WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer Consumer Care AG v. PrivacyProtect.org / Ada Pharma Bitkisel Ilac ve Kozmetik Urunleri San Tic Ltd Sti
Case No. D2012-2543
1. The Parties
The Complainant is Bayer Consumer Care AG of Basel, Switzerland, represented by BPM Legal, Germany.
The Respondent is PrivacyProtect.org of Australia / Ada Pharma Bitkisel Ilac ve Kozmetik Urunleri San Tic Ltd Sti of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <priorin.net> is registered with IHS Telekom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2012. On December 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 8, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 15, 2013.
On December 30, 2012, the Center received an informal email communication from the Respondent in Turkish language. The Center acknowledged receipt of the Respondent’s email communication on January 8, 2013.
The Center verified that the Complaint and amended 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 January 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on February 6, 2013.
The Center appointed Kaya Köklü as the sole panelist in this matter on February 12, 2013. 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 Complainant belongs to the Bayer group, which has more than 250 affiliates and more than 100,000 employees worldwide. The Bayer group is mainly active in manufacturing and selling human pharmaceutical and medical care products, veterinary products, diagnostic products, agricultural chemicals and specialty polymers. The Complainant belongs to the Bayer HealthCare group and was established in 1994. It operates its business in various countries worldwide with a portfolio of mainly health care products.
The Complainant is the registered owner of the trademark PRIORIN in a large number of jurisdictions, including Turkey, Germany and Switzerland. Its PRIORIN trademarks cover protection mainly for health care products. The PRIORIN trademarks were first registered in Turkey and Germany already in the 1960’s.
The Complainant has also registered and operates the trademark PRIORIN as domain names under several generic top-level domains (gTLD) and country-code top level domains (ccTLD), e.g. <priorin.de>.
The Respondent seems to be a pharmaceutical company located in Istanbul, Turkey. It operates a website linked to the disputed domain name, which was first created on September 15, 2012. As evidenced by the Complainant, the website linked to the disputed domain name provides some limited and general information on the Complainant’s PRIORIN products, without providing contact details and no obvious possibility to buy PRIORIN products from the Respondent. The copyright notice used on the website linked to the disputed domain name reads as “COPYRIGHT © 2013 PRIORIN”.
5. Parties’ Contentions
As a remedy in these administrative proceedings, the Complainant requests the transfer of the disputed domain name for the following reasons.
First, the Complainant believes that the disputed domain name is identical to the Complainant’s PRIORIN trademark.
Second, it is argued that the Respondent has no rights or legitimate interests in using the disputed domain name. The Complainant alleges that it has not licensed or otherwise permitted the Respondent to use any of its PRIORIN trademarks and has not permitted the Respondent to register or use any domain name incorporating the PRIORIN trademark. The Complainant additionally asserts that the Respondent has never used the disputed domain name, nor made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Quite the opposite, the Complainant believes that by using the Complainant’s green and white corporate identity colors, the Respondent tries to create the impression that the website linked to the disputed domain name is somehow sponsored or endorsed by the Complainant.
Third, it is the Complainant’s view that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant is convinced that the Respondent registered the disputed domain name well aware of the Complainant and its rights in the PRIORIN marks. It is asserted by the Complainant that the Respondent tries to catch web traffic intended for the Complainant and divert such traffic to its own website. In particular, the Complainant believes that there is no plausible use of the disputed domain name other than the exploitation of the Complainant’s PRIORIN trademarks by the Respondent.
The Respondent did not formally reply to the Complainant’s contentions.
However, the Center received an informal and short email communication in Turkish language on December 30, 2012. The email communication was sent from an email account identified as “…@gmail.com”, without revealing any signature or contact details.
In this email communication, it is alleged that the sender is working in a pharmacy and that he only tried to establish an online-blog on PRIORIN products. The sender further argues that it has not registered or used the disputed domain name in bad faith.
A particular request concerning the remedies in these administrative proceedings has not been filed, neither by the Respondent not by the sender of the above referred email communication.
6. Discussion and Findings
To begin with, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to formally respond to the Complaint or response to the Center’s communication with regard to the language of the proceedings, even though communicated in Turkish and in English. The Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English, as the Respondent is apparently capable to read, write and understand the English language, in particular as it was apparently well able to conclude an English registration contract with a privacy service located in Australia.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
In this context, the Panel finds that the informal email communication received by the Center on December 30, 2012 does not qualify to be a formal response to the Complaint. However, as it indicates a sort of argumentation on the merits of the case, the Panel will nevertheless consider this informal email communication in its Decision.
With regard to the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that independent research, i.e., visiting the Internet site linked to the disputed domain name, has been performed by the Panel on February 17, 2013. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).
Finally, it is noted that the Panel has taken note of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights. The PRIORIN trademarks have been registered since the 1960’s.
Second, the Panel finds that the disputed domain name, which was first created in 2012, is identical to the Complainant’s trademark. The disputed domain name is an identical adoption of the registered trademark PRIORIN and does not incorporate any changes or additions.
The mere addition of the generic top-level domain (gTLD) “.net” has no distinguishing effect and may as a general principle not to be considered when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within disputed domain names, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).
Hence, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use the Complainant’s PRIORIN trademark in the disputed domain name.
In the absence of a proper Response by the Respondent, there is also no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services.
Finally, there is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent to tarnish the Complainant’s PRIORIN trademark.
Quite the opposite, the Panel is convinced that by using the Complainant’s corporate and products colors green and white, the Respondent primarily tries to catch web traffic intended for the Complainant and diverts such traffic to is own website in order to somehow benefit from the goodwill and reputation of the Complainant’s PRIORIN mark. The allegation raised by the sender of the email communication to the Center of December 30, 2012, stating that the website linked to the disputed domain name is intended to be a noncommercial blog on PRIORIN products, is assessed by the Panel as a purely self-served assertion. Neither appearance, structure nor content of said website provides any indication that this is a noncommercial blog, in particular as not even a name of any blogger is revealed. This allegation is in particular not convincing as the copyright notice on the website linked to the disputed domain name clearly creates the false impression that the website is operated by the Complainant.
Overall, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
First, there is no doubt that the Respondent must have known the Complainant and its PRIORIN trademarks when it registered the disputed domain name many years after the Complainant’s trademarks were registered and recognized worldwide, including in Turkey.
It is further apparent to this Panel that the Respondent tries to somehow capitalize on the prominence of the Complainant’s PRIORIN trademark. In the Panel’s view, the Respondent’s sole purpose in registering the disputed domain name was to benefit from the prominence of the Complainant’s trademark and to catch web traffic initially intended for the Complainant. The Panel is convinced that the Respondent tries to create the impression that its website linked to the disputed domain name is sponsored or endorsed by the Complainant. This is in particular indicated by the fact that the Respondent uses the Complainant’s corporate and products colors, some of its genuine product pictures and a copyright notice, which reads as “COPRYRIGHT © 2013 PRIORIN” and is apparently used to mislead Internet users by creating the impression that the website linked to the disputed domain name is somehow officially authorized by the Complainant.
The email communication to the Center on December 30, 2013, whether sent by the Respondent or any third person, cannot form basis for any different legal assessment. The assertion that the website linked to the disputed domain name is intended to be a blog for providing information on PRIORIN products is neither convincing nor demonstrated by any documents or arguments. As already indicated above, neither the appearance of the website linked to the disputed domain name nor its content or structure provide any indication of good faith registration or use by the Respondent.
Overall, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 <priorin.net> be transferred to the Complainant.
Date: February 17, 2013