WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Armand Grinda
Case No. D2018-0378
1. The Parties
The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal., Germany.
The Respondent is Armand Grinda of Vitry-sur-Seine, France, represented by Mr. Olexander Protoven.
2. The Domain Name and Registrar
The disputed domain name <bayermaterialscience.com> is registered with DropCatch.com 1088 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2018. On February 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2018, 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 March 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2018. The Response was filed with the Center on March 17 and 19, 2018. On March 26, 2018, the Complainant submitted a supplemental filing in response to the Response. On March 28, 2018, the Respondent submitted a supplemental filing in response to the Complainant’s afore-mentioned filing.
The Center appointed J. Nelson Landry as the sole panelist in this matter on April 14, 2018. 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 global enterprise with various competencies in the fields including health care, nutrition and plant protection. While it was first incorporated in 1863 as Friedrich Bayer & Co., it transferred its operations to another corporation comprising the name Friedrich Bayer and it was only in 1888 that the Complainant began manufacturing and marketing pharmaceutical products as well as products for nutrition and plant protection and has sold its products under the Bayer trademarks thereafter until today.
The Complainant is represented by more than 250 affiliates and employs more than 100,000 persons worldwide. It used to have a subgroup named Bayer Material Science which became legally and economically independent and operates under Covestro since September 1, 2015.
The Complainant owns about 700 trademark registrations and pending applications of the word “BAYER” alone, in several jurisdictions, including European Trade Mark registration No 01128625 of August 19, 2013, including France where the Respondent is located, as well as International Trademark registration No 182970 of February 25, 1955, including several classes of products in the science and technical fields. Furthermore, the Complainant and its subsidiaries have a strong presence on the Internet through their ownership of hundreds of domain name registrations containing the BAYER trademark (the “BAYER Trademarks”), such as <bayer.com> and <bayer.fr>.
Pursuant to its exclusive and extensive use of its BAYER Trademarks by the Complainant and its subsidiaries, the said BAYER Trademarks have acquired a significant goodwill and became widely known over the world. A number of persons have tried to benefit from this knowledge of the BAYER Trademarks, in registering various domain names comprising the trademark BAYER. The Complainant has engaged as early as in 2002 in 23 complaints in UDRP proceedings at WIPO, wherein the Bayer Trademarks were considered, declared well-known and said decision resulted in ordering the transfer or cancellation of the disputed domain names.
The disputed domain name was registered by the Respondent on December 14, 2017 while not mentioning the name of the Registrant Organization. However as mentioned later herein other individuals are involved in respect of its management as acknowledged by the Respondent. The said disputed domain name is not used in connection with an active website except for a notice placed by the Respondent’s registrar on a placeholder website announcing “the bayer material science.com is coming”.
5. Parties’ Contentions
The Complainant represents that the disputed domain name causes confusion with its well-known Bayer Trademarks, in that the disputed domain name fully incorporates said Bayer Trademarks, that the addition of a Top Level Domain (“TLD”) such as “.com” does not diminish the likelihood of confusion in that it is generally not an element of distinctiveness. The Complainant further represents that the addition of the words “material” and “science” does not eliminate the similarity between the Complainant’s trademarks and the disputed domain name, since these terms are descriptive as held in Bayer AG v. Private Registration / Mark Nowak, WIPO Case No. D2017-1706. Thus the Internet user will clearly recognize the well-known Bayer Trademarks.
In respect of rights and legitimate interests, the Complainant further represents that since the burden of proof of lack of rights and legitimate interests in a domain name is quite onerous in having to prove a negative circumstance is more difficult than establishing a positive one, it is sufficient to show a prima facie evidence in order to shift the burden of production on the Respondent. The Complainant submits that the Bayer Trademarks are well-known and obviously connected to the Complainant and its products. The term “Bayer” is not a word that a market participant or other domain registrant would legitimately choose unless seeking to create an impression of an association with the Complainant known internationally.
The Complainant states that it has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating the Bayer Trademarks. The Complainant represents that these circumstances themselves are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. See GGG Filmproduction und Vertrie e.K. v. E4 Group and Frank Jensen, WIPO Case No. D2006-1177 and F. Hoffmann-LaRoche AG v. Fred, WIPO Case No. D2006-0246, “Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s famous trademark TAMIFLU. The Respondent has not denied these assertions.”
The Complainant further states that there is no evidence of the Respondent’s use of, or demonstrable preparation to use the disputed domain name or a name corresponding to the later in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, nor any evidence which suggests that the Respondent is presently making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the name “Bayer Material Science”.
According to these circumstances, the Complainant submits that there is no doubt that the Respondent has no rights or legitimate interests in respect of the disputed domain name, thus having satisfied the requirement of paragraph 4(a)(ii) of the Policy.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and considering the evidence showing its high profile worldwide, further submits that it is inconceivable that the Respondent was unaware of the Complainant and its rights in its highly distinctive and well-known BAYER Trademarks. The Complainant further represents that the said assumption is supported by the fact that the disputed domain name fully includes the highly distinctive name of one of the Complainant’s former subgroup namely “BAYER Material Science”. The Complainant contends that the fact that the disputed domain name is not actively used but merely passively held does not obstruct a finding of bad faith use under the Policy since as it submits such passive holding of a domain name is equal to active use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Pic v. Sonoma International LDC, WIPO Case No. D2002-0131.
