WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Kaiden Shaun
Case No. D2012-2043
1. The Parties
The Complainant is Bayer AG, Leverkusen, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Kaiden Shaun, Alexandria, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bayeraspirin.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2012. On October 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 October 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.
The Center appointed, Debrett G. Lyons as the sole panelist in this matter on December 3, 2012. 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
The factual findings pertinent to the decision in this case are that:
1. The Complainant has used the name BAYER in relation to pharmaceuticals since 1888.
2. The Complainant has an international portfolio of trade mark registrations for BAYER and BAYER composite marks including BAYER ASPIRIN (Community Trademark Registration No. 000407866 registered May 11, 1999)
3. The disputed domain name was created on August 28, 2012.
4. The disputed domain name resolves to a website that purports to review the Complainant’s soluble aspirin1 product.
5. There is no relationship between the parties and the Complainant has not authorized the Respondent to use its trade mark or register any domain name incorporating the trade mark.
5. Parties’ Contentions
The Complainant asserts trade mark rights in BAYER ASPIRIN and alleges that the disputed domain name is identical to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further alleges that the Respondent registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is well established by former decisions under this Policy that a trade mark registered with a national authority is evidence of trade mark rights. The Complainant has provided evidence of its trade mark registration for BAYER ASPIRIN and so the Panel is satisfied that they have trade mark rights (see State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 0705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 0174052 finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
The Panel also finds the disputed domain name to be legally identical to the Complainant’s trademark (see Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name may not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Isleworth Land Company v. Lost in Space, SA, NAF Claim No. 0117330 stating that “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis.”; Gardline Surveys Ltd. v. Domain Finance Ltd., NAF Claim No. 0153545 stating that “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name).
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant need only make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to the Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, NAF Claim No. 741828; see also AOL LLC v. Gerberg, NAF Claim No. 780200.
Paragraph 4(c) of the Policy sets out certain circumstances which if found by the Panel to be proved demonstrate the Respondent’s rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy. Those sets of circumstances are not exhaustive and other instances of legitimate interests might be in evidence however it is logical to first test the present facts against those given circumstances. They are that:
(i) before any notice to the domain name registrant of the dispute, the registrant 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 or services; or
(ii) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trade mark or service mark rights; or
(iii) the domain name registrant 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 trade mark or service mark at issue.
In brief, the evidence shows that a website corresponding with the disputed domain name offers information about the Complainant, its soluble aspirin tablets and about aspirin itself.
The publicly available WhoIs data lists Kaiden Shaun as the holder of the domain name and in the absence of a Response there is no scope for the application of paragraph 4(c)(ii) of the Policy. The Respondent is not offering goods or services2 of any meaningful nature and so the Panel does not find reason to further analyze paragraph 4(c)(i). However there is a live issue as to whether paragraph 4(c)(iii) might apply if the Respondent can be said to be making fair use of the domain name and meet the other criteria of that subparagraph and so the Panel turns to the Complainant’s submissions and to examination of the evidence.
The Complainant makes the following submissions:
“… the Respondent has attempted to strengthen the impression that his web-site has been sponsored or endorsed by the Complainant through the unauthorized inclusion of pictures of the Complainant’s distinctive product packaging. Photos of the packaging for Complainant’s BAYER ASPIRIN and BAYER ASPIRIN EXTRA STRENGTH QUICK RELEASE CRYSTALS products are displayed on the majority of the pages on the website. Furthermore, the bottom of each page on the Respondent’s site appears to inform Internet visitors that the site is either owned or operated by the Complainant. Instead of a disclaimer, or any distinguishing information which might enable an informed visitor to quickly and easily determine the website is unauthorized, there is a copyright statement which reads “Copyright 2012 - Powered by Bayer Aspirin.” Thus, the Respondent is clearly attempting to impersonate the Complainant and/or pass itself off as an endorsed, legitimate user of the Complainant’s Marks.
The Respondent … is using [the domain name] to divert Internet users to a website which allegedly provides “reviews” of the Complainant’s products. The information displayed on the site, which purports to provide “product reviews” of the Complainant’s medications, is in fact little more than a narrative version of the general information, safety warnings, dosage and use information provided on each box of the Complainant’s goods. For instance, the Respondent “personally recommends” that visitors “take [Bayer Aspirin Extra Strength Back and Body Caplets] along with full glass of water. It is also advisable to consume 2 caplets in six hours and not more than 8 caplets in 24 hours. It can be swallowed by children 12 years or over. It is also recommendable to store it at the room temperature.”
Nothing is for sale from the site and in that sense it is noncommercial. Nonetheless the Respondent acknowledges that it receives payment for reviewing products generally. One of tabs from the website is entitled “Disclosure” and includes the statement: “I get a compensation to provide opinion on products, services, websites and various other topics in the form of a commission whenever a visitor clicks on my affiliate link and buys/tries the product.”
The Panel finds that Respondent does not benefit from paragraph 4(c)(iii) of the Policy. The factual information on the website is trivial. Moreover, it contains grammatical, spelling and other errors one would not expect of the Complainant. The copyright material and copyright notice might suggest to some Internet users that the site is an official website of the Complainant. The Panel accepts that the motivation for the website is simply financial gain. The Panel finds that the site is, in essence, commercial, that the use is not fair use because it is perfunctory, and that it is likely to mislead and divert at least some consumers.
The Panel finds that the Complainant has established a prima facie case and so the onus shifts to the Respondent to establish a legitimate interest in the domain name. In the absence of a Response, the Complainant’s prima facie case is not rebutted and so Panel finds that the Respondent has no rights or interests and so finds that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.”
The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be legally identical (and therefore, confusingly similar) to the Complainant’s trade mark. The Complainant argues that “the Respondent registered the disputed domain name containing the Complainant’s trademarks in order to funnel traffic intended for the Complainant’s authorized sites to its own webpage for commercial gain, by capitalizing on Internet user confusion.” The Panel accepts that submissions and finds it more likely than not that the Respondent receives revenue by way of “pay-per-click” fees from the website associated with the disputed domain name. Moreover, the respondent admits to remuneration for “reviewing” products and services.
In terms of paragraph 4(b)(iv) of the Policy, the Panel finds that it is more likely than not that the Respondent is using the domain name to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trade mark.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <bayeraspirin.net> be transferred to the Complainant.
Debrett G. Lyons
Date: December 17, 2012
1 Although part of the registered trade mark BAYER ASPIRIN and still in some countries registered solus, the Complainant acknowledges that through certain historical events the word “aspirin” is now a generic term.
2 For the purposes of this decision, the Panel does not treat a review of the Complainant’s product as a service.