WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Lizhe
Case No. D2017-0126
1. The Parties
The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is Lizhe of China.
2. The Domain Name and Registrar
The disputed domain name <bayermonsanto.net> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2017. On January 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2017, 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 February 8, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 11, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on 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 in Chinese and English of the Complaint, and the proceedings commenced on February 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2017.
On February 15, 2017, the Center received emails from the Respondent consenting to remedy requested by the Complainant. On the same day, the Center forwarded such communications to the Complainant and the Complainant subsequently filed a suspension request with the Center. The proceeding was accordingly suspended by the Center to enable the Parties to discuss settlement. On March 13, 2017, the Complainant requested the Center to reinstitute the proceeding due to the Respondent's inaction to the settlement process. On March 14, 2017, the Center reinstituted the proceeding and informed the Respondent that the updated due date for Response was April 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment.
The Center appointed Douglas Clark as the sole panelist in this matter on April 10, 2017. 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 German based multinational company with core competencies in the fields of health care, nutrition and plant protection. The Complainant is the registered proprietor of the trademark BAYER in various countries in numerous classes, for example, United States of America ("U.S.") registered trademark no. 0155612, registered on June 6, 1922. It has multiple registrations in China in numerous classes covering an extensive range of goods and services, including pharmaceuticals, veterinary preparations, cosmetics, dietetic substances, coatings, plastics, agricultural chemicals, pesticides, insecticides, fungicides, and herbicides.
On May 12, 2016, international media first reported that the Complainant was exploring a potential bid for its U.S. competitor Monsanto Co. The Complainant and Monsanto agreed to a merger in September 2016. The Complainant in its Complaint did not provide any details of Monsanto's trademark registrations. For the purposes of this decision the Panel will treat Monsanto as a trade name.
The Respondent is an individual based in China. The disputed domain name <bayermonsanto.net> was registered on August 24, 2016. It is currently not used in connection with an active website. The Respondent is also the registrant of a number of domain names that combined the names of two companies, including: <gamesa-siemens.com>, <siemens-gamesa.com>, <gamesasiemens.com>, <lindepraxair.net> and <merckbiogen.com>.
5. Parties' Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <bayermonsanto.net> is made entirely up of the registered trademark BAYER and the name Monsanto to which generic Top-Level Domain ("gTLD") ".com" has been added. As the Complainant was considering merging with Monsanto, the use of "Monsanto" strengthens the likelihood of confusion by referring to the Complainant and its intentions to merge with the Monsanto.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for BAYER. Furthermore, 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 within the meaning of paragraph 4(c)(i) of the Policy.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant's rights in the BAYER. Further the Respondent's registration of a number of other domain name of composed of names of companies which might merge clearly evidences that the Respondent is an alert entrepreneur deliberately targeting the Complainant and its trademarks. Even though the domain name has not been used, the passive holding of a domain name amounts to bad faith use. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (<telstra.org>)).
Further, the Respondent's registration of the disputed domain name prevents the Complainant from reflecting its trademarks in a corresponding domain name and the Respondent has engaged in a pattern of such conduct, as set out in paragraph 4(b)(ii) of the Policy.
The registration of the disputed domain name is further intended to disrupt the Complainant's business and is an abusive registration.
As set out above the Respondent sent an email in Chinese to the Center indicating its willingness to transfer the disputed domain name to the Complainant and asking how this could be done. The proceedings were suspended for the parties to seek a resolution. This was not achieved and the proceedings were reinstituted. When informed that a panel was appointed the Respondent did not respond.
6. Discussion and Findings
6.1. Was there a consent to transfer?
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") sets out the current views of UDRP panelists when a respondent consents to transfer or cancel the disputed domain name. This provides:
"Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP)."
The Panel considered this paragraph in its decision in Rockwool International A/S v. Lin Chengxiong, WIPO Case No. D2012-0472 and concluded that where there was an unambiguous consent to transfer a panel could do so without considering the merits of the case.
The Respondent in its email to the Centre said it was willing to transfer the domain name to the Complainant. No request was made for payment; nor however was there a statement it would be transferred for free. Following the suspension of the proceeding to allow the parties to resolve the matter, the Complainant asked that they be reinstituted. From this, the panel cannot conclude there was an unambiguous consent to transfer. The Panel will therefore consider the merits of the case.
6.2. Language of the Proceeding
The language of the Registration Agreement is Chinese. Paragraph 11(a) of the Rules provides 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."
The Complainant requested the language of the proceeding to be English on grounds that the disputed domain name was registered in ASCII characters and the Respondent is registered owner of several domain names built of common English words, such as <yahooholdings.net>, <gamesasiemens.com>, <hailomytaxi.com> and <thermo-illumina.com>. Further the Complainant stated it cannot communicate in Chinese.
The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center's preliminary determination but has indicated that it understands the nature of the proceedings and that the Complainant is asserting its trademark rights in relation to the disputed domain name.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint".
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. The Respondent has also shown that it understands the nature of the proceedings by its emails indicating it is willing to transfer the disputed domain name. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center's preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.3. Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name <bayermonsanto.net> is made up of the registered trademark BAYER, the trade name Monsanto and the gTLD ".net". The disputed domain name is confusingly similar to the registered trademark BAYER. The addition of Monsanto does not detract from any confusing similarity. In fact, because of the merger announcement between the Complainant and Monsanto prior to the time of registration of the disputed domain name, the addition of Monsanto increase the association between the disputed domain name and the Complainant's mark.
The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. On the contrary, it has stated that it is willing to transfer the disputed domain name. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can demonstrate its rights or legitimate interests, are present in this case.
The second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <bayermonsanto.net> was registered in bad faith and is being used in bad faith.
While the disputed domain name has not been used, this does not, as such, prevent a finding of bad faith (see paragraph 3.2 of the WIPO Overview 2.0). The disputed domain name comprises of the whole of the Complainant's mark BAYER and the trade name Monsanto. The Panel considers that it is very likely that the Respondent knew of the Complainant especially given the Complainant's reputation and the fact the disputed domain name was registered after the Complainant announced its merger with Monsanto. The Panel finds that the Respondent's registration and passive holding of the disputed domain names in the circumstances of the present proceeding accounts to registration and use of the disputed domain names in bad faith.
Further, the registration of other domain names made up of the names of well-known companies indicates that the Respondent is engaged in a pattern of conduct of registering other companies' trademarks as domain names for the purposes of preventing owners from reflecting their marks in a corresponding domain name in breach of paragraph 4(b)(ii) of the Policy. This is also in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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, <bayermonsanto.net>, be transferred to the Complainant.
Date: April 24, 2017