WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Volker Kammel, Whois Agent / Whois Privacy Protection Service, Inc.
Case No. D2015-0540
1. The Parties
The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is Whois Agent, WhoIs Privacy Protection Service, Inc., of Kirkland, Washington, United States of America (“USA”) / Volker Kammel of Munich, Germany.
2. The Domain Names and Registrars
The disputed domain names <bayerhealthcare-ag.com> and <healthcarebayer.com> are respectively registered with eNom and 1API GmbH (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2015. On March 27, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 27, 2015 eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <bayerhealthcare-ag.com> and providing the contact details. On April 1, 2015 1API GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <healthcarebayer.com> and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2015.
The Center appointed Dietrich Beier as the sole panelist in this matter on May 28, 2015. 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 well known global enterprise with core competencies in the fields of health care, nutrition and high-tech materials. Its global headquarters are in Leverkusen, Germany.
The company name “Bayer” dates back to 1863, when the firm of “Friedrich Bayer & Co.” was established in the town of Elberfeld, now part of the city of Wuppertal in Germany. In 1881, the name was transferred to a stock corporation called “Farbenfabriken vorm. Friedrich Bayer & Co.”. This company began manufacturing and marketing pharmaceutical products in 1888, and has sold such products under the BAYER trademark ever since that time.
The Complainant is represented by over 250 affiliates and has more than 113,000 employees worldwide. The Complainant, itself or through subgroups like HealthCare, CropScience and MaterialScience, does business on all five continents, manufacturing and selling numerous of products, inter alia human pharmaceutical and medical care products, veterinary products, diagnostic products, agricultural chemicals and specialty polymers. The Complainant provides information on its subgroup HealthCare online inter alia at “www.healthcare.bayer.de” (in German) and “www.healthcare.bayer.com” (in English). The Complainant’s HealthCare products are researched and marketed through the Complainant’s subsidiary Bayer HealthCare AG, a corporation incorporated under the laws of Germany with its principal place of business in Leverkusen, Germany.
The Complainant is the owner of about 700 trademark registrations and pending applications of the word mark BAYER alone, inter alia of the German trademark BAYER for pharmaceutical products applied for on April 6, 1900 and registered on June 2, 1900.
The disputed domain name <bayerhealthcare-ag.com> was registered on January 28, 2015. The Complainant received information that the disputed domain name <bayerhealthcare-ag.com> and the name of the Complainant’s subsidiary Bayer HealthCare AG are being fraudulently used by the Respondent to issue fake job offers in the Complainant’s name in an attempt to extract money from job candidates. The email address used was “email@example.com”. After the Registrar eNom put the disputed domain name on registrar hold for violations of the registration agreement on February 20, 2015, the Respondent registered the further disputed domain name <healthcarebayer.com> on March 4, 2015. The second disputed domain name is currently used to forward Internet users to the Complainant’s website at “www.healthcare.bayer.com/scripts/pages/en/index.php”.
5. Parties’ Contentions
The disputed domain names fully incorporate the Complainant’s well-known BAYER marks and are confusingly similar to such marks.
In Germany, where the Respondent is located, the combinations “bayer healthcare”, “healthcare bayer” and “bayer healthcare ag” are solely connected with the Complainant and its subsidiary Bayer HealthCare AG.
The word “Bayer” is highly distinctive and obviously connected with the Complainant and its products and 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 marks. These circumstances themselves are sufficient to constitute a prima facie case of absence of rights or legitimate interests in the disputed domain names on the part of the Respondent.
Furthermore, there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the Respondent demonstrably used the disputed domain name <bayerhealthcare-ag.com> in connection with fraudulent emails. The use of the second disputed domain name <healthcarebayer.com> to forward Internet users to the Complainant’s website does not lead to any rights or legitimate interests as well. The Respondent therefore cannot rely on any use of the disputed domain names in connection with a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy as it is clear that the Respondent is infringing upon the Complainant’s trademark rights.
