WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Wu Zi Jun
Case No. D2018-2676
1. The Parties
The Complainant is Bayer AG, Leverkusen, Germany, represented by BPM Legal., Germany.
The Respondent is Wu Zi Jun of Guangzhou, China.
2. The Domain Name and Registrar
The disputed domain name <ger-bayer.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018. On November 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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.
On December 14, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on December 17, 2018. 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 English and Chinese, of the Complaint, and the proceedings commenced on December 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2019.
The Center appointed Joseph Simone as the sole panelist in this matter on January 24, 2019. 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, Bayer AG, is a global enterprise with core competencies in the fields of healthcare, nutrition and plant protection. It is headquartered in Germany and is 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’s predecessor company began manufacturing and marketing pharmaceutical products in 1888, and has sold such products under the BAYER trademark ever since.
The Complainant is represented by over 250 affiliates and has more than 100,000 employees worldwide. The Complainant, itself or through subgroups, manufactures and sells products globally, including human pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals. In China, where the Respondent is located, the Complainant conducts business through its local subsidiary BAYER Corporation under the name “Bayer (China) Limited” and operates a website at “www.bayer.com.cn”.
The Complainant is the owner of about 700 registrations and pending applications of the word mark “BAYER”, including numerous registrations in China, the earliest of which are listed below:
- Chinese trademark No. 76013, designating products in international class 1, registered on August 2, 1977;
- Chinese trademark No. 76014, designating products in international class 2, registered on August 2, 1977;
- Chinese trademark No.76022, designating products in international class 3, registered on August 2, 1977;
- Chinese trademark No. 76011, designating products in international class 10, registered on August 2, 1977.
The Complainant and its subsidiaries also own hundreds of domain name registrations containing the BAYER mark, including <bayer.com> and <bayer.com.cn>.
The disputed domain name, <ger-bayer.com>, was registered on October 12, 2017. It was inactive at the time of the Complaint submission and remains so as of the date of this decision.
5. Parties’ Contentions
(i) Identical or confusingly similar
The Complainant submits that the disputed domain name is identical or confusingly similar to the marks in which it has rights (paragraph 4(a)(i) of the Policy). The Complainant submits evidence of 25 trademark registrations for the mark BAYER in China, dating from as early as 1977. It also submits an overview of the Complainant’s rankings listed on the website at “www.rankingthebrands.com” in 2017, demonstrating that the Complainant is regularly listed as a world-leading company in different categories. They include “100-top Most Powerful Brands” and “Top 50 Global Pharma Companies”. The Complainant submits that as a result of exclusive and extensive use, its BAYER marks have acquired significant goodwill and are widely known.
The Complainant refers to the well established principle that when assessing confusing similarity, the Top-Level Domain name is generally not an element of distinctiveness that is taken into consideration and that confusing similarity is found where a trademark is recognizable within the disputed domain name. The Complainant submits that the disputed domain name clearly contains the BAYER trademark and the term “ger”, which is the IOC country code for Germany. The term “ger” is merely descriptive and does not eliminate the similarity between the Complainant’s trademark and the disputed domain name.
(ii) Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Since satisfying the burden of proving a lack of Respondent rights or legitimate interests is quite onerous, the Complainant submits it is sufficient to show prima facie evidence, after which the burden of production shifts to the Respondent. The Complainant states the BAYER marks are well-known and obviously connected with the Complainant and its products. 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 mark. This is sufficient to constitute a prima facie case. Furthermore, the Complainant submits that there is no evidence which suggests the Respondent could satisfy any of the scenarios demonstrating legitimate rights or interests set out in paragraph 4(c) of the Policy.
