WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. WhoisGuard Protected, WhoisGuard, Inc. / Carlos Martinez
Case No. D2018-2582
1. The Parties
The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., of Panama City, Panama / Carlos Martinez of Santa Barbara, California, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <bayerequalsmonsanto.com> and <monsantoakabayer.com> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 19, 2018.
The Center verified that the Complaint, together with the amended 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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2018.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on December 28, 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 in the fields of health care, nutrition, and plant protection. The company name “Bayer” dates back to 1863, and the Complainant has been manufacturing and marketing pharmaceutical products since 1888 under the BAYER trademark.
The Complainant owns hundreds of trademark registrations and pending applications of the word mark BAYER alone, including United States Reg. No. 1482868, registered on April 5, 1988; United States Reg. No. 1484862, registered on April 19, 1988; United States Reg. No. 2213149, registered on December 22,1998; United States Reg. No. 3222255, registered on March 27, 2007; United States Reg. No. 4651390, registered on December 9, 2014; United States Reg. No. 4860203, registered on November 24, 2015 (the “BAYER Marks”).
On May 12, 2016, rumors circulated in the international media in connection with the Complainant’s potential bid for its competitor “Monsanto Co”. The Complainant and Monsanto agreed on their merger in September 2016.
The disputed domain name <bayerequalsmonsanto.com> was registered on June 8, 2018 and the disputed domain name <monsantoakabayer.com> was registered on August 15, 2018. The disputed domain names are currently not used in connection with an active website. In the past they directed Internet users to a website featuring pay-per-click (“PPC”) links to third-party websites.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain names are made up of the registered trademark BAYER and the name Monsanto to which the terms “aka” and “equals” and the generic Top-Level Domain (“gTLD”) “.com” has been added. Due to the merger of the Complainant with Monsanto, the use of “Monsanto” strengthens the likelihood of confusion by referring to the Complainant and its merger with Monsanto.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain names 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 names or a name 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.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain names the Respondent knew of the Complainant’s rights in the trademark BAYER. The Complainant contends that the Respondent registered and has used the disputed domain names in an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites or the product or service offered on the websites. The Complainant maintains that the Respondent also sought to profit from and exploit the popularity of the Complainant’s mark to divert Internet traffic to PPC websites.
Further, the Complainant submits that the Respondent’s registration of the disputed domain names prevents the Complainant from reflecting its trademarks in a corresponding domain name and is intended to disrupt the Complainant’s business and is an abusive registration.
Finally, the Complainant submits that the fact that the Respondent used a privacy registration service proves bad faith towards the registration and use of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain names are made up of the registered trademark BAYER, the trade name “Monsanto”, the gTLD “.com” and the terms “aka” and “equals”. The disputed domain names are 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 names, the addition of Monsanto affirms the association between the disputed domain names and the Complainant’s mark; see Bayer AG v. Lizhe, WIPO Case No. D2017-0126 (<bayermonsanto.net>); Bayer AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Syed Hussain, IBN7 Media Group, WIPO Case No. D2016-2354 (<bayermonsanto.com>); Bayer AG v. Lim Sang Woon, WIPO Case No. D2017-0283 (<bayer-monsanto.com>); Bayer AG v. Ruud van der Linden, WIPO Case No. D2017-0328 (<bayer-monsanto.org>); Bayer AG v. Wuxi Yilian LLC, WIPO Case No. D2017-0269 (<bayer-monsanto.net>); Bayer AG v. WhoisGuard Protected, WhoisGuard, Inc. / Carlos Martinez, WIPO Case No. D2018-1520 (<monsantoequalsbayer.com>).
The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain names (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain names would ordinarily be found, especially when the disputed domain names resolve to PPC websites with links referring to the Complainant’s products and to third-party websites. (Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138; Andrey Ternovskiy dba Chatroulette v. Wang Lian Feng, WIPO Case No. D2018-1445).
The Respondent is not known by the Complainant’s mark nor did the Complainant license or otherwise permit the Respondent to use its trademark (Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; Andrey Ternovskiy dba Chatroulette v. Wang Lian Feng, WIPO Case No. D2018-1445). The Respondent is also not commonly known by the disputed domain names or the names :MONSANTOAKABAYER” or “BAYEREQUALSMONSANTO”.
Further, the disputed domain names are currently not used in connection with active websites. In the past they merely resolved to websites featuring PPC links to third-party websites. This also fails to provide any indication of a connection between the Respondent and the disputed domain names.
The Respondent failed to provide any response which would demonstrate any attempt to make legitimate use of the disputed domain names, and the Respondent has not asserted any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Respondent was undoubtedly aware of the Complainant and its BAYER mark at the time of registration of the disputed domain names and that such registration was in bad faith. The Complainant and its BAYER mark are known widely and throughout the world. The BAYER mark has been in use for more than a century. Additionally, the Complainant owns trademark registrations for its BAYER marks in many jurisdictions. A simple Internet search for “bayer” would have yielded many obvious references to the Complainant. Moreover, the incorporation of the MONSANTO mark together with the generic terms “aka” and “equals” undoubtedly relates to the recent merger of the Complainant with the Monsanto Company. Therefore, the Respondent must have been aware of the merger and consequently of the Complainant itself. The Respondent’s intentional registration of domain names incorporating the Complainant’s well-known mark, being fully aware of the Complainant’s rights in the mark, without any rights or legitimate interests in doing so, is registration in bad faith. See, e.g., Bayer AG v. Wuxi Yilian LLC, WIPO Case No. D2017-0269; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.
The disputed domain names currently do not resolve to an active webpage. In the past the disputed domain names merely resolved to websites featuring PPC links to third-party websites. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant’s
well-known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The fact that there is an absence of evidence of any actual or contemplated good faith use is a further circumstance that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In the present case, the Panel is of the opinion that the Complainant’s trademark is distinctive and widely used, which makes it difficult to conceive any plausible legitimate future use of the disputed domain names by the Respondent. The Panel considers that the Respondent has likely registered the disputed domain names for the purpose of earning PPC revenues by attracting Internet users looking for information on the Complainants recent acquisition of Monsanto Company.
Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity, which further supports an inference of bad faith in light of the circumstances in which the service or the disputed domain names are being used (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).
All this leads the Panel to the conclusion that the Respondent has registered and has used the disputed domain names 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 names <bayerequalsmonsanto.com> and <monsantoakabayer.com> be transferred to the Complainant.
Date: January 16, 2019