WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer Aktiengesellschaft and Bayer Healthcare LLC v. PrivacyProtect.org, Domain Admin / Pantages Inc, Pantages
Case No. D2011-0201
1. The Parties
The Complainants are Bayer Aktiengesellschaft and Bayer Healthcare LLC of Leverkusen, Germany and of Pittsburgh, Pennsylvania, United States of America respectively (herein and after as the “Complainant”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.
The Respondent is PrivacyProtect.org, Domain Admin / Pantages Inc, Pantages of Munsbach, Luxembourg and of Caracas, Distrito Capital, Bolivarian Republic of Venezuela, respectively.
2. The Domain Name and Registrar
The disputed domain name <bayercontour.com> (the “Domain Name”) is registered with Power Brand Center Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 2, 3, 4, 7, 9 and 11, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the Domain Name. On February 14 and 15, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2011, providing the registrant and contact information disclosed by Power Brand Center Corp., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 20, 2011.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2011.
The Center appointed Derek M. Minus as the sole panelist in this matter on March 17, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
According to the Complainant, since as early as 1895, it has continuously used the BAYER trademark in commerce throughout the world, including the United States, in connection with the advertising, promotion and sale of medicines and pharmaceutical preparations. The Complainant provided evidence of the numerous registrations it holds in the United States and the Benelux countries for its BAYER trademark.
The Panel accepts that by virtue of the use of the Complainant’s trademarks evidenced in this and earlier administrative panel decisions (e.g. Bayer Aktiengesellschaft v. Dangos & Partners WIPO Case No. D2002-1115) that the Complainant’s trademarks have become well-known throughout the world and identified by the public solely with the Complainant and its products and services.
Since at least as early as 2003, the Complainant has sold medical device products under the CONTOUR mark. The Complainant owns trademark registrations for its CONTOUR mark throughout the world, and it provided evidence of the registrations it holds in the United States and the Benelux countries.
The Complainant states that it has sold billions of dollars worth of medicines, pharmaceutical preparations, and medical device products under the BAYER trademark, and the Complainant currently spends many millions of dollars annually to advertise and promote the BAYER trademarks throughout the world. Also as a result of the Complainant’s marketing efforts, and the resulting widespread use of its goods, the public has come to recognize and associate the CONTOUR trademark with the Complainant.
The Panel finds that the Complainant is the owner of the trademarks BAYER and CONTOUR both by extensive registration and reputation, and that they are both to be regarded as well-known marks.
5. Parties’ Contentions
The Complainant contends as follows:
(i) The Complainant is the owner of the BAYER and CONTOUR registered trademarks which it often displays together in the promotion and sale of its goods and services, and the disputed Domain Name is confusingly similar to the Complainant’s trademarks.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed Domain Name because:
(1) the Complainant has not been authorized by the Complainant to register or use the Domain Name,
(2) has not made a legitimate noncommercial or fair use of the Domain Name and,
(3) its actions in using the Domain Name to attract Internet users to a website offering information about the Complainant’s competitor’s products does not constitute a bona fide offering of goods or services.
(iii) The Respondent registered and is using the Domain Name in bad faith because:
(1) the Respondent is intentionally using the Domain Name to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.
(2) the Respondent by providing advertising links to the Complainant’s competitors, is using the Domain Name for the purpose of disrupting the business of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a response as the Panel considers applicable (Rules, paragraph 14(b)).
A. Identical or Confusingly Similar
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion.”
The Complainant submits that the disputed Domain Name is confusingly similar to the names and trademarks in which the Complainant has extensive rights, as the Domain Name incorporates both of the Complainant’s BAYER and CONTOUR trademarks in their entirety with the gTLD “.com” identifier at the end.
It has been consistently held in numerous UDRP decisions that domain names are identical or confusingly similar to a complainant’s trademark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”, see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Where there is the incorporation of a trademark in its entirety, that has been held sufficient to establish that a domain name is identical or confusingly similar to a complainant’s mark, see Pfizer Inc. v. NA, WIPO Case No. D2005-0072 where the infringing name <pfizerviagra.com> incorporated both the name of the manufacturer and its well-known product. In this case, the disputed Domain Name incorporates both the manufacturer’s BAYER mark and CONTOUR mark that is used for its product in the medical diagnostic market. The combination of two of the Complainant’s marks together in <bayercontour.com> increases the possibility that the public will be confused as to the Domain Name’s source, sponsorship and affiliation.
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trademarks, in which the Complainant has rights and the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not a licensee or an agent of the Complainant, nor in any way authorized to use the Complainant’s BAYER or CONTOUR trademarks. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent is not generally known by the Domain Name, nor has it acquired any trademark or service mark rights in the Complainant’s trademarks. As was stated in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134, the “mere registration[, or earlier registration of a domain name], does not establish rights or legitimate interests in the disputed domain name”. Here according to the WhoIs records, the Respondent registered the Domain Name on July 16, 2007, long after the Complainant’s adoption and registration of the BAYER trademark and several years after its first use of the CONTOUR trademark.
The Respondent has not provided any evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Instead, the Complainant advises that the Respondent is using the Domain Name to list links to external websites, some of which offer services from competitors of the Complainant, thereby unlawfully diverting Internet visitors seeking the Complainant’s BAYER and CONTOUR websites.
The Respondent’s use of the Domain Name for such purpose is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name, see Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946, where the panel stated that: “The use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch’ selling: (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd. Case WIPO Case No. D2004-0088.)”
Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to establish its rights or legitimate interests in the Domain Name (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Sampo plc v. Tom Staver, WIPO Case No. D2006-1135; Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003).
The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the Domain Name. Hence, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent registered the Domain Name long after the Complainant’s adoption, use and registration of the BAYER and CONTOUR trademarks. It is therefore inconceivable that the Respondent was unaware of the Complainant’s trademarks when it registered the Domain Name and it therefore appears to be an attempt to exploit the fame and goodwill of the Complainant’s BAYER and CONTOUR trademarks, by diverting Internet traffic intended for the Complainant’s web site to the Respondent’s web site. The deliberate and misleading use of another person’s trademark for the purpose of diverting Internet traffic to their own web site is evidence of bad faith. As was held by the panel in Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248, “it could never be a legitimate or fair use to select a domain name which is confusingly similar to another person’s trade or service mark, with a view to misleadingly attracting visitors to a website linked to that domain name.”
According to the Complainant, the Domain Name resolves to a pay-per-click parking page that offers links to products directly competing with the Complainant’s products. The Respondent apparently earns revenue when confused Internet consumers “click through” to sites offering the goods and services of both the Complainant and the Complainant’s direct competitors. Use of the Complainant’s BAYER and CONTOUR trademarks to generate “click through” revenue in this manner constitutes bad faith. See MasterCard International Incorporated v. Hector Cancel, WIPO Case No. D2007-1121, where it was noted that “panels have consistently found that, under similar circumstances, receiving click-through revenue by directing visitors to other websites constitutes bad faith”.
It was also held in L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, that “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions: see e.g. Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681 and Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.”
Finally, the Respondent’s use of the website to which the Domain Name resolves, to provide links advertising the Complainant’s commercial competitors, constitutes an attempt to disrupt the Complainant’s business. See Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346, where the respondent was found to be deliberately seeking to disrupt the complainant’s business, by directing consumers to a competitor’s website. This also constitutes a bad faith use of the Domain Name under the Policy.
The Panel therefore finds that paragraphs 4(b)(iii) and 4(b)(iv) of the Policy are made out.
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 Name <bayercontour.com> be transferred to the Complainant.
Derek M. Minus
Dated: April 3, 2011