WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer Aktiengesellschaft v. TMP
Case No. D2002-0132
1. The Parties
Complainant is Bayer Aktiengesellschaft, 51368 Leverkusen-Bayerwerk, Germany. Complainantís authorised representative in this case is Colleen Connors Butler, Esq., Brinks Hofer Gilson & Lione, Chicago, Illinois, United States.
Respondent is TMP, Bulgurlu, Istanbul, Turkey.
2. Domain name and Registrar
The following domain names are at issue in this case:
<bayer-polymers.com>, <bayerpolymers.com>, <bayerhealthcare.com>, <bayer-healthcare.com>, <bayerhealthcare.net>, <bayer-healthcare-company.com>, <bayerhealthcarecompany.com>, <bayerhealthcarecompany.net>, <bayer-healthcare-company.net>, <bayer-agriculture.com>, <bayeragriculture.com> and <bayer-chemicals.com>.
The Registrar is VeriSign-Network Solutions Inc., located in Virginia, United States.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint in e-mail form on February 8, 2002, and in hard-copy form on February 11, 2002. On February 13, 2002, the Center issued an Acknowledgement of Receipt of the Complaint.
Having sent, on February 15, 2002, a Request for Registrar Verification, a Verification Response was received on February 21, 2002.
The Verification Response was submitted on behalf of VeriSign and its subsidiary registrars, VeriSign-Network Solutions, in respect of all the domain name registrations at issue, stated the following:
- The Registrant is TMP, Bulgurlu, Istanbul, Istanbul 81170, Turkey;
- The domain names at issue are the ones indicated above under 2;
- The Administrative Contact, Billing Contact is "TMP, Bulgurlu, Istanbul 81170, TR, 4437462";
- Technical Contact is VeriSign, Inc., with the same address as indicated for the Registrar above;
- The status of the domain name registrations is: Active;
- The language of the Service Agreements is English; and
- The domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain names.
Having established a Formal Requirements Compliance Checklist, the Center issued, on February 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding. That Notification was transferred, on the same date, to "postmaster" of each of the domain name addresses at issue. All the postmaster addresses had, however, fatal errors. The Notification was also sent to Complainant, to ICANN, to the available e-mail address of Respondent, to the Registrar and to the Technical Contact. It was also sent by telefax to TMP c/o Verisign Inc., but that mail did not pass. The documents were also sent by DHL courier to TMP at the address indicated above for Respondent.
Having received no Response from Respondent, the Center issued, on March 20, 2002, a Notification of Respondent Default, which was notified by e-mail to the Registrant, to the Administrative and Billing Contact and to the Technical Contact and also by courier to Respondent.
The Center invited Mr. Henry Olsson to serve as a Sole Panelist in the case. Having received Mr. Olssonís Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date that was communicated to the Parties.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
4. Factual Background
Complainantís company name BAYER dates back to 1863, when the firm "Friedrich Bayer & Co." was established in Elberfeld which is now a part of the city of Wuppertal. Later the name was transferred to a newly formed stock corporation "Farbenfabriken vorm. Friedrich Bayer & Co.," which began producing and marketing pharmaceutical products in 1888, and has since then sold such products under the trademark BAYER.
No specific information is available concerning Respondentís activities.
5. Partiesí Contentions
Complainant first contends that it is the owner of a substantial number of registrations of the trademark BAYER covering an extensive range of goods and services, such as pharmaceutical preparations, chemicals, waste water treatment chemicals for industrial use, pigments, synthetic and artificial resins, coatings, plastics, greases, lubricants, rubber and synthetic rubber, agricultural chemicals, pesticides, insecticides, fungicides, herbicides and cleaning materials. Complainant has submitted a printout of the registrations of the trademark BAYER throughout the world.
In addition, Complainant has stated that it owns the corresponding domain name at which the website http://www.bayer.com which it uses to promote the name BAYER and providing consumers with a source for information about the companyís business and products.
In the context of domain names, according to Complainant, its United States and Canadian affiliates Bayer Corporation in the United States and Bayer Inc. in Canada as well as selected divisions have registered a number of domain names comprising the trademark BAYER in conjunction with generic names that describe specific units, such as <bayerdiagnostics.com> and <bayerhealth.com.> Complainant has submitted examples of such registrations.
