondent cannot show any of the circumstances set forth in UDRP Paragraph 4(c) that demonstrate the Respondentís rights or legitimate interests to the disputed domain names: (1) the Respondent is not using or preparing to use the domain names in connection with a bona fide offering of goods or services because any such use would constitute trademark infringement; (2) the Respondent has not been commonly known by the domain names and likely cannot show any rights prior to those of the Complainant; and (3) the Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the claimed trademark at issue here. The Respondent has placed an offer to sell each domain name at its corresponding website. The offer sets US$200 as a minimum opening bid, an amount well in excess of the registration fee the Respondent paid to register each domain name.

Furthermore, the Respondent cannot claim that it has a legitimate interest in the "bayersucks" registrations. These domain names are not used to make social commentary or criticism. Instead, the Respondentís "sucks" domain names link to websites offering to sell the domain names. Consequently, this matter differs from UDRP "sucks" decisions favoring registrants who linked "sucks" domain names to commentary and Complaint websites raising legitimate free speech issues (Diageo plc v. John Zuccarini, Case No. D2000-0996 of October 22, 2000).

Because the Respondent cannot demonstrate any of the circumstances set forth in UDRP Paragraph 4(c) or any other legitimate interest in the domain names, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names.

Finally, with respect to the fact that the disputed domain names have been registered and are being used in bad faith, according to the Complainant, in the present case, the Respondent runs afoul of several bad faith factors.

First, the disputed domain names were registered for the purpose of selling them for an amount in excess of the Respondentís out-of-pocket costs. The disputed domain names each link to websites that offer the domain names for sale via bidding. (Annexes 4-16). The minimum opening bid is set for US$200. This amount is well in excess of the typical US$35 registration fee. Consequently, according to the Complaint, this is evidence that the Respondent has registered and is using the domain names in bad faith. According to the Complainant, as established in other WIPO decisions, bad faith may be found even where the demand for payment is subtle and not necessarily an outrageous amount (Microsoft Corp. v. Amit Mehrotra, Case No. D2000-0053 of April 10, 2000; Koninklijke Philips Electronics N.V. v. In Seo Kim, Case No. D2001-1195 of November 12, 2001).

Second, the Respondent has engaged in a pattern of registering BAYER formative domain names. The Respondent registered 23 BAYER formative domain names that were found to be in bad faith by a WIPO panel (Annex 18). The additional domain name registrations at issue in the present case also include references to BAYER business activities that the Respondent was aware of at the time of registering these domain names. On or about December 6, 2001, the Complainant announced to the public in a press release that it was reorganizing into a management holding company with operating subsidiaries in the areas of Healthcare (i.e., Bayer-Healthcare), Polymers (i.e., Bayer-Polymers), Agrochemicals (i.e., Bayer- Agrochemicals), and Specialty Chemicals (i.e., Bayer-Chemicals). This press release was distributed to the media and posted on the Complainantís website, which is accessible from any place in the world to anyone with Internet access, including the Respondent in Russia. This announcement was widely reported in the media.

Slightly more than one month later, on January 14, 2002, the Respondent registered its BAYER domain names that correspond with the names of the Complainantís new subsidiaries, including <bayerhealthcare.org> and <bayerchemicals.net>. In its Response to the previous Bayer AG UDRP/RDRP Complaint, the Respondent admitted that it was aware of Complainantís rights in the BAYER mark before it registered the BAYER formative domain names. Consequently, the previous WIPO panel specifically held that the Respondent knew of the Complainantís proposed use of the BAYER mark in connection with the descriptive terms "healthcare," "chemicals," and "polymers" when it registered the domain names at issue in the first Complaint. By virtue of the Respondentís actions, the Complainant is prevented from representing its mark in domain names that correspond with its business activities. The Complainant submits that the same reasoning applies in the present case.

Third, by registering and using the disputed domain names, the Respondent has created a likelihood of confusion with the Complainantís BAYER mark (see above).

Fourth, because the Respondent knew of the Complainantís prior rights in the trademark BAYER, it breached its agreement with the Registrar of the disputed domain names, Register.com, Inc., when it registered and maintained domain names that incorporate the BAYER trademark. The Complainant submits that this breach is properly characterized as "bad faith" under the non-exclusive list of factors in the UDRP.

