WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer Intellectual Property GmbH v. hua feng

Case No. D2019-1261

1. The Parties

The Complainant is Bayer Intellectual Property GmbH, Germany, represented by BPM Legal., Germany.

The Respondent is hua feng, China.

2. The Domain Name and Registrar

The disputed domain name <canestenv.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 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 June 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted to the Parties two email communications in English and Chinese, one regarding a formal deficiency in the Complaint and the other regarding the language of the proceeding. On the same day, the Complainant requested an extension of time for submission of an amended Complaint and of comments on the language of the proceeding. On June 12, 2019 the Center granted an extension of time to June 17, 2019 for these submissions. On June 16, 2019, the Complainant filed an amended Complaint in English in which it requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on June 20, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was July 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2019.

The Center appointed Matthew Kennedy as the sole panelist in this matter on July 22, 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 part of the Bayer group of companies, which manufactures and sells human pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals, among other products, throughout the world. The Complainant has a Chinese subsidiary trading under the name “Bayer (China) Limited”. Bayer’s consumer health division markets a range of antifungal medications under the CANESTEN brand, including in China. The Complainant has obtained multiple trademark registrations for CANESTEN including international trademark registration number 337216, registered on July 12, 1967, specifying goods in class 5 including medicines. That trademark registration remains effective. One of the products in the Complainant’s CANESTEN range of products is named “Canesten V”. Bayer operates a website in Chinese and English at “www.bayer.com.cn” where it provides information about itself and its products.

The Respondent is an individual resident in China.

The disputed domain name was registered on February 23, 2019. At the time of filing of the Complaint, the disputed domain name did not resolve to any active website, and at the time of filing of the amended Complaint, it resolved to a website in Chinese displaying advertising for, and hyperlinks to, online casinos.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the CANESTEN mark. The fact that the disputed domain name contains one more letter is not an obstacle to a finding that the disputed domain name is confusingly similar to the CANESTEN mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 CANESTEN mark. The Respondent is using the disputed domain name to earn pay-per-click-revenues from redirecting Internet users to third parties’ websites and thus capitalizing on the Complainant’s trademark. There is no evidence that suggests that the Respondent is commonly known by the name “Canesten V”.

The disputed domain name was registered and is being used in bad faith. The disputed domain name is identical to the Complainant’s product name “Canesten V” and it is clear that the Respondent is deliberately targeting the Complainant and its product. The Respondent’s use of the disputed domain name redirects Internet users to a website that provides advertising banners and links to third party websites. The Respondent is, in all likelihood, trying to divert traffic for the purpose of earning click-through revenues from Internet users searching for the Complainant’s website.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent is registrant of other domain names in ASCII letters, some of which allegedly contain English words, from which it infers that the Respondent can understand English; the Complainant is not able to communicate in Chinese and, if it were required to submit all documents in Chinese, the proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel notes that in the present proceeding the Complaint was filed in English. Despite the Center having sent communications to the Respondent in Chinese and English regarding the language of the proceeding and notification of the Complaint, the Respondent did not express any interest in filing a Response or otherwise participating in this proceeding. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the CANESTEN mark.

The disputed domain name wholly incorporates the CANESTEN mark as its initial element. It also includes the letter “v” but the CANESTEN mark remains clearly recognizable within the disputed domain name. Accordingly, this additional letter does not dispel the confusing similarity between the disputed domain name and the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.7.

The other element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. See LEGO Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. Zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance above, the disputed domain name resolves to a website in Chinese displaying advertising for, and hyperlinks to, online casinos. The disputed domain name is confusingly similar to the Complainant’s CANESTEN mark and identical to the name of a product in the Complainant’s CANESTEN range of products, i.e. Canesten V. The disputed domain name has no other apparent meaning. Neither the website nor the linked sites have any apparent connection to “canestenv”, from which the Panel draws the inference that the disputed domain name is intentionally targeting the reputation of the Complainant’s CANESTEN mark to attract Internet users to the Respondent’s site. The Complainant submits that it 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 CANESTEN mark. Accordingly, the Panel finds that this use does not constitute use in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. Nor does it constitute a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy.

As regards the second circumstance above, according to the Registrar’s WhoIs database, the name of the Respondent is “hua feng”, not “canestenv”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

As regards registration, the disputed domain name was only registered in 2019, many years after the Complainant obtained its trademark registration for CANESTEN. The disputed domain name wholly incorporates the Complainant’s CANESTEN trademark and combines that mark with the letter “v”. The disputed domain name, but for the gTLD suffix, is identical to the name of a product in the Complainant’s CANESTEN range of products, i.e. Canesten V. Therefore, the Respondent’s choice of this precise combination of elements indicates an awareness of the Complainant and its product at the time that he registered the disputed domain name. Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.

As regards use, the Respondent uses the disputed domain name in connection with a website displaying advertising for, and hyperlinks to, online casinos. Given the findings in Section 6.2B above, the Panel finds that the disputed domain name operates by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website or the services offered on the hyperlinked websites. This use of the disputed domain name is intentional and for the commercial gain of the Respondent or the operator of the hyperlinked websites, or both. In each scenario, the Respondent’s use falls within the terms of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 name <canestenv.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: July 30, 2019