Identity or Confusing Similarity
Complainant contends that the domain names registered by Respondent are confusingly similar to Complainantís trademark BAYER. According to Complainant, when a Respondent merely adds descriptive terms to an otherwise distinctive or well-known trademark, the domain names are to be considered as confusingly similar to the famous trademarks, something that has been found in several earlier Administrative Panel Decisions. Complainant contends that, consequently, the combinations, in Respondentís domain names, of the descriptive words "healthcare," "chemicals," "agriculture," and "polymers" - which merely describe a business activity - with the famous trademark BAYER create a confusing similarity.
Moreover, according to Complainant, the likelihood of confusion is even greater in this case because Complainant itself has a history of using domain names consisting of the name BAYER in combination with generic terms that describe its various business activities. Consequently, Complainant will be injured if Respondent would be allowed to keep the subject "BAYER" domain names because consumers would be likely to think that any websites set up at the domain names are related to or sponsored by Complainant.
Rights or Legitimate Interests
Complainant first contends that the trademark BAYER is recognized worldwide and that Complainant is acknowledged as a leader in the fields of healthcare, agriculture, chemicals and polymers. Complainant refers in this connection to two earlier decisions by WIPO Panels where the fame of the trademark at issue has been recognised. As Respondent can not show any of the circumstances set forth in Section 4 c) of the Policy to demonstrate its rights or legitimate interests or any other interest in the domain name, Complainant submits that Respondent has in fact no rights or legitimate interests in the domain names.
Registration and Use in Bad Faith
Complainant contends that Respondent, by a letter, in German, of January 2, 2002, offered, until January 16, 2002, to sell the domain names at issue for an amount of 12 million Euro (indicated to be 0,1% of the expected sales by Complainant.) The letter indicated that replies should be sent to a German law firm in Cologne. According to Complainant, the attorneys at that law firm had confirmed that they had no knowledge of this letter and were not involved in the proposed transaction.
Complainant furthermore contends that the letter just mentioned demonstrates that Respondent deliberately registered the domain names in order to extort considerable amounts from Complainant, a kind of activity which has been held unlawful both by federal United States Courts and in earlier decisions by Administrative Panels.
In addition, Complainant contends that Respondentís registration of multiple domain names containing the BAYER trademark is evidence of bad faith registration (in particular such as mentioned in Paragraph 4.b (ii) of the Policy), as also has been found in several earlier Administrative Panel Decisions.
Furthermore, according to Complainant, it has used the BAYER trademark in worldwide commerce for many years. If a Complainant uses a famous trademark for several years a Respondentís knowledge of the mark at the time of registration of the domain name is inferred. It should also be noted that around December 6, 2001, Complainant announced to the public that it was reorganised into a holding company with operating subsidiaries in the areas of Healthcare, Polymers, Agrichemicals and Specialty Chemicals. This reorganisation was announced by means of a press release and posted on Complainantís website which was accessible everywhere, including in Turkey. Immediately thereafter, on December 13, 2001, Respondent registered the domain names at issue, and this must, according to Complainant, have been done in order to extort money from Complainant.
Finally, Complainant also indicates that Respondent has shown that it is intimately familiar with Complainantís business and its intent to use the Bayer-Healthcare name to describe a major portion of its business, something that appears clearly in the letter of January 2, 2002.
According to Complainant, Respondent has been in breach of its agreement with VeriSign Inc. by registering and maintaining domain names that incorporate the BAYER trademark Actually, Section 2.3 of the Service Agreement indicates that Registrant agrees and warrants that neither the registration or the use of any of the VeriSign services nor the manner in which Registrant intends to use such VeriSign services will directly or indirectly infringe the legal rights of a third party. Complainant submits that the letter of January 2, 2002, shows that Respondent knew at the time of registration of the domain names that the registration was unlawful.
For the reasons set out and referred to above, Complainant requests that the domain names at issue be transferred to Complainant.
Respondent has not submitted any Response and is in default.
6. Discussions and Findings
First, the Panel notes that Complainant has, in accordance with Paragraph 3.b.(xiii) of the Rules, agreed to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain names that are the subject of the Complaint, to the jurisdiction of the courts in the principal office of the concerned Registrar, namely the Eastern District of Virginia.
