WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Lim Sang Woon
Case No. D2017-0283
1. The Parties
Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
Respondent is Lim Sang Woon of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bayer-monsanto.com> is registered with Gabia, Inc. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 13, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On February 15, 2017, the Center sent an email communication to the parties in both English and Korean regarding the language of the proceeding. On February 16, 2017, Complainant requested for English to be the language of the proceeding. On the same date, Respondent requested for Korean to be the language of the proceeding.
On February 16, 2017 Complainant requested a suspension of the administrative proceedings for 30 days in order to explore a settlement. The administrative proceeding was suspended on February 17, 2017. On March 15, 2017 Complainant requested re-institution of the proceeding. On the same date, the proceeding was reinstituted.
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 Respondent of the Complaint, and the proceedings commenced on March 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2017. Respondent sent email communications on March 2, 17 and April 19, 2017. Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on April 7, 2017.
The Center appointed Moonchul Chang as the sole panelist in this matter on April 25, 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.
On May 12, 2017, due to exceptional circumstances, the Panel extended the due date for rendering its decision until May 19, 2017.
4. Factual Background
Complainant, Bayer AG, is an internationally widely known company in manufacturing and selling a variety of pharmaceutical products, inter alia, human pharmaceutical and medical care products, veterinary products, diagnostic products and agricultural chemicals. Since it was established in 1863, Complainant has been growing as a global company in the field of health care, nutrition plant protection. In the Republic of Korea, Complainant has a local subsidiary trading under the name of Bayer Korea Co., Ltd.
Complainant owns about 700 registrations of BAYER mark alone including numerous registrations in the Republic of Korea where Respondent is located. In addition, Complainant and its subsidiaries own hundreds of domain names registration such as <bayer.com> and <bayer.co.kr>.
According to the publicly available WhoIs information and as confirmed by Registrar, the disputed domain name <bayer-monsanto.com> was registered on May 13, 2016. The disputed domain name is passively held.
5. Parties' Contentions
Complainant contends that:
(i) The disputed domain name is confusingly similar to Complainant's trademark BAYER.
The dispute domain name incorporates the term "bayer" in its entirety. The use of the BAYER mark in connection with the MONSANTO mark strengthens the likelihood of confusion as Complainant's intention to merge with the company Monsanto has been reported in the press.
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not licensed or permitted Respondent to use the BAYER mark. There is no conceivable legitimate interest in the use of the disputed domain name by Respondent.
(iii) The disputed domain name was registered and being used by Respondent in bad faith.
Firstly, it is highly likely that Respondent registered the disputed domain name being aware of Complainant's rights in its well-known BAYER mark at the time of registration. In addition Respondent registered the disputed domain name only one day after international media reported that Complainant is exploring a potential bid for the American competitor Monsanto Co. Furthermore, Respondent has registered not only the disputed domain name but also several other domain names composed of third-party trademarks. Secondly, the disputed domain name is not actively used. The mere passive holding of a domain name does not prevent a finding of bad faith under the Policy. Thirdly, Respondent has engaged in a pattern of registering domain names preventing Complainant from reflecting its trademarks in a corresponding domain name which is an indication of Respondent's bad faith. Finally, Respondent's use of the disputed domain name is qualified to disrupt Complainant's business and it can reduce the numbers of visitors to Complainant's website, which constitutes bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Language of Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise. In this present case the Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Korean. However, the Complaint was filed in English. Complainant requests that the language of proceeding be English for the following reasons: (i) the disputed domain name was registered in ASCII characters and Respondent registered numerous domain names comprised of common English words as well as well-known third-party trademarks such as <africainternetgroup.xyz>, <alibabasportsgroup.com>, and <toyotaresearchinstitute.com>. Therefore, Complainant assumes that Respondent apparently can understand English; (ii) on the other hand, Complainant is not able to communicate in Korean and, if Complainant were required to submit all documents in Korean, the administrative proceeding will be unduly delayed and Complainant would have to incur substantial expenses for translation; and (iii) under such circumstances, the Center has preliminary accepted the Complaint filed in a language different from the language of the registration agreement. On the other hand Respondent contends that he does not understand English and requests to conduct the administrative proceeding in Korean.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language of proceedings by giving full consideration, inter alia, to the parties' level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors. The Panel here notes that while Respondent has requested to proceed in Korean, it has failed to file any other submissions despite being notified of the proceeding in both English and Korean.
In consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case (see Tumblr, Inc. v. Kenny Kim, WIPO Case No. D2013-0440).
B. Identical or Confusingly Similar
The disputed domain name at issue comprises two elements "bayer" and "monsanto". The disputed domain name incorporates Complainant's BAYER trademark in its entirety with another trademark MONSANTO which is owned by a company Complainant has agreed to merge with. Numerous UDRP panels have held that where a domain name substantially incorporates a complainant's trademark, this is sufficient to find the domain name "confusingly similar" within the meaning of the Policy (see Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D20001678). The generic Top-Level Domain ("gTLD") suffix ".com", or ".net" can be generally disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653).
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by Complainant.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on Complainant. However, once Complainant presents a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show its rights or legitimate interests. If Respondent fails to come forth asserting any rights or legitimate interests, Complainant is considered to have satisfied its burden (see, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Firstly, Complainant has never licensed or authorized Respondent to use Complainant's trademark or to register any domain names incorporating the BAYER mark. Respondent has used Complainant's widely known registered trademark without permission from Complainant.
Secondly, Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In this present case, Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain names to rebut Complainant's prima facie case.
Thirdly, there is no evidence presented to the Panel that Respondent has used, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name. In addition, there is no evidence to suggest that Respondent has been commonly known by the disputed domain name.
Accordingly, this Panel concludes that Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name "has been registered and is being used in bad faith". As this requirement is conjunctive, Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since Complainant's trademark BAYER is widely known and the disputed domain name entirely incorporates Complainant's trademark coupled with the mark of a company in which Complainant has agreed to merge with, in this Panel's view it is highly likely that Respondent was aware of Complainant's trademark at the time of the registration of the disputed domain name.
Secondly, having considered Respondent's registration of numerous domain names incorporating third-party trademarks, the Panel finds that these registrations constitute a typical pattern of cybersquatting in bad faith.
Thirdly, the disputed domain name has not been actively used. Considering the above circumstances, the Panel finds that the mere passive holding of the disputed domain name in this particular case does not prevent a finding of bad faith.
Finally, this Panel considers that Respondent in all likelihood registered the disputed domain name with the expectation of taking advantage of the reputation of Complainant's trademark or selling it to Complainant or others. This is supported by the fact that Respondent registered the disputed domain name only one day after Complainant's intention to merge with Monsanto pharmaceutical company has been reported in the press.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been established with respect to the disputed domain name in accordance with paragraph 4(b) of the Policy.
Accordingly, the Panel concludes that Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
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-monsanto.com> be transferred to Complainant.
Date: May 19, 2017