The Complainant represents that passive holding and active use is justifiable upon considering how the BAYER Trademarks of the Complainant are well-known, the Respondent has not adduced any evidence of actual or contemplated good faith use (except for the fictitious program about Bayer living style in Bavaria). The Complainant reiterates the holding of the Telstra case does not turn on use of false contact information but the passive holding of a well-established trademark is sufficient to establish bad faith registration and use. See Worlwide Pants Inc. v. VisionLink Communications Group, Inc., WIPO Case No. D2008-1796.
The Complainant further represents that the fact that the disputed domain name includes a trademark that is so obviously connected with the Complainant and its products supports a finding of bad faith use of the disputed domain name and the absence of any connection of the Respondent with the Complainant’s products suggests opportunistic bad faith. The Complainant adds that the selection of the disputed domain name clearly speaks of a deliberate intent to create an impression of an association with the Complainant and indicates opportunistic bad faith registration and use of the disputed domain name. See RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran, WIPO Case No. D2013-0610.
The Complainant concluded its representations of bad faith use of the disputed domain name in submitting that by the incorporation of the Complainant’s well-known BAYER Trademarks in the disputed domain name, “Respondent is, moreover, clearly competing with Complainant for the attention of Internet users, which it hopes to divert to its site.” See Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanne, WIPO Case No. D2000-0869.
The Complainant also submitted an unsolicited Supplemental filing, which this Panel declines to admit for the reasons discussed below in Part 6.A.
The Respondent’s evidence is limited to three emails without annexes. A first elaborate email from “Alexander Capo”, was sent to the Center on March 17, 2018 from an email address different from that in the WhoIs search for the disputed domain name. It is stated that the “domain was bought on the open market and we paid a substantial sum of money for it” and further mentioned “having incurred expenses […] while preparing the content for this site.” “We do not plan to use it in any way to harm Bayer AG. Moreover, we are ready to sell you the domain name, for a reasonable price but significantly exceeding the price paid by us while buying on the market.” It further added, “[w]e are working on a private, noncommercial site and it going to be launched later. The site will be a blog with general reasoning on the behalf of Bayer – a fictional character who lives in Bavaria describing life there.”
The sender puts forward information from Wikipedia that the term “Bayer” has many meanings, such as:
Bayer, (crater) for lunar crater; Bayer, Iran, a village Kermanshah province, Iran; Bayer designation for star names; Bayer’s reagent, a mild oxidation reagent used in organic chemistry; Bayer Leverkusen, a German sports and football club; Bayer Esporte Clube, a Brazilian football Club; Bayer filter, a color filter mosaic also known as Bayermask used in digital in camera image sensors.
The Respondent also mentioned thousands of Internet sites containing the word “bayer”, such as <keybayer.com>, <bayeres.fr>, <ebayer.nl>, <casabayer.it>, <bayerone.ca> and <bayers.biz>.
This first email was signed: “Yours faithfully Olexander Protoven”.
The Center, on March 19, 2018, acknowledged receipt of the email, noted that the Complaint was filed against Armand Grinda and requested the sender to identify himself and clarify the relationship with the Respondent and “provide information sufficient to establish the legitimacy of her/his request/submission.”
On March 19, 2018, the Center received a second email from “Jean-Louis Brasseur” from the email address of the Respondent as reflected in the WhoIs search record. This email reproduced word for word the content of the one received earlier from Alexander Cappo and ended with “yours faithfully Armand Grinda”.
Later, on March 19, 2018, a third email was received by the Center again from “Jean-Louis Brasseur” and, same first email address, simply stating “Mr. Olexander Protoven is my partner. He bought the domain at the auction and owns the account at namebright.com at which domain is hosted. All further communications and disputes will be held by him personally.” The email was signed “Armand Grinda”.
The Respondent also submitted an unsolicited supplemental filing, which this Panel declines to admit for the reasons discussed below in Part 6.A.
6. Discussion and Findings
A. Admissibility of the Supplemental Filings from the Parties
The Panel has considered the nature of the facts and comments made by the Complainant in the Supplemental filings of March 27, 2018, and did not see any new representations or facts raised in respect of the Response, many points were already raised in the Complaint, as the Panel notes. The Panel does not see the advisability of providing the Respondent with an opportunity to comments on the points reiterated by the Complainant in its Supplemental Filings, and further extending the procedure and delays in presenting evidence, in particular if the evidence in the Reply is not new in the appreciation of the Panel. The Panel decides that there will be no further consideration given to the Supplemental Filings by the Parties.
