WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Whois Privacy Protection Service by onamae.com / chenhaha, I
Case No. D2020-0042
1. The Parties
The Complainant is Bayer AG, Germany, represented by BPM Legal., Germany.
The Respondent is Whois Privacy Protection Service by onamae.com, Japan / chenhaha, I, China.
2. The Domain Name and Registrar
The disputed domain name <bayerkogenate.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2020. On January 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2020, 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 January 17, 2020 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 January 20, 2020.
On January 17, 2020, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On January 20, 2020, the Complainant confirmed its request 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 of the Complaint, and the proceedings commenced on January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. The Center received an informal email in Chinese from the Respondent’s address on January 27, 2020, immediately after the notification of the Complaint. No Response was filed with the Center. On February 26, 2020, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Teruo Kato as the sole panelist in this matter on March 3, 2020. 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
According to the Complainant, the Complainant is a global enterprise with core competencies in the fields of healthcare, nutrition and plant protection, and its stock is included in nearly all the major share indices, traded on all German stock exchanges and 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 submitted evidence of various trademark registrations and owns, inter alia, International trademark BAYER (word) No. 1462909, registered November 28, 2018 and, through its group company, International trademark KOGENATE (word) No. 545106, registered November 8, 1989 and Japan trademark KOGENATE (word) No. 2420704 registered June 30, 1992, as set out in section 6.2 A below.
The disputed domain name <bayerkogenate.com> was registered on November 27, 2019.
The Respondent is “chenhaha, l”, whose address is stated in China.
According to the Complaint and evidence provided by the Complainant, the website at the disputed domain name currently directs towards an active website which features pornographic contents.
The Complainant requests that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions
The Complainant contends that it is the owner and rightful user of various trademarks including BAYER and KOGENATE.
The Complainant also contends that the disputed domain name identically adopts the BAYER and KOGENATE trademarks and that the disputed domain name is confusingly similar to the Complainant’s BAYER and KOGENATE trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect to the disputed domain name.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
A. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar confirmed that the language of the Registration Agreement is Japanese.
The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that, if Japanese were the language of the proceeding, it would cause undue delays and substantial expenses. The Panel notes that information of these proceedings was provided to the Respondent both in English and Japanese.
In particular, the Panel notes that the Respondent was advised in both English and Japanese that, if the Respondent was to object to the Complainant’s request for English, the Respondent was invited to indicate that objection and to submit any arguments/supporting materials as to why the proceedings should not be conducted in English by January 22, 2020. The Respondent did not respond.
The only communication from the Respondent was an email of January 27, 2020, in Chinese, stating “广告合作请联系我” (English translation “Please contact me for advertising”). The Panel would have accepted a Response from the Respondent in Japanese, but none was filed.
In view of the circumstances of this case, and in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of BAYER registered trademarks, including inter alia International trademark BAYER (word) No. 1462909, registered on November 28, 2018, designating multiple jurisdictions, including Japan and China.
The Panel is also satisfied that the Complainant is, through its group company, the rightful user of KOGENATE registered trademarks, including inter alia International trademark KOGENATE (word) No. 545106, registered on November 8, 1989, designating multiple jurisdictions, including China, as well as Japan trademark KOGENATE (word) No. 2420704, registered on June 30, 1992.
As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the BAYER trademark and KOGENATE trademark, in which the Complainant has rights.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the generic TLD, the disputed domain name consists of the Complainant’s trademark BAYER and trademark KOGENATE in their entirety, with no addition of any other word. The Panel finds that the recognizable element of the disputed domain name is the Complainant’s trademarks themselves.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(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 trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making 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 (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant contends that “[t]he 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 Marks and/or the KOGENATE Marks.” and that “[t]he website at the disputed domain name is featuring pornographic content and is providing links to third parties’ websites and thus capitalizing on the Complainant’s trademark”.
The Complainant submitted to the Panel documentary materials to support its contentions as above, and the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By not submitting a Response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
In the premises, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and is using the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on that website or location.
The Panel notes and accepts that the trademark BAYER and KOGENATE were registered and are known internationally, including in Japan and China, before the disputed domain name was registered on November 27, 2019.
In the premises, the Panel holds that the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name.
As to the use in bad faith, the Complainant contends, among others, that “[t]he Respondent’s use of the domain name to feature pornographic content constitutes bad faith use.” and that “[t]he Respondent is, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning revenues from Internet users searching for the Complainant’s website.”
Having considered all the circumstances, the Panel holds that the Respondent is using the disputed domain name in bad faith.
In the premises, the third requirement of the Policy has been satisfied.
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 <bayerkogenate.com> be transferred to the Complainant.
Date: March 17, 2020