WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Gulam Mustafa

Case No. D2017-0820

1. The Parties

The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.

The Respondent is Gulam Mustafa of Amroha, Uttar Pradesh, India.

2. The Domain Names and Registrar

The disputed domain names <bayermon.com> and <bayersanto.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 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.

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, and the proceedings commenced on May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2017.

The Center appointed Anthony R. Connerty as the sole panelist in this matter on June 2, 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 began manufacturing and marketing pharmaceutical products in 1888, and has sold such products under the BAYER trademark ever since that time. It is a global enterprise with core competencies in the fields of health care, nutrition and plant protection. 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.”.

The Complainant’s stock is included in nearly all the major share indices, traded on all German stock exchanges and included in the DAX 30, a Blue Chip stock market index consisting of the 30 major German companies trading on the Frankfurt Stock Exchange.

The Complainant is represented by over 250 affiliates and has more than 100,000 employees worldwide. The Complainant, itself or through the subgroups like HealthCare and CropScience, does business on all five continents, manufacturing and selling numerous of products, includinghuman pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals. The Complainant is regularly listed among the world’s leading companies in various categories.

The Complainant is the owner of numerous registrations in respect of the word mark BAYER, including registrations in the United States of America and India. The Complainant’s registrations cover an extensive range of goods and services.

The Complainant says that it has “a strong presence on the Internet”: the Complainant and its subsidiaries own hundreds of domain name registrations containing the BAYER Mark, including <bayer.com>, <bayer.in>, and <bayer.us>.

The Respondent registered the disputed domain names on September 18, 2016 and September 17, 2016, respectively.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are that:

a) The disputed domain names are confusingly similar to its marks;

b) The Respondent has no rights or legitimate interests in the disputed domain names;

c) The Respondent registered and is using the disputed domain names in bad faith.

The Complainant seeks the transfer of the disputed domain names to itself.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant claims that due to its global online use of its BAYER Mark, “such mark is obviously and solely connected with the Complainant”, and those Marks “have acquired a significant goodwill and are widely known.” The Complainant refers to previous decisions supporting that view, such as Bayer Aktiengesellschaft v. K Dangos, WIPO Case No. D2002-0138; Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205; and Bayer Aktiengesellschaft v. Amaltea Impex SRL, WIPO Case No. DRO2005-0006.

The Complainant says that the disputed domain names fully incorporate “the well-known BAYER Marks and are confusingly similar to such marks”. Various UDRP panels have found that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy: for example, The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.

Additionally, in Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, the panel stated that “It is already well established that the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”

Finally, as to the fact that the disputed domain names include the additional words “mon” and “santo”, the Complainant contends that these are obviously meant to be abbreviations of “Monsanto”. That factor does not eliminate the similarity between the Complainant’s trademark and the disputed domain names. It is well established that confusing similarity is given where a trademark is recognizable as such within the domain name.

The Panel finds the disputed domain names to be confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy

B. Rights or Legitimate Interests

The Complainant contends:

- that whilst the rights or legitimate interests of the respondent lies on the complainant, proving a negative is always more difficult than establishing a positive one. Accordingly, it is sufficient that the complainant shows a prima facie evidence “in order to shift the burden of production on the respondent”;

- the BAYER Marks are well-known and obviously connected with the Complainant and its products. “Bayer” 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;

- there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. In fact, the disputed domain name <bayermon.com> is used in connection with a website offering the disputed domain name for sale and the disputed domain name <bayersanto.com> is not used at all;

- there is no evidence to suggest that the Respondent “is making a legitimate noncommercial or fair use of the disputed domain names, or is commonly known by the disputed domain names or the names BAYERMON and/or BAYERSANTO.”

In relation to the paragraph 4(a)(ii) requirement as to rights and legitimate interest, paragraph 4(c) of the Policy states that a respondent may establish those rights or legitimate interests by any of three circumstances (which circumstances are without limitation). The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and so the burden of production has been shifted to the Respondent. It was open to the Respondent to serve a Response to challenge the Complainants’ submission. It has not done so.

The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In relation to bad faith registration and use, the Complainant refers to aspects of the Complainant’s merger with Monsanto Co. and to a website used in connection with the disputed domain name <bayermon.com>.

The Complainant points out that on May 12, 2016, international media first reported the fact that the Complainant was exploring a potential bid for the United States competitor Monsanto Co.

The Complainant says that the disputed domain name <bayermon.com> has been used in connection with a website, which stated the following:

“Welcome to Bayer and Monsanto Advancing Together, where you can ask questions and receive answers from other members of the community. This Domain is available for Big Sale….”

The slogan “Advancing Together” is the Complainant’s official motto for the merger with Monsanto Co.

On September 14, 2016 the Bayer-Monsanto merger was agreed: Annex 11 to the Complaint records that “Bayer and Monsanto have announced that they have signed a definitive agreement under which Bayer will acquire Monsanto fir USD 128 per share…”

A matter of days later the Respondent registered the disputed domain names on September 17, 2016 and September 18, 2016. Accordingly, the Panel finds that the disputed domain names were registered in bad faith.

The Complainant states that the disputed domain name <bayermon.com> which was used in connection with the website as indicated above is no longer available at that disputed domain name. However, the Complainant submits that the fact that the disputed domain name <bayersanto.com> is not actively used but merely passively held does not obstruct a finding of bad faith use under the Policy since, as in the present case, such passive holding of the disputed domain name does not prevent a finding of bad faith use: “There is consensus view among Panelists that the element of use in bad faith is satisfied not only if a domain name is actively being used on the Internet, but also if in the light of the overall circumstances of the domain registration the passive holding of a domain name equates with an active use of a domain name.” The Complainant relies upon the decision of the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant also notes that the Respondent is the registered owner of several other domain names containing third parties’ well-known trademarks, such as: <amazonla.com>, <amazonle.com>, <amazonta.com>, and <amazonto.com>; <applecombo.com> and <appleipo.com>; and <microsoftbrand.com> and <microsoftz.com>.

Further, the Complainant relies on the fact that the Respondent offered to sell the disputed domain name <bayermon.com> on the website available at that disputed domain name: “Such offer to sell a domain name on a public website has been found to indicate that a domain name has primarily been registered with the intention of selling it to the complainant.”Paragraph 4(b)(i) of the Policy states that, for the purposes of Paragraph 4(a)(iii), one of the circumstances that shall be evidence of the registration and use of a domain name in bad faith is that “…that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”

Next, given thatthe elements expressly mentioned in paragraph 4(b) of the Policy are non-exhaustive, the Complainant submits that “practice has regarded a number of other indications and aspects as establishing bad faith”, and relies for example on the following matters:

- opportunistic bad faith: the fact that the Respondent registered the disputed domain names which include a trademark that is obviously connected with the Complainant and its product “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”;

- abusive threat: the registration of the disputed domain names by the Respondent also constitutes an abusive threat hanging over the head of the Complainant: Novo Nordisk A/S v. Service Customer, WIPO Case No. D2009-0160(“in the view of the Panel, the Domain Name constitutes a continuing and unjustifiable commercial threat hanging over the head of the Complainant while it remains in the hands of the Respondent.”).

The Panel is satisfied that the Complainants have proved both the bad faith registration and the bad faith use requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <bayermon.com> and <bayersanto.com> be transferred to the Complainant.

Anthony R. Connerty
Sole Panelist
Date: June 8, 2017