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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Doris Amah

Case No. D2018-2249

1. The Parties

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

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America (“United States”) / Doris Amah of Cross River, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <animalhealthbayer.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 October 4, 2018. On October 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2018, 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 October 5, 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 October 9, 2018.

The Center verified that the Complaint together with the amended Complaint (hereinafter named as the “Complainant”) 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 October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2018.

The Center appointed Alejandro Touriño as the sole panelist in this matter on November 15, 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 Complainant is a global enterprise with core competencies in the fields of healthcare, nutrition and plant protection, with more than 250 affiliates and more than 100,000 employees worldwide.

The Complainant owns registrations of the word mark BAYER, which cover an extensive range of goods and services (including, for example, United States Trademark BAYER, registration number 1482868, registered on April 5, 1988).

The Complainant – directly or through its subsidiaries – owns hundreds of domain name registrations containing the BAYER trademark, including <animalhealth.bayer.com>, <bayer.com> and <bayer.us>.

The disputed domain name <animalhealthbayer.com> was registered on May 10, 2018 and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name fully incorporates the BAYER trademark and is confusingly similar to the latest. The specific generic Top-Level Domain (“gTLD”) is generally not an element of distinctiveness. Also, the words “animal health” are merely generic and do not eliminate the similarity between the Complainant’s trademark and the disputed domain name.

The Complainant’s BAYER trademarks have acquired a significant goodwill and are widely known. Previous decisions decided under the UDRP have already found that the Complainant’s BAYER Marks are well- known. Indeed, a search for the word “bayer” at the website “www.google.com” shows that nearly all of the search results refer to the Complainant or its subsidiaries.

The use of the BAYER trademarks in combination with generic terms will definitely confuse Internet users as it is referring directly to the Complainant, since the latter is the owner of the domain name <animalhealth.bayer.com> and has a clear connection to the Complainant’s business activity fields.

The disputed domain name is currently not being used in connection with an active website.

“Bayer” is not a word any market participant or other domain registrant would legitimately choose unless seeking to create an impression of an association with the Complainant.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the BAYER trademarks.

There is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

It is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant and its rights in its highly distinctive and well-known BAYER trademarks.

The Respondent has a history of targeting third parties’ trademarks by registering corresponding domain names.

The Respondent’s registration of the disputed domain name clearly prevents the Complainant from reflecting its trademarks in a corresponding domain name.

The fact that the Respondent uses a privacy registration service suggests that the Respondent wanted to hide his identity without any legitimate reason and this proves bad faith towards the registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

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 domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations for the word BAYER.

It is well established in previous UDRP cases that, where a domain name incorporates the Complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525). It should be noted that the distinctive part of the disputed domain name (“bayer”) includes in its entirety the Complainant’s trademark BAYER.

Furthermore, the addition of the descriptive terms “animal health” do not influence the comparison of the disputed domain name and the Complainant’s trademark, since it only makes reference to one of the business activity of the Complainant. Indeed, the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademarks alone, independent of the inclusion of generics terms such as “animal health” (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚ WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

In addition, the inclusion of the gTLD “.com” is irrelevant in the determination of the confusing similarity between the Complainant’s trademark and the disputed domain name. When a domain name is composed in whole or in part of a trademark, neither the beginning of the URL, nor the gTLD “.com” have generally any source indicating significance. The gTLD is merely a technical requirement that every Internet site provider must use as part of its address (see NUTREXPA, S.A. v. Juan Silher, WIPO Case No. D2000-1386; The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112; and Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617).

In view of all this, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark BAYER in which the Complainant has well-established trademark rights through extensive prior use in accordance with paragraph 4(a)(i) of the Policy.

It will be therefore easily admitted that the disputed domain name and the Complainant’s trademark are confusingly similar.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) before any notice to the Complainant of the dispute, the use by the Respondent 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent 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 trademark or service mark at issue.

It is commonly accepted that, under the UDRP Rules, the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the previous UDRP decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

In the case at issue, by not submitting a formal Response, the Respondent has not discussed the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. If the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint (see 1 800 Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design, WIPO Case No. D2006-0977).

In addition, there is no evidence showing that the Respondent has any rights or legitimate interests on the disputed domain name. Indeed, in view of the Complainant’s well-known trademark BAYER, the Respondent must in all likelihood have known, when registering the disputed domain name, that the Respondent could not have claimed any such rights or interests.

Furthermore, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the disputed domain name is currently inactive.

In addition, there is no indication before the Panel, that the Respondent has been authorized or licensed by the Complainant to use the Complainant trademarks BAYER in the disputed domain name. Indeed, the adoption by the Respondent of a domain name containing in full the Complainant’s trademark inevitably leads to the diversion of the Complainant potential consumers to the Respondent’s website and the consequential tarnishing of the Complainant’s trademark.

Since, it is clearly established that the Respondent does not hold any legitimate rights or interests in respect of the disputed domain name <animalhealthbayer.com>, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

In accordance with prior UDRP decisions, the Panel finds that a failure to respond the Complaint can be evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the Panel stated: “any such bad faith is compounded when the domain name owner, upon receipt of notice that the disputed domain name is identical or confusingly similar to a registered trade mark, refuses to respond”.

In addition, the Complainant’s trademark BAYER has been considered well-known in prior UDRP cases. Hence, the Panel finds it is also unlikely that the Respondent would not have been aware of the Complainant well-known trademark when registering the domain name. This can be found as an evidence of bad faith.

Based on the evidence provided in the case file, the Panel finds that the Respondent, by registering the disputed domain name incorporating the Complainant’s well-known trademark BAYER along with the terms “animal health”, which are a descriptive term for the Complainant business activity (and matches the Complainant’s sub-domain <animalhealth.bayer.com>), tried to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, which is evidence of bad faith. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, the fact that the nature of the disputed domain name includes the entire trademark BAYER of the Complainant is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.

In addition, the Panel notes that the non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding.

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

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 <animalhealthbayer.com> be transferred to the Complainant.

Alejandro Touriño
Sole Panelist
Date: November 29, 2018

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