There is also no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, or is commonly known by said disputed domain names or the names “Bayerhealthcare Ag” or “Healthcarebayer”, or trades under the disputed domain names or the names “Bayerhealthcare Ag” or “Healthcarebayer”. In fact, the Respondent’s name is “Volker Kammel”.
Based on the Complainant’s high profile worldwide, it is inconceivable that the Respondent, which is located in the country of the Complainant’s principle place of business, registered the disputed domain names unaware of the Complainant and its rights in its highly distinctive and well-known BAYER marks. Bad faith registration is further established by the fact that the Respondent has deliberately held itself out as the Complainant and sent fraudulent email communications using the Complainant’s famous Bayer cross logo as well as the fact that the disputed domain names clearly refer to the Complainant’s subsidiary Bayer HealthCare AG (<bayerhealthcare-ag.com>) and one of Bayer HealthCare AG’s websites available at “www.healthcare.bayer.com” (<healthcarebayer.com>).
The Respondent sent fraudulent emails using one of the disputed domain names and therefore acted in bad faith under paragraph 4(b)(iv) of the Policy. With regard to the second disputed domain name <healthcarebayer.com>, it seems to be obvious that the Respondent will use such domain name in a similar way, given that it registered the disputed domain name <healthcarebayer.com> in reaction to the Registrar’s locking of the disputed domain name <bayerhealthcare-ag.com>.
Furthermore, the registration and use of the disputed domain names by the Respondent also constitutes an abusive threat hanging over the head of the Complainant, which also supports a finding of bad faith. As the Respondent is neither selling the Complainant’s products nor has any business relationship with the Complainant, there is no plausible use of the disputed domain names other than the exploitation of the Complainant’s BAYER marks by the Respondent.
The Respondent’s registration of the disputed domain names also prevents the Complainant from reflecting the BAYER marks in corresponding domain names and the Respondent has engaged in a pattern of such conduct as required under paragraph 4(b)(ii) of the Policy.
Furthermore, the Respondent’s address as provided in the whoIs databases of the concerned Registrars is not correct as a visit of the mentioned premises showed. It is well established that the provision of false information on applying for registration is further evidence of bad faith (see The NASDAQ OMX Group, Inc. v. 11, Yi O, WIPO Case No. D2014-1628 (<nasdaqasia.net>)).
Finally, as the elements expressly mentioned in paragraph 4(b) of the Policy are non-exhaustive, practice has regarded a number of other indications and aspects as establishing bad faith. The fact that the Respondent registered domain names which include a trademark that is obviously connected with the Complainant and its products also supports the finding of bad faith as the very use of such domain names by someone with no connection with the products suggests opportunistic bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The disputed domain names are 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 with respect to the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established the fact that it has valid trademark rights for BAYER in several classes. The disputed domain names are confusingly similar to the BAYER marks since the addition of “healthcare” and “ag” - the latter being the legal form of corporations in Germany - in the disputed domain names is of a purely descriptive nature and does not change the overall impression being created by the dominating element “Bayer” being used identically.
The Panel therefore considers the disputed domain names to be confusingly similar to the BAYER trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain names, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain names, since there is no indication that the Respondent is commonly known by the name “Bayer” or “Bayerhealthcare-ag” or “Healthcarebayer“ or that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Due to the nature of the BAYER mark as well-known, the Respondent must have been aware of the Complainant and its trademarks when registering the disputed domain names. The Complainant has not authorized the Respondent to make use of its mark. This Panel does not see any conceivable legitimate use that could be made by the Respondent of the disputed domain names without the Complainant’s authorization.
The circumstances of this case, in particular the transmission of fraudulent emails using the disputed domain name <bayerhealthcare-ag.com> and the registration of the further disputed domain name <healthcarebayer.com> after the <bayerhealthcare-ag.com> disputed domain name was blocked show bad faith at the time of the Respondent´s registration and use of the disputed domain names by attempting to attract, for commercial gain, Internet users to its potential website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location. The Panel therefore considers the disputed domain names to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 names <bayerhealthcare-ag.com> and <healthcarebayer.com> be transferred to the Complainant.
Date: June 10, 2015