World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer Aktiengesellschaft v. Lin Shen

Case No. DAE2012-0004

1. The Parties

The Complainant is Bayer Aktiengesellschaft of Leverkusen, Germany, represented by Siebeke Lange Wilbert, Germany.

The Respondent is Lin Shen of Huzhou, Zhejiang, China.

2. The Domain Name And Registrar

The disputed domain name <bayer.ae> (the “Domain Name”) is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2012. On May 15, 2012, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the Domain Name. On May 16, 2012, .aeDA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (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 May 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. No Response was received and the Center notified the Respondent’s default on June 21, 2012.

The Center appointed Nicholas Smith as the panelist in this matter on July 6, 2012. The Panel finds that it was properly constituted. Each member of 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 well-known German company that offers goods and services in numerous fields including healthcare, nutrition and high-tech materials. The Complainant and its predecessors in title have used “Bayer” as a name and brand for almost 150 years. In 2011, the Complainant employed 112,000 people and had sales of EUR 36.5 billion.

The Complainant has held trade mark registrations for BAYER (the “BAYER Mark”) since at least 1966. It owns at least 1000 trademark registrations worldwide for the BAYER Mark. Those registrations cover an extensive range of goods and services, including pharmaceutical preparations, chemicals, waste water treatment chemicals for industrial use, pigments, synthetic and artificial resins, coatings, plastics, greases, lubricants, rubber, synthetic rubber and rubber chemicals for use in the automotive, tire, adhesives, fibers, yarns, threads, agricultural chemicals, pesticides, insecticides, fungicides, herbicides and cleaning materials. The Complainant holds seven trademark registrations in the United Arab Emirates, some of which date back to 1997.

The Domain Name <bayer.ae> was created on February 18, 2012. It is currently inactive, however prior to the commencement of this proceeding, on April 23, 2012, it revolved to a portal site (“Respondent’s Website”) that provided a number of links to third-party sites that purported to offer, amongst other things “Bayer Aspirin” and “Bayer Health Care” as well as links to unrelated sites, including adult sites.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s BAYER Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered or is being used in bad faith.

The Complainant is the owner of the BAYER Mark. It owns at least 1000 trademark registrations worldwide containing the BAYER Mark, including registrations of the BAYER Mark in the United Arab Emirates. The BAYER Mark is a well-known mark with a strong reputation throughout the world, one that has been recognised in several past UDRP cases including Bayer Aktiengesellschaft v. K Dangos Kangos & Partners, WIPO Case No. D2002-0138; Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115; and Bayer AG v Webcontents, Inc., WIPO Case No. D2009-0484. The Domain Name fully incorporates the BAYER Mark and is identical to the BAYER Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent has no trade mark rights or licence to use the BAYER Mark. The Respondent has not used or made preparations to use the Domain Name in connection with a bona fide offering of goods and services, nor is the Respondent making a legitimate noncommercial or fair use of the Domain Name. The Respondent’s Website is a “parking website” which consists of a series of links to third-party sites offering products, including “Bayer Aspirin”, “Bayer Insecticide” and “Bayer Products”. It appears that the Respondent’s Website is merely a “sponsored-link” pay-per-click page for which the Respondent may receive revenue. For those reasons the Respondent has not used the Domain Name for a bona fide offering of goods and services nor has it made a legitimate noncommercial or fair use of the Domain Name.

The Domain Name has been registered and is being used in bad faith. On February 28, 2012, the Respondent approached the Complainant and invited it to make an offer to purchase the Domain Name. At that time Domain Name was for sale on the Sedo website for EUR 10,000. This is evidence that the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.

In the alternative the Domain Name was registered to disrupt the business of the Complainant, or to attract, for commercial gain, Internet users to its web site 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 web site. In particular the Respondent’s Website resolves to a page that offers sponsored-links on a pay-per-click basis for which the Respondent may receive revenue.

B. Respondent

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

6. Discussion And Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the BAYER Mark, having registrations for BAYER as a trademark throughout the world including in the United Arab Emirates.

The Domain Name is identical to the BAYER Mark. It is well established that the gTLD or country-code Top Level Domain (such as “.ae”) is not an element taken into consideration when evaluating whether the a disputed domain name is identical to a complainant’s trade mark, see eBay Inc. v Akram Mehmood, WIPO Case No. DAE2007-0001; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name.

Paragraph 6(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 6(a)(ii):

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

(iii) you are making legitimate non-commercial 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.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BAYER Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears that the Respondent is using the Domain Name for a “portal website” that consists of a series of pay-per-click links to third-party sites that purport to sell products, some of which are connected with the Complainant. The Respondent’s Website contains a number of references to the Complainant and products that the Complainant is well-known for, such as pharmaceutical and health care products. Such use is not a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 6(a)(ii) of the Policy.

C. Registered or is Being Used in Bad Faith

For the purposes of paragraph 6(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent 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 owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 the 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, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on the Respondent’s web site or location. (Policy, paragraph 6(b))

In view of the record of this case, within 10 days of the registration of the Domain Name, the Respondent sent an e-mail to the Complainant inviting it to make an offer to purchase the Domain Name. At the same time, the Domain Name was listed for sale on the website “www.sedo.com” for the price of EUR 10,000. This is clear evidence that the Respondent registered the Domain Name for the purpose of selling it to the Complainant or a third party for valuable consideration in excess of its documented out-of-pocket costs directly related to it and amounts to registration and use in bad faith for the purposes of paragraph 6(a)(iii) of the Policy.

The Panel also finds that, given Complainant’s reputation and the Respondent’s conduct in communicating with the Complainant 10 days after the Domain Name was registered, it is likely that the Respondent was aware of the Complainant and its reputation in the BAYER Mark at the time the Domain Name was registered. After registration, the Domain Name resolved to a website which contained a series of links to third-party sites offering products by reference to the Complainant. Such sites generally advertise by paying registrants on a pay per click basis for Internet users redirected to their sites. This means that the Respondent receives a financial reward for every Internet user redirected from the Respondent’s Website to those third-party sites. The Panel finds that such use amounts to use in bad faith as by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.

The Panel, while noting that the Policy only requires that a complainant shows that a respondent registered or used the domain name at issue in bad faith, finds that the Respondent has registered and has been using the Domain Name in bad faith under paragraph 6(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bayer.ae> be transferred to the Complainant.

Nicholas Smith
Panelist
Dated: July 9, 2012

 

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