(iii) Registered and used in bad faith
The Complainant submits that the disputed domain name was registered and is being used in bad faith. First, the Complainant states that based on the Complainant’s high profile throughout the world, it is inconceivable that the Respondent registered the disputed domain name while unaware of the Complainant and its rights in its highly distinctive and well-known BAYER marks. Second, the fact that the disputed domain name is not actively used but merely passively held does not preclude a finding of bad faith use under the Policy. Taking into account the overall circumstances of the case, the Complainant submits that such passive holding of the disputed domain name is equal to active use. Those circumstances are that the Complainant’s BAYER marks are well known, the Respondent has not provided any evidence of good faith use, the combination of the words “ger” and “bayer” clearly refer to the Complainant and there does not appear to be any reason for inferring good faith use. The Complainant also submits that the Respondent’s registration prevents the Complainant from reflecting its trademarks in a corresponding domain name. The fact that the disputed domain name includes a trademark that is obviously connected with the Complainant and its products suggests opportunistic bad faith. The disputed domain name is capable of disrupting the Complainant’s business by reducing the number of visitors to the Complainant’s website and it constitutes an abusive threat hanging over the head of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
In accordance with paragraph 11 of the Rules:
“[…] 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.”
In this case, the language of the Registration Agreement is in Chinese.
However, the Complainant filed the Complaint in English and requested that English be the language of proceedings on the following grounds. The disputed domain name was registered in ASCII characters and contains a common abbreviation of the English name of the Complainant’s home country Germany. The Complainant therefore assumes that the Respondent apparently can understand English. On the other hand, the Complainant is not able to communicate in Chinese and therefore, if the Complainant were required to submit all documents in Chinese, the arbitration proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation.
In the present case, the Panel agrees with the Complainant. The Respondent was notified in both English and Chinese regarding the nature of the proceeding and issue of language, and failed to express a language preference or submit a Response. Therefore, the Panel finds no prejudice would be caused to the Respondent by conducting the proceeding in English. On the other hand, requiring the Complainant to translate the Complaint would cause undue burden and delay. Noting the aim of conducting proceedings with due expedition and in a cost-efficient manner, the Panel will proceed in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant submits it has an extensive portfolio of trademark registrations for the mark BAYER and submits evidence of certain registrations in the United States. The Panel has verified those registrations in China where registration certificates were not provided. Google and Baidu searches for BAYER return results for the Complainant which demonstrate it has a significant reputation as a global pharmaceutical company.
The test for whether a domain name is identical or confusingly similar to a trademark is typically straightforward. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
In this case, the disputed domain name <ger-bayer.com> incorporates the entire of the trademark BAYER and the term “ger”, which as the Complainant proffers, is a common geographical shorthand referring to Germany, where the Complainant is headquartered. The addition of such a descriptive term does not affect the finding of confusing similarity under the first element.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name. The Panel accepts that the Complainant has not authorized the Respondent in any way to use the trademark. There is no evidence before the Panel suggesting the Respondent is commonly known by the disputed domain name. The lack of use indicates the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain name, as contemplated by paragraph 4(c) of the Policy.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in relation to the disputed domain name, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Respondent chose not to submit a response and therefore has failed to present any evidence to the contrary.
The Panel therefore agrees that the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
Under the third element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). A strong inference for bad faith arises where the Respondent knew or should have known of the Complainant’s trademark rights, particularly where the trademark is “so obviously connected with such a well-known name and products” (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
BAYER is a well-known pharmaceutical brand as evidenced by online search results and brand rankings. Online search results in fact give the impression that the mark is exclusively used to refer to the Complainant and its products. Furthermore, numerous panels in prior UDRP disputes have found that the Complainant has acquired significant goodwill in the mark BAYER and that BAYER is a well-known trademark. Therefore, it is highly unlikely that the Respondent was unaware of the Complainant and its rights when it registered the disputed domain name. The addition of the term “ger” to the disputed domain name, a common denomination for the country Germany, where the Complainant is located, leaves the Panel in no doubt that the Respondent had actual knowledge of the Complainant.
The fact that the disputed domain name resolves to an inactive website does not prevent a finding of bad faith. The very existence of the disputed domain name can equate to bad faith use because it gives an impression of association with the Complainant and has the capacity to deter Internet traffic away from the Complainant’s website. The case for bad faith is stronger, where the Complainant’s trademark is combined with a geographical indication, which is designed to mislead Internet users into believing the disputed domain name is somehow connected with the Complainant’s activities in that country, where in fact such connection is absent. As contended for by the Complainant, the mere existence of the disputed domain name constitutes a commercial threat so long as it is allowed to exist.
Therefore, the Panel finds that the disputed domain name was registered and is being 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 <ger-bayer.com> be transferred to the Complainant.
Date: February 7, 2019