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any principles of law that it deems applicable.
In the case of a default by a party, Paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
On the basis of the documentation available about the various communications to Respondent, the Panel is satisfied that Respondent has actually been communicated both the Complaint and the Notification of Respondent Default. Respondent has, however, not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support these contentions.
The Service Agreements relating to the domain name registrations at issue, as submitted by Complainant, incorporates the Policy which is, by reference, made applicable to those registrations. Respondent is thus required to submit to an administrative proceeding by approved administrative dispute settlement Provider approved by ICANN. WIPO is such an approved Provider. The Panel concludes that the dispute is properly within the Panelís jurisdiction.
Paragraph 4.a of the Policy directs that Complainant must prove each of the following:
- that the domain names registered by Respondent are identical or confusingly similar to a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain names; and
- that the domain names have been registered and are being used in bad faith.
In the following parts of the Decision the Panel discusses each of those elements.
Identity or Confusing Similarity
In this respect Complainant has, according to Paragraph 4.a(i) of the Policy, to prove that the domain names at issue are identical with or confusingly similar to a trademark or a service mark in which Complainant has rights.
The Panel first notes that the trademark BAYER is the subject of o great number of registrations in different countries and that it has been used worldwide for more than 100 years. The Panel concludes that in fact the trademark is a famous trademark with world-wide presence and being used in a considerable range of goods and services.
The Penal furthermore notes that Complainant has, in connection with the trademark BAYER, registered a corresponding domain name and set up a website under <www.bayer.com> in order to promote the name on the Internet and provide consumers and customers with information concerning Complainantís company.
The domain names at issue in this case contain Complainantís trademark BAYER in combination with various descriptive terms which are obviously referring to parts of the business of Complainant. In the view of this Panel this combination of certain descriptive terms and the distinctive and famous trademark BAYER creates, as Complainant has submitted, a confusing similarity between the domain names and Complainantís trademark.
Rights or Legitimate Interests
In this respect Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain names.
With reference to the fame of the BAYER trademark Complainant has basically invoked that Respondent has shown none of the circumstances mentioned in Paragraph 4.c to demonstrate rights or legitimate interests in the domain names.
Respondent has been given ample opportunities to argue why it has registered domain names containing the BAYER trademark together with descriptive notions clearly related to the business of Complainant and why this was done immediately after Complainantís widely publicised announcement about the reorganisation of its activities. In the absence of any further indications about the circumstances relating to the registration of the domain names at issue, the Panel concludes that it has been clearly established that Respondent has no rights or legitimate interests in the domain names at issue.
Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4.a(iii) to prove that Respondentís domain names have been registered and are being used in bad faith. Paragraph 4.b then mentions a number of circumstances which, in particular but without limitations, shall, if found to be present by the Panel, be evidence of registration and use of a domain name in bad faith.
To prove that Respondent has registered and is using the domain names at issue in bad faith, Complainant has invoked a number of circumstances, primarily a letter of January 2, 2002, containing what is basically an offer to sell the domain names at issue for a considerable amount in Euros. In addition, Complainant has contended, inter alia, that the multiple registrations of domain names containing the trademark BAYER is evidence of bad faith, that Respondent must have had knowledge of the trademark when it registered the domain names and that Respondentís breach of its domain name service agreement is also a sign of bad faith. Complainant has supported its allegations by documentary evidence, in particular the letter of January 2, 2002, in German with English translation.
Respondent has not responded to any of the contentions by Complainant and has thus not thrown any further light over the circumstances in connection with its registration and use of the domain names at issue.
The evidence presented and the circumstances in the case leads the Panel to the conclusion that it has been established that the domain names have been registered and are being used in bad faith, especially such bad faith as mentioned in Paragraph 4.b.(i) of the Policy.
In the light of the foregoing, the Administrative Panel concludes that the domain names at issue in this case are confusingly similar to Complainantís trademark, that Respondent has no rights or legitimate interests in the domain names and that Respondentís domain names have been registered and are being used in bad faith.
Pursuant to Paragraph 4.i of the Policy and in accordance with the request by Complainant the Administrative Panel requires that the following domain names be transferred to Complainant:
Dated: April 16, 2002