Fifth, even if the Respondent did not know that its registration of the domain names was unlawful at the time of registration, the Register.com Domain Name Services Agreement states that it was the Respondentís responsibility to determine whether the domain name registrations would infringe or violate someone elseís rights. The Respondent could have easily uncovered information about the Complainantís rights by simply searching on the Internet for the term BAYER, which would have led the Respondent to the Complainantís website. Moreover, the Respondent has maintained its registrations despite having actual knowledge, via the previous WIPO panelís decision, that it was in violation of the UDRP. Instead of canceling its remaining registrations or offering to transfer them to the Complainant, the Respondent has maintained the unauthorized BAYER domain names. Thus, the Respondent has violated the Register.com Services Agreement, which is further evidence of bad faith (Don Algodon H, S.A. v. Miquel Garcia Quintas, Case No. D2000-1042 of December 27, 2000).

Sixth, the Respondent did not register the ".biz" and ".info" disputed domain names for any bona fide business or commercial purposes. The Complainantís BAYER mark, as previously mentioned, is famous. Therefore, the Respondent could not register or use the domain names in the present manner without infringing the Complainantís rights in its BAYER trademark. Since the Respondent confirmed in its Response to the previous UDRP/RDRP Complaint that it was aware of the Complainantís rights in the BAYER mark, the Respondent knew the ".biz" and ".info" domain names could never be used without violating the Complainantís trademark rights in its famous BAYER mark. Accordingly, the Respondent could not have intended to use the ".biz" and ".info" domain names for any actual business or commercial purpose apart from cybersquatting.

B. Respondent

The Respondent did not reply to the Complainantís contentions. The Panel, in compliance with Paragraph 14 of the UDRP Rules, shall therefore proceed to a decision on the Complaint and shall draw such inferences therefrom as it considers appropriate.

 

6. Discussion and Findings

According to Paragraph 4(a) of the UDRP, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (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; (3) the domain name was registered and is being used in bad faith.

Furthermore, according to Paragraph 4 of the RDRP, as far as the domain names <bayergroup.biz> and <bayersucks.biz> are concerned, the Complainant must prove that these domain names are not being or will not be used primarily for a bona fide business or commercial purpose.

A. Identical or Confusingly Similar

The Complainantís trademark is BAYER. None of the domain names at stake is clearly identical to the Complainantís trademark.

In order to establish whether the disputed domain names are confusingly similar to the Complainantís trademark, they should be split in two groups. The first group includes all the domain names consisting of the term "bayer", coupled with the generic terms "chemicals", "healthcare", "holding" or "group". The second group consists of the domain names containing the term "bayer" followed by the term "sucks".

As far as the first group is concerned, the Panel - in line with the finding of the Panel in WIPO Case No. D2002-0138 - believes that all domain names consisting of the union of the term "bayer" with the terms "chemicals", "healthcare", "holding" or "group" are confusingly similar to the BAYER trademark. Indeed, as also recognized in previous WIPO decisions cited in the Complaint, the BAYER trademark is a worldwide renown trademark. The mere addition of generic terms, such as the ones mentioned above, to a well-known trademark is insufficient to exclude a confusing similarity of the disputed domain names with the Complainantís trademark (See WIPO Case D2002-0138). This is even more so when the generic terms that have been appended to the well-known trademark refer to the activity that the Complainant performs under its trademark and to the name of at least two of the Complainantís recently incorporated subsidiaries, i.e., Bayer-Healthcare and Bayer-Chemicals, or to the "corporate structure" of the Complainant. According to the evidence submitted with the Complaint, the Complainant transformed its current organizational structure into a management holding company with independent operating subsidiaries. Hence, the Complainant is a "holding" company operating through its "group" of companies.

In the light of the foregoing, in the Panelís view, there is no doubt that the <bayerchemicals>, <bayerhealthcare>, <bayerholding> and <bayergroup> domain names are confusingly similar to the BAYER trademark.

As far as the domain names <bayersucks.org>, <bayersucks.biz> and <bayersucks.info> are concerned, there is some divergent views in UDRP decisions relating to "sucks" domain names, which the Complainant acknowledges in the Complaint. In some cases, Panels have concluded that the domain names were not confusingly similar to the Complaintís trademark since Internet users would treat the additional "sucks" as a pejorative exclamation and therefore dissociate it from the Complainants (Asda Group Limited v. Mr Paul Kilgour, Case No. D2002-0857, McLane Company, Inc. v. Fred Craig, Case No. D2000-1455; Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, Case No. D2000-1104; Lockheed Martin Corporation v. Dan Parisi, Case No. D2000-1015, with dissenting opinion).

