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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Domain Admin, Private Registrations Aktien Gesellschaft

Case No. D2016-1527

1. The Parties

The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.

The Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and The Grenadines.

2. The Domain Name and Registrar

The disputed domain name <canesten-ca.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2016. On July 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2016, 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 August 2, 2016 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 August 4, 2016.

The Center verified that the Complaint together with the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2016.

On August 5, 2016 the Center contacted the Registrar noting that the disputed domain name was due to expire on September 14, 2016. The Registrar confirmed that in accordance with paragraph 3.7.5.7 of the ICANN Registrar Accreditation Agreement (“Expired Domain Deletion Policy” or “EDDP”), the disputed domain name would be placed in Registrar lock status and remain in such status until the expiry of the disputed domain name or the conclusion of the UDRP proceedings. The Registrar further confirmed that either the Complainant or Respondent could apply to renew the disputed domain name and that this would keep the disputed domain name under Registrar lock so that the administrative procedure could continue.

The Center notified the parties of the imminent expiry of the disputed domain name and encouraged the parties to contact the Registrar directly to ensure that the disputed domain name remain active. The Complainant renewed the disputed domain name on August 25, 2016 pursuant to paragraph 3.7.5.7 of the EDDP.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on September 6, 2016. 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 is a global enterprise operating in the fields of health care, nutrition and plant protection. It is represented by over 250 affiliates and has more than 100,000 employees worldwide. The Complainant either itself or acting through its subgroups, does business on a global basis manufacturing and selling pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals. It is listed on nearly all major share indices, traded on all German stock exchanges and is included in the DAX30.

CANESTEN is a well-known antifungal medication commonly used in the treatment of fungal infections (in both humans and other animals). The medical compound contained in CANESTEN, “Clotrimazol”, was developed by the Complainant in the 1960s and first introduced to the market in 1973. The product is sold in numerous countries worldwide.

The Complainant owns numerous trade mark registrations for CANESTEN worldwide including the following registered trade marks:

1. German trade mark number 830991 for the word CANESTEN registered on March 20, 1967;

2. European Union trade mark number 015182504 for the word CANESTEN registered on June 16, 2016; and

3. Australian trade mark number 215267 for the word CANESTEN registered on November 30, 1967.

The Complainant and its affiliates market the CANESTEN product using numerous domain names including, amongst others, <canesten.com> and <canesten.ca>.

The disputed domain name was registered on September 14, 2009 and was transferred to the Respondent on or shortly before November 25, 2014. The disputed domain name resolves to a “parking website” providing advertising links to the Complainant’s competitors’ websites. The disputed domain name is also offered for sale.

The Respondent did not respond to the Complaint.

The Respondent is named as respondent in numerous proceedings under the UDRP filed with the Center. The majority of which resulted in favour of the respective complainant because the panels have found that the respondent engaged in bad faith.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

The disputed domain name is confusingly similar to the Complainant’s CANESTEN mark in which the Complainant has registered rights. In particular:

- the disputed domain name fully incorporates the CANESTEN mark and is confusingly similar to it; and

- the suffix“-ca” corresponds to the Top-Level Domain identifier of one of the Complainant’s domain names, <canesten.ca>, and is not sufficient to hinder a finding of confusing similarity under the Policy.

The Respondent has no rights or legitimate interests in the disputed domain name. In particular:

- there is no evidence to suggest that the Respondent has a legitimate interest in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks or use any domain name incorporating the mark CANESTEN;

- the disputed domain name resolves to a pay-per-click page for re-directing Internet users to third parties’ websites. This does not constitute either a bona fide or legitimate noncommercial use of the disputed domain name; and

- there is no evidence to suggest that the Respondent trades under or is known by the disputed domain name or the name “canesten-ca.”

The disputed domain name was registered and is being used in bad faith. In particular:

the Complainant’s mark CANESTEN is a well-known trade mark and is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant;

- the additional term “-ca” in the disputed domain name shows that the Respondent is targeting the Complainant’s domain name and website at “www.canesten.ca.” The fact that the Respondent uses the disputed domain name in connection with a parking website with advertising links including to the Complainant’s competitors’ products is evidence that the Respondent is deliberately targeting the Complainant;

- the Respondent is using the website to obtain click-through revenues from Internet users searching for the Complainant’s website;

- the Respondent’s registration of the disputed domain name prevents the Complainant from reflecting the CANESTEN mark in a corresponding domain name; and

- the Respondent offers to sell the disputed domain name on the websites available at “www.canesten-ca.com” and “www.afternic.com” for an amount that exceeds the costs directly related to the domain name.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

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

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

Paragraph 5(f) of the Rules provides that, if the Respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

It is accepted by the Panel that the Complainant has rights in the mark CANESTEN by virtue of the registered trade marks.

The disputed domain name fully incorporates the Complainant’s CANESTEN mark.

The Panel finds that the addition of “-ca” is not sufficient to hinder a finding of confusing similarity and notes that “-ca” corresponds to the country code Top-Level Domain identifier of the Complainant’s domain name <canesten.ca>

The addition of the generic Top-Level Domain “.com” does not serve to distinguish the disputed domain name from the CANESTEN trade mark, and should generally be disregarded for the purpose of the confusing similarity assessment.

The Complainant has therefore established that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The disputed domain name resolves to a pay-per-click page which redirects Internet users to third parties’ websites, including those of the Complainant’s competitors. Such use is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy. The Panel notes that the Complainant has not licensed or otherwise permitted the Respondent to use its trade marks or use any domain name incorporating the mark CANESTEN.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name such that the burden of production shifts to the Respondent, who must rebut that prima facie case.

Based on the Respondent’s default and on the prima facie evidence provided in the Complaint, the Panel finds that the paragraph 4(c) circumstances are not present and the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s submissions, which the Respondent has not disputed, that it is highly likely that (i) the Respondent would have been aware of the Complainant’s rights in CANESTEN when it registered the disputed domain name and (ii) the inclusion of the term “-ca” in the disputed domain name was targeting the Complainant’s website at “www.canesten.ca.”

In addition, the fact that the Respondent uses the disputed domain name in connection with a parking website with advertising links, including those to the Complainant’s competitors’ products, is evidence that the Respondent is targeting the Complainant and exploiting the Complainant’s trade marks to obtain click-through revenues; a practice which previous UDRP panels have found to constitute bad faith. The Panel also notes that the Respondent offers to sell the disputed domain name. The Panel agrees that the Respondent has no apparent business relationship with the Complainant and that there is no plausible use of the disputed domain name by the Respondent, other than the exploitation of the Complainant’s CANESTEN mark.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

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, <canesten-ca.com>, be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Date: September 16, 2016

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