WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. huang cheng
Case No. D2015-1932
1. The Parties
The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is huang cheng of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <bayer.online> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2015. On October 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 2, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 3, 2015, the Respondent requested that Chinese be the language of the proceeding. On November 3, 2015, the Complainant confirmed its request that English be the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint in both English and Chinese, and the proceedings commenced on November 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on December 15, 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 German multinational corporation with core competencies in the fields of healthcare, nutrition and plant protection. Its company name dates back to 1863. It started manufacturing and marketing pharmaceutical products in 1888 and has sold such products under its BAYER trade mark ever since.
The Complainant has over 250 affiliate companies and more than 100,000 employees worldwide. Its business spreads across five continents and involves the manufacture and sales of pharmaceutical and medical care products, veterinary products, diagnostic products and agricultural chemicals. The Complainant is regularly listed as one of the world's leading companies in various categories. Its stocks are traded on all German stock exchanges. In China, the Complainant has a local subsidiary trading under the name Bayer (China) Limited.
The Complainant states it is the owner of about 700 registrations and pending applications for the word mark, BAYER, alone, including in China where the Respondent is located. Its trademark registrations cover an extensive range of goods and services. Its BAYER marks were deposited with the Trademark Clearinghouse ("TMCH").
The Complainant and its subsidiaries own hundreds of domain name registrations containing the trade mark BAYER, including <bayer.com> and <bayer.com.cn>.
The disputed domain name was registered on September 17, 2015. It is not used in connection with an active website.
5. Parties' Contentions
As a result of the exclusive and extensive use, the Complainant's BAYER mark has acquired significant goodwill and is widely known. Earlier decisions rendered under the Policy by panelists have recognized BAYER to be well known (e.g., Bayer Aktiengesellschaft v. K. Dangos, WIPO Case No. D2002-0138; Bayer Aktiengesellschaft v.Yongho Ko, WIPO Case No. D2001-0205; Bayer Aktiengesellschaft v. Amltea Impex SRL, WIPO Case No. DRD2005-0006; Bayer Aktiengesellschaft v. TMP, WIPO Case No. D2002-0132; Bayer Aktiengesellschaft v. Sonny Mei, WIPO Case No. D2006-1349).
The disputed domain name is identical to the Complainant's highly distinctive and well-known BAYER mark since the generic Top-Level Domain ".com" is not an element to be taken into consideration when evaluating the issue of identity or confusing similarity with a complainant's mark.
Further, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The BAYER mark is well known and obviously connected with the Complainant and its products. "Bayer" is not a word any market participant or other domain name 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 its trade marks and not permitted it to apply for or use any domain name incorporating the BAYER mark. There is also no evidence of the Respondent's use of or demonstrable preparations to use the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods or services. Neither is there evidence which suggests that the Respondent is commonly known by the disputed domain name or the name "Bayer". These circumstances contribute to a prima facie showing of the Respondent's absence of rights or legitimate interests in the disputed domain name.
The disputed domain name was registered and is used in bad faith since it is inconceivable that the Respondent was unaware of the Complainant and its rights in the well-known BAYER mark. The Respondent is engaged in registering domain names containing famous marks, e.g., <adidas.trade>, <audi.trade>, <basf.club>, <chinapetrochemical.com>, <ferrari.trade>, <gucci.trade>, <haagen-dazs.club>, <jaguarlandrover.club>, <mercedes-benz.trade>, <porsche.trade> and <samsung.online>. According to information provided by the TMCH, the Claims Notification Period started on August 19, 2015 and ended on November 17, 2015, which meant that the Respondent would have received a trademark claim notification before registering the disputed domain name. Notwithstanding the notification, the Respondent proceeded with the registration of the disputed domain name.
The passive use of the disputed domain name is equal to active use since:
(i) the BAYER mark is well known;
(ii) the Respondent registered numerous well-known trade marks as domain names;
(iii) the Respondent provided no evidence of any actual or contemplated good faith use;
(iv) the WhoIs information provided by the Respondent in connection with the disputed domain name is probably false; and
(v) there does not appear to be any possible or conceivable good faith use of the disputed domain name that would not be illegitimate.
The Respondent's registration of the disputed domain name prevents the Complainant from reflecting its trade mark BAYER in a corresponding domain name and the Respondent has engaged in a pattern of such conduct.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement is Chinese whereas the Complainant requested that English be treated as the language of the proceeding. The Respondent sent an email to the Center to request that Chinese be retained as the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
At the same time, the Panel has to keep in mind the policy considerations captured in paragraphs 10(b) and (c) of the Rules which stipulate, respectively, that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
The Complainant requested that English be the language of the proceeding on the basis that the Respondent's numerous other domain name registrations comprise common English words such as <automatic-filter.com>, <chinafilter.co>, <business-school.club>, <chinavalve.co>, <electric.trade>, <familymart.online>, <homosexual.pub>, <internet-plus.club>, <makelove.pub>, <phoenixcontact.mobi>, <theworld500strong.com> and <toolstore.com.cn>. It can therefore be assumed that the Respondent understands English. On the other hand, the Complainant is unable to communicate in Chinese and if it were required to submit all the documents in Chinese, the proceeding will be unduly delayed.
The Panel determines in the circumstances of this case that it would be appropriate for English to be the language of the proceeding. The numerous domain name registrations which the Respondent possesses consist of Latin characters and/or generic English terms rather than Chinese words. This reflects a familiarity and comfort with the English language. The Respondent has been given the opportunity to present its case and to provide evidence or an explanation justifying its registration of the disputed domain name. All communications from the Center to the parties were sent in English and Chinese so the Respondent would at least have understood the nature of the proceeding. Any doubts or questions could have been easily raised with the Center. The Respondent was not prevented from participating in the proceeding but chose not to do so. In the circumstances, the Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding.
Accordingly, the Panel determines English to be the language of this proceeding.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has established it has rights in the trade mark BAYER. The mark has been incorporated in its entirety in the disputed domain name.
The Panel concludes that the disputed domain name is identical to the Complainant's BAYER mark.
The first element of paragraph 4(a) of the Policy has therefore been established.
C. Rights or Legitimate Interests
The Panel agrees that the BAYER mark is well-known and it would indeed be very difficult, generally speaking, for one to disclaim knowledge of the Complainant and/or of its trade mark. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant's assertions and in light of the repute of the BAYER trade mark, it would not have been an easy task for the Respondent to provide clear and persuasive evidence of a right or legitimate interest in the disputed domain name. In any event, the Respondent has not filed any substantive response in relation to the claims made by the Complainant from which the Panel may find a basis to find for the Respondent in relation to this issue.
The second element of paragraph 4(a) of the Policy has therefore been established.
D. Registered and Used in Bad Faith
The disputed domain name was registered a very substantial period after the Complainant had started the use of the BAYER mark, and long after the use had spread across the world. The Respondent did not provide evidence of any actual or contemplated good faith use of the disputed domain name. The Panel also draws an adverse inference from the fact that the Respondent appears to be associated with many other domain names which contain well-known marks. This is evidence of a pattern in the misappropriation of well-known marks which cannot be regarded as registration and use in good faith. The fact that the disputed domain name was passively held does not negate a finding of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The fact that the BAYER mark had been registered with the TMCH also lends strong support for the Complainant's position that the registration was made in bad faith.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith.
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 <bayer.online> be transferred to the Complainant.
Date: December 19, 2015