WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Lukasz Ziolkowski
Case No. D2019-0753
1. The Parties
The Complainant is Bayer AG, Germany, represented by BPM Legal, Germany.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Lukasz Ziolkowski, Poland.
2. The Domain Name and Registrar
The disputed domain name <bayerpro.net> is registered with Launchpad.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 4, 2019 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 April 9, 2019.
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 April 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2019.
The Center appointed William Van Caenegem as the sole panelist in this matter on May 9, 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 is a multinational company based in Germany with activities in healthcare, nutrition and plant protection. The Complainant has over 250 affiliates and more than 100,000 employees worldwide. The Complainant began manufacturing and marketing pharmaceutical products in 1888, and has sold such products under the BAYER trademark ever since.
The Complainant is the owner of about 700 registrations and pending applications of the word mark “BAYER”, including in the United States of America, the European Union and in Poland. The Complainant’s registrations are in relation to a wide range of goods and services. Copies of the printouts of the official trademark databases evidencing the
Relevant trademark registrations are attached to the Complaint.
The Complainant and its subsidiaries also own hundreds of domain name registrations containing the BAYER trademark including <bayer.com>, <bayer.us> and <bayer.com.pl>.
The disputed domain name was registered on February 28, 2018.
5. Parties’ Contentions
According to the Complainant, the disputed domain name is used in connection with a website that copies the design of the Complainant’s websites and purports to offer injectable, oral or hormone-growth products that are either the Complainant’s products or counterfeit products.
On its website, the Respondent falsely indicates that it is “a Canadian subsidiary of Bayer AG and the corporate headquarters for the Canadian healthcare operations” and uses what the Complainant asserts is its own slogan “Science For A Better Life”. The website also refers to Schering AG, a company that was bought by the Complainant in 2006. After lodging the initial Complaint a take-down notice was filed and as a result the relevant website is no longer publicly available.
The Complainant contends that the disputed domain name fully incorporates the well-known BAYER trademark and is confusingly similar to it. Confusing similarity is said to be a given where a trademark is recognizable as such within the domain name, and in this case any Internet user would easily recognize the BAYER trademark. The word “pro” is merely generic and does not eliminate the similarity between the Complainant’s trademark and the disputed domain name.
As to rights and legitimate interests, the Complainant points out that it is sufficient that it submits prima facie evidence in order to shift the burden to the Respondent. It contends that the BAYER trademarks are well‑known and obviously connected with the Complainant and its products. “Bayer” is not a word any market participant or other domain name registrant would legitimately choose unless seeking to create an impression of an association with the Complainant.
The Complainant also states that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted it to apply for or use any domain name incorporating the BAYER trademarks. These circumstances are said to constitute a prima facie showing by the Complainant of the absence of rights or legitimate interests in the disputed domain name on the part of the Respondent.
According to the Complainant, the Respondent is using the disputed domain name for a website offering products at least similar to the Complainant’s products and displaying the Complainant’s trademarks. Even if such goods were genuine (as in fact they are not), the use of the disputed domain name would not be bona fide under the Policy. The Complainant also points out that there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or is commonly known by the disputed domain name or the name “bayerpro”.
The Complainant says that because of its high profile worldwide, it is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant and of its rights in its highly distinctive and well-known BAYER trademarks. In addition, the fact that the Respondent uses the Complainant’s trademark BAYER CROSS on its website and presents itself as the Complainant’s Canadian subsidiary clearly evidences that the Respondent deliberately targets the Complainant and its trademarks with the disputed domain name.
The website to which the disputed domain name resolves creates the impression that it is operated by the Complainant as it uses the latter’s logo and the distinctive BAYER trademarks, which demonstrates bad faith. The Complainant also contends that the fact that a Respondent uses a disputed domain name to operate a website that offers counterfeit or unauthorized products has been found to be a proof of bad faith. The very use of such a domain name and website by a party with no connection with the products concerned suggests opportunistic bad faith.
Further, the Respondent’s use of the disputed domain name is said to disrupt the Complainant’s business and can reduce the number of visitors to the Complainant’s website, adversely affecting its business, and therefore constituting bad faith. Finally, the Complainant maintains that registration of the disputed domain name by the Respondent constitutes an abusive threat hanging over the head of the Complainant, further supporting a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the BAYER trademark of the Complainant. However, the Complainant’s mark is immediately recognizable within the disputed domain name. The addition of “pro” does not detract from the recognition of the BAYER mark. See section 1.0 of the WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Jurisprudential Overview 3.0”).
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant’s contentions, or asserted in any way that it has rights or legitimate interests in the disputed domain name. The Respondent has no license, permission or authority to use the BAYER trademark of the Complainant in any manner, including for the registration of a domain name that recognizably contains that trademark. There is no evidence that the Respondent is known by the disputed domain name or conducts any legitimate business by reference to it.
The material put before the Panel by the Complainant establishes that the Respondent (in a manner available to the public prior to the take-down notice) set up a look-alike website without any permission or prior knowledge from the Complainant. The website includes elements associated with the Complainant, including its trademarks. It appears that counterfeit products are offered. None of this constitutes a legitimate commercial activity of a nature that would justify recognition of any legitimate interest or right vested in the Respondent.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given the longstanding and very widespread use of the BAYER trademark by the Complainant, and the fact that the Respondent has carefully combined that mark with the term “pro” in the disputed domain name, there can be little doubt that the Respondent was aware of the Complainant’s rights at the time of registration.
Further, the Respondent established a website at the relevant Internet address which is made to look like a legitimate site of the Complainant, by adopting aspects of its trade dress, its slogan and its trademarks. It appears to offer BAYER products for sale, which are in fact most likely counterfeit. The Respondent has clearly established the website, and acquired the disputed domain name, for the purpose of misleading consumers into thinking they were buying legitimate products of the Complainant from a website established and operated by it.
Therefore the Panel holds that the disputed domain name was registered and 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, <bayerpro.net> be transferred to the Complainant.
William A. van Caenegem
Date: May 23, 2019