However, in the majority of cases, the opposite conclusion was reached mainly because not all the Internet users are English speakers or familiar with the use of "sucks" to indicate a site used for denigration or criticisms. Furthermore, when the Internet users enter a word in a search engine, the engine identifies websites of potential relevance and includes the term that the users are searching. As such, the search engine also would certainly retrieve the domain names consisting of the search term and the term "sucks". The domain name holder will thus have reached its objective to divert potential consumers to its website through the adoption of a domain name that is similar to a third partyís trademark (See Koninklijke Philips Electronics N.V. v. In Seo Kim, Case No. D2001-1195; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,INC., Case No. D2001-1121 (with dissenting opinion); The Salvation Army v. Info-Bahn, Inc., Case No. D2001-0463; ADT Services AG v. ADT Sucks.com, Case No. D2001-0213; Société Accor contre M. Philippe Hartmann, Case No. D2001-0007; TPI Holdings, Inc. v. AFX Communications a/k/a AFX, Case No. D2000-1472; Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol; Case No. D2000-0996; Standard Chartered PLC v. Purge I.T., Case No. D2000-0681; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662; National Westminster Bank PLC v. Purge I.T. and Purge I.T. Ltd, Case No. D2000-0636; Freeserve PLC v. Purge I.T. and Purge I.T. Ltd, Case No. D2000-0585; Dixons Group PLC v. Purge I.T. and Purge I.T. Ltd, Case No. D2000-0584; Direct Line Group Ltd, Direct Line Insurance plc, Direct Line Financial Services Ltd , Direct Line Life Insurance Company Ltd, Direct Line Unit Trusts Ltd, Direct Line Group Services Ltd v.Purge I.T., Purge I.T. Ltd, Case No. D2000-0583; Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477).

This Panel believes that the mere addition of the term "sucks" to a well-known trademark is not sufficient to prevent the resulting domain name from being confusingly similar to the well-known trademark. As also stated in Case No. D2001-1121 (with dissenting opinion) Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC., the addition of the word "sucks" to a well-known trademark is not always likely to be taken as "language clearly indicating that the domain name is not affiliated with the trademark owner."

Furthermore, Internet users are not always fluent in English or at least not sufficiently fluent to perceive that the term "sucks" is used to denigrate, criticize and disparage, and that it is therefore a pejorative term, which should immediately disassociate the domain name to which it is appended from the Complainantís trademark forming part of the domain name. Moreover, as mentioned in Case No. D2001-1195, "it is not unknown for companies to establish complaint or comment sites or areas of sites to obtain feedback on their products; accordingly, some people might suppose that a website of this nature at the Domain Name was operated by the Complainant."

Finally, a search performed through Internet engines on the BAYER mark would most probably disclose the existence of the "bayersucks" domain names and corresponding websites. Consumers would therefore be attracted to visit the Respondentís websites corresponding to the disputed domain names and will find that these domain names are offered for sale. Hence, the Respondent is likely to divert Bayerís consumers to its websites through the adoption of domain names including the well-known trademark BAYER, even though this mark is followed by the term "sucks".

In the light of the foregoing, the Panel concludes that all the domain names at stake are confusingly similar to the Complainantís BAYER trademark.

Therefore, the Panel is satisfied that the first condition is met.

B. Rights or Legitimate Interests

According to Paragraph 4 (a) of the UDRP, the Complainant must prove that the Respondent lacks rights or legitimate interests in the disputed domain name(s).

Under Paragraph 4 (c) of the UDRP, the Respondent may demonstrate that he has rights to and legitimate interests in the domain name by proving that:

(i) before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainantís trademark.

The Respondent failed to prove any of the above-mentioned circumstances as it did not reply to the Complaint.

The Complainant stated that the Respondent lacks rights or legitimate interests in the domain names because: (i) the Respondent is not using or preparing to use the domain names in connection with a bona fide offering of goods or services since any such use would constitute trademark infringement; (ii) the Respondent has not been commonly known by the domain names and likely cannot show any rights prior to those of the Complainant; (iii) the Respondent is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the BAYER trademark. Instead, the Respondent has offered to sell each domain name at its corresponding website for a minimum amount of US$200, which is well in excess of the registration fee that the Respondent paid to register each domain name.

As far as the "bayersucks" registrations are concerned, the Respondent cannot claim that it has a legitimate interest in these registrations. In fact, the Respondent is not making social commentary or criticism; it is simply offering to sell the domain names for a price well in excess of the Respondentís documented out-of-pocket costs directly related to the domain names.