B. Identical or Confusingly Similar
The Complainant has clearly established its extensive manufacturing, offer and sales of scientific products in the fields of health care, nutrition, and plant protection throughout over 100 countries in the world under its well-known BAYER Trademarks since 1888. The earliest Bayer trademark was registered at the international level including the country of France as early as 1955.
The evolution and size of its manufacturing facilities including pharmaceutical products since 1988 was carried through its 250 affiliates and representatives with more than 100,000 employees worldwide. The BAYER Trademarks have been involved in 23 UDRP proceedings and decisions wherein the BAYER Trademarks have been considered highly distinctive and well-known.
The disputed domain name includes the Complainant’s well-known BAYER Trademarks in its entirety with the addition of the terms “material” and “science”, which terms are comprised with the BAYER Trademark in the name BAYER Material Science subgroup of the Complainant.
The Panel considers that the addition of the terms “material” and “science” to the BAYER Trademarks in the disputed domain name does not in any way diminish the likelihood of confusion nor prevent a finding of confusing similarity. Finally it is acknowledged in previous UDRP decisions cited that the addition of TLD such as “.com” are generally disregarded in assessing confusion similarity as in the present case.
The Panel finds that the disputed domain name is confusingly similar to the well-known BAYER Trademarks of the Complainant.
The first criterion has been met.
C. Rights or Legitimate Interests
The Complainant has discharged its prima facie burden in stating that although it has considerable employees, agencies and distribution partners around the world in clearly stating that the Respondent is not having nor benefiting of any kind of relationship, license or permission from the Complainant to use its BAYER Trademarks in any manner nor to register the disputed domain name.
The Respondent, in its email dated March 17, 2018, stated in respect of the term “BAYER”, “This word cannot be regarded solely as a trademark or otherwise.” In addition, the Respondent stated that its site will not be dedicated in any way to business activity of Bayer trademark, or engaged in any commercial activity, stating “We are working on a private, noncommercial site and it is going to be launched later. The site will be a blog with general reasoning on behalf of Bayer – a fictional character who lives in Bavaria describing life there.” This broad and general statement or objective is not, in the view of this Panel, evidence of demonstrable preparations to use 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. It is simply the statement of the goal of a project, including a blog with general reasoning on behalf of a fictional character. The Panel specifically notes that the Respondent, working as a team, see “we”, and “us” in the email, does not offer any explanation as how the terms “material” and “science” are relevant to the Respondent project with Bayer, a fictional character, living in Bavaria when the said terms are so related to the Complainant field of activities.
This blog, if the Respondent’s unsupported claim is to be believed, in the Panel’s view will likely be used to generate revenues needed by the Respondent’s team when one considers that the Respondent in its offer to assign or sell the disputed domain name to the Complainant requests a payment in compensation for its investments in the preparation of its website associated with the disputed domain name, thus already contemplating a profit. Under the present circumstances the Panel sees in this team project, one involving commercial activities which income or revenue the Respondent needs which will be essential to maintain and support this project despite the Respondent statement of it eventually being a “noncommercial website” without any explanation nor details how this may be achieved by the said team. The Panel does not accept that there will not be any commercial activities associated with this project. There is no explanation nor justification for the offer of the Respondent to reassign the disputed domain name for a substantial sum of money exceeding the price paid as asked in its communication if it is not to be a commercial activity.
The Complainant states that there is no evidence that the Respondent is commonly known by the disputed domain name or the name BAYER Material Science.
Considering the request of the Respondent for reassigning the disputed domain name to the Complainant at “a price significantly exceeding the price paid”, superior to the registration cost, in light of other circumstances mentioned above, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second criterion has been met.
D. Registered and Used in Bad Faith
The Panel is convinced that the Respondent and its team associates, Alexander Cappo and Olexander Protoven, were aware of the worldwide known Bayer Trademarks of the Complainant. It is well established and acknowledged in previous UDRP decisions, that pursuant to substantial and extensive use and promotion, a family name may become, as in the present case, a highly distinctive trademark. The Panel further notes that the Respondent has not stated not being aware of the Complainant, its Bayer Trademarks and activities upon registering or acquiring the disputed domain name.
The Panel considers that the unexplained choice of the terms “material” and “science” is a deliberate and calculated choice that has no relation or connotation with the vague project disclosed without any detail except for the term “bayer” resulting from the alleged work of the Respondent and its associates nor any justification of the use of the terms “material” and “science”.
The Panel considers that the passive holding of the disputed domain name does not set aside absence of use of the disputed domain name by the Respondent. The Panel is not convinced of the statement of the Respondent not engaging in “commercial activity” which statement appears in contradiction with the “significant” purchase price and further sums already invested by the Respondent team in developing the website to be associated with the disputed domain name.
The Panel accepts the Complainant’s representations that the choice of the disputed domain name clearly constitutes a deliberate intent to create an impression of association with the Complainant and further indicates opportunistic bad faith registration and use of the disputed domain name by the Respondent. See RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran, supra.
The Panel concludes that the disputed domain name has been registered and is 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, <bayermaterialscience.com> be transferred to the Complainant.
J. Nelson Landry
Date: April 25, 2018