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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer Intellectual Property GmbH v. Whois Privacy Shield Services / Winsum Wong

Case No. D2018-0499

1. The Parties

The Complainant is Bayer Intellectual Property GmbH of Monheim am Rhein, Germany, represented by BMP Legal, Germany.

The Respondent is Whois Privacy Shield Services of Irvine, California, United States of America / Winsum Wong of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <yazplus.com> ("Domain Name") is registered with Pheenix, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 6, 2018. On March 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 9, 2018 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 March 14, 2018.

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 March 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2018.

The Center appointed Ellen B Shankman as the sole panelist in this matter on April 27, 2018. 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 date of the Domain Name registration was confirmed by the Registrar to be July 6, 2017.

The trademark YAZ serves as a trademark of the Complainant for one of its well-known pharmaceutical products and the Complainant provided evidence of multiple trademark registrations for the mark YAZ including, inter alia, No. 2980771 (registered on August 2, 2005) that predates the date of the Domain Name registration for contraceptives.

The Complainant provided evidence of and the Panel also conducted an independent search to determine that the Domain Name is currently active, and appears to be a "parking page" with links to advertisements.

Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant's mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.

5. Parties' Contentions

A. Complainant

The Complainant belongs to the Bayer group of companies. Bayer is a global enterprise with core competencies in the fields of health care, nutrition and plant protection. It is represented by over 300 affiliates and has more than 115,000 employees worldwide. Bayer AG, itself or through subgroups like HealthCare and CropScience, does business on all five continents, manufacturing and selling numerous products, inter alia, human pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals.

The Bayer Pharmaceuticals division operates, inter alia, a women's healthcare focus area. It is present in more than 100 countries with a portfolio of numerous pharmaceutical products. Today, some of the world's most trusted and leading over - the - counter brands are from Bayer's global portfolio, including Yaz, Yasmin, Oxytrol for women, Mirena, Elmiron, Angeliq, and Adempas. Bayer's Pharmaceuticals business group currently ranks among the top pharmaceutical companies in the world. Furthermore, Bayer is, inter alia, doing business also in China, where the Respondent is located, through its local subsidiary trading under the name "Bayer (China) Limited". The Complainant's website is also available at "www.bayer.com.cn" in Chinese and English.

The Complaint alleges that Yaz is one of Bayer's most known brands for oral contraceptive pills. The Complainant is owner of the trademark YAZ in numerous countries worldwide, including in China, where the Respondent is located. Furthermore, Bayer has a strong presence on the Internet and due to Bayer's global online use of its YAZ mark, such mark is obviously and solely connected with Bayer.

The Complaint further alleges that the Respondent is the registered owner of numerous domain names that target not only the Complainant but other well-known third parties, and that the YAZ mark is famous and susceptible to "opportunistic bad faith", as is the case here. The Complainant also contends that the Respondent, who originally filed under a privacy service – which itself is evidence of bad faith – has registered domain names with other well-known trademarks in bad faith, and thus his actions constitute a "pattern" of abusive domain name registration and use.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark YAZ in respect of contraceptives. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the descriptive word "plus" to the well-known mark YAZ does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and / or confusingly similar to the Complainant's trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent's registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for YAZ, and that the Domain Name is confusingly similar to the Complainant's trademark. Further, the Panel finds that the mere addition of the generic and / or descriptive term "plus" to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant's trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating "The incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark."

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant's registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the

often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <yazplus.com> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted or otherwise challenged on the basis of the available record, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the distinctiveness of the Complainant's trademark and reputation, the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Name with full knowledge of the Complainant's trademark YAZ and uses it for the purpose of misleading and diverting Internet traffic, and to benefit from the sponsored links on the website. This is consistent with previous UDRP Panels that have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein).

Further, the Complainant has referred the Panel to prior UDRP decisions in which an adverse finding was made against the Respondent. The Panel finds that the Respondent has engaged in a pattern of abusive conduct of registering domain names to prevent owners of trademarks from reflecting their trademarks in those domain names, which is a further indicator of bad faith registration and use under paragraph 4(b)(ii) of the Policy. In these circumstances, the use of a privacy service also supports a finding of bad faith (see, e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein).

In light of the evidence of the Complainant's prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the evidence of a "pattern" of abusive registrations, as well as the other factors identified above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name, <yazplus.com> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: May 8, 2018

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