WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer Intellectual Property GmbH v. Super Privacy Service LTD c/o Dynadot / Rose Irinco Mercado
Case No. D2020-0913
1. The Parties
The Complainant is Bayer Intellectual Property GmbH, Germany, represented by BPM Legal., Germany.
The Respondent is Super Privacy Service LTD c/o Dynadot / Rose Irinco Mercado, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <resochin.net> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 17, 2020, 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.
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 of the Complaint, and the proceedings commenced on April 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2020.
The Center appointed Mariya Koval as the sole panelist in this matter on May 20, 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.
After Panel appointment, the Center brought to the Panel’s attention that there had been an administrative oversight regarding the underlying registrant’s identity. In addition to the contact information which was used for notification purposes, the Registrar also disclosed the name of the underlying registrant: “Rose Irinco Mercado”. As the underlying registrant’s name was not used in the Center’s communications, the Panel invited the underlying registrant to submit any comments by June 13, 2020. No submissions were made in this regard.
4. Factual Background
The Complainant is a part of the Bayer group of companies, which is a German multinational pharmaceutical and life sciences company. Bayer AG currently ranks among the top pharmaceutical companies in the world, being represented by over 300 affiliates and has more than 115,000 employees worldwide. Bayer AG, itself or through subgroups does business on all five continents (including in China, where the Respondent is located, through its local subsidiary), manufacturing and selling numerous of products, inter alia human pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals. The Complainant has a significant portfolio of numerous pharmaceutical products.
“Resochin” is one of the Complainant’s products, which has been widely used in the prevention of malaria, being a chloroquine-based product, which has been developed in the 1930s.
The Complainant is the owner of the RESOCHIN trademark registrations and applications (“the RESOCHIN Trademark”) around the world, among which are:
- International Registration No. 327579, registered on November 23, 1966, in respect of goods in class 5;
- United States application No. 88842929, filed on March 21, 2020, in respect of goods in class 5.
The Complainant has a strong presence on the Internet and the majority of search results for the word “resochin” at the website “www.google.com” refer to the Complainant or its subsidiaries.
The Disputed Domain Name was registered on March 24, 2020. At the date of this Decision, the Disputed Domain Name does not resolve to any active website. However, according to the evidence presented by the Complainant (Annex 8 to the Complaint) the Disputed Domain Name previously resolved to a placeholder website, which offered the Disputed Domain Name for sale.
5. Parties’ Contentions
The Complainant contends that its product “Resochin” is one of the Complainant’s products, which has been widely used in the prevention of malaria. It is a chloroquine-based product, which has been developed in the 1930s. Since the global outbreak of the COVID-19 disease, researchers argued that chloroquine might have positive effects against the virus.
The Complainant further contends that the