The Panel finds that there are sufficient elements in the Complaint and relevant Exhibits to conclude that the Respondent lacked rights and legitimate interests when it registered the domain names at stake. The Respondent admitted in its Response to Case No. D2002-0138 that it "was aware of the Bayer trademark when registering the domain names". Such an awareness, coupled with the fact that the disputed domain names are offered for sale at a minimum bid price of US$200, automatically excludes the application of any of the circumstances set forth in Paragraph 4 (c) of the UDRP. No other circumstances have been alleged by the Respondent to maintain its rights and legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Under Paragraph 4 a. (iii) of the Policy, the Complainant must prove two additional requirements, (i) that the disputed domain name was registered in bad faith; and (ii) that said domain name is used in bad faith.

The Panel finds from the Complainantís statements and from the evidence provided in support of these statements that all the disputed domain names were registered and are used in bad faith.

In the absence of any contrary statement by the Respondent, the evidence enclosed to the Complaint clearly demonstrates that the Respondent registered the domain names at stake primarily for the purpose of selling or otherwise transferring them to the Complainant or to a competitor for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain names.

The Respondent also engaged in a pattern of registering BAYER formative domain names. It is known that the Respondent registered 36 domain names including the BAYER trademark, 23 of which were already transferred to the Complainant pursuant to Decision D2002-0138. In line with other prior decisions, the Panel believes that the registration of several domain names confusingly similar to the Complainantís well-known trademark is evidence of bad faith under Paragraph 4 (b) (ii) of the UDRP (See Case D2000-0452, General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov; Case No. D2000-0664, Price Company v. Price Club, also known as Tsung-Pei Chang).

Furthermore, as mentioned by the Complainant, the Respondent breached its Domain Name Services Agreement with Register.com. According to Paragraph 1.d. of this Agreement, "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that ... (b) the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; (d) you will not use the domain name in violation of any applicable laws or regulations or Register.comís rules or policies. You agree and acknowledge that it is your responsibility to determine whether your domain name registration or use infringes or violates someone elseís rights (...)."

The Respondent admitted that it was aware of the Complainantís BAYER trademark when it registered all the BAYER formative domain names that were the subject of Case D2002-0138. Notwithstanding this knowledge, the Complainant proceeded with the registration and maintenance of the BAYER formative domain names. In the Panelís view, the voluntary breach of the Registrarís Domain Name Services Agreement is evidence of bad faith (see also Case No. D2000-1042, Don Algodon H, S.A. v. Miguel García Quintas).

Furthermore, according to the Complaint and to the relevant evidence, the Respondent provided false contact information when it registered the domain names at stake. Indeed, the Complainant attempted to send correspondence to the Respondentís addresses appearing in the domain names registry records but Complainantís e-mail and courier were returned as undeliverable (see Annexes 21 and 22 to the Complaint). The provision of false contact information is further evidence of bad faith (Case No. D2002-0775, Wachovia Corporation v. Peter Carrington; Case No. D2002-0559, BellSouth Intellectual Property Corporation v. Texas Internet; Case No. D2001-0929, Carfax, Inc. d/b/a Carfax v. Auto Check USA).

In the light of the foregoing, the Panel believes that the Respondent has registered and is being used all the disputed domain names in bad faith.

D. Use of the domain names <bayergroup.biz> and <bayersucks.biz> primarily for a bona fide business or commercial purpose

According to Paragraph 4 b. of the RDRP "Bona fide business or commercial use" shall mean (...):

(i) to exchange goods, services, or property of any kind; or

(ii) in the ordinary course of trade or business; or

(iii) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

According to Paragraph 4 c. of the RDRP, the sale, trade or leasing of the domain name for compensation is not a bona fide business or commercial use of the domain name. Therefore, for all reasons mentioned above, the Panel believes that the domain names <bayergroup.biz> and <bayersucks.biz> were and are not primarily used for a bona fide business or commercial purpose.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <bayerchemicals.net>, <bayerchemicals.org>, <bayerhealthcare.org>, <bayerholding.com>, <bayerholding.net>, <bayerholding.org>, <bayergroup.net>, <bayergroup.org>, <bayergroup.biz>, <bayergroup.info>, <bayersucks.org>, <bayersucks.biz> and <bayersucks.info> be transferred to the Complainant.

 


 

Angelica Lodigiani
Sole Panelist

Dated: February 3, 2003