WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Zhaodongxu
Case No. D2019-2576
1. The Parties
The Complainant is Bayer AG, Germany, represented by BPM Legal, Germany.
The Respondent is Zhaodongxu, China.
2. The Domain Name and Registrar
The disputed domain name <bayer.shop> (the “Domain Name”) is registered with Xiamen ChinaSource Internet Service Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2019. On October 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 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 October 24, 2019.
On October 23, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 24, 2019, the Complainant requested that English be the language of the proceeding. On October 24, 2019, the Respondent sent an email in Chinese, indicting its willingness to settlement the dispute. On October 24, 2019, the Center sent an email regarding possible settlement to the Parties. No request for suspension was made by the Complainant and no settlement form was signed by the Parties.
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 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2019. On November 8, 2019, the Respondent sent an email indicating again its willingness to settle the dispute. No formal Response was filed with the Center. On November 26, 2019, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Karen Fong as the sole panelist in this matter on December 13, 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 global enterprise with its main fields of activities in healthcare, nutrition and plant protection. Its headquarters are in Leverkusen, Germany. The Complainant’s stock is included in all the major share indices and is traded on all German stock exchanges.
The Complainant trades under the brand name BAYER. The name BAYER was first used in 1863 as part of a company name when the firm of Friedrich Bayer & Co was established. The BAYER name was first used as a brand name in 1888 when the Complainant’s predecessor in title began manufacturing and marketing pharmaceutical products under the name. The Complainant does business in all five continents. It is regularly listed as one of the world’s leading companies in various categories. The trade mark BAYER is registered all over the world covering an extensive range of goods and services including in China where the Respondent is based (the “Trade Mark”). The earliest trade mark registration No. 0155612 submitted in evidence dates back to June 6, 1922. The Complainant also has a strong Internet presence and owns numerous domain names which contain the Trade Mark including <bayer.com> and <bayer.com.cn>.
By virtue of the extensive use of the Trade Mark, the Complainant has acquired substantial reputation and goodwill in the Trade Mark. The Trade Mark has been recognised as a well known trade mark in many previous UDRP decisions. A large number of these decisions have been submitted in evidence.
The Domain Name was registered on September 4, 2019. The Domain Name is connected to a website which states that the Domain Name is for sale. There are contact details for the sale and a sales price of up to CNY 2260 (approximately USD 316).
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name to the Complainant.
The Respondent expressed its surprise that the proceeding was issued for the sake of a single domain name. It also wanted to know what the Complainant wanted for the Domain Name and indicated that it is willing to settle the matter to save time and money.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Language of Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Domain Name is registered in Latin characters and is also registered in the generic Top-Level Domain (“gTLD”) space comprising an English word, “shop”;
- The Respondent is also the registrant of other domain names that comprise of English words including <candychain.cn>, <desertrose.cn> and <consumercredit.cn>;
- The above indicates that the Respondent has knowledge of the English language;
- The Complainant is not able to communicate in Chinese and should be spared the burden of dealing with Chinese as the language of the proceeding;
- The Respondent would have an unfair advantage if the proceeding was conducted in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel notes that the Respondent did respond to the Complaint which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost-effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD which in this case is “.shop”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. Further, the Trade Mark is well known and has no other significance other than being obviously connected to the Complainant. The Respondent has not made any use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, and is not making any legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not in its response provided any explanation of its rights or legitimate interests in relation to the Domain Name and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith.
The Trade Mark is a distinctive and well-known trade mark and has been recognised by many UDRP panels as such.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s well known trade mark when it registered the Domain Name given the fame of the Trade Mark. It is implausible that it was unaware of the Complainant when it registered the Domain Name.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Domain Name directs to a page which offers the Domain Name for sale for an amount exceeding the costs directly related to the registration of the Domain Name. This is evidence that the Respondent has registered the Domain Name primarily for the purpose of selling as set out in paragraph 4(b) of the Policy.
Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP, i.e., the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
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 <bayer.shop> be transferred to the Complainant.
Date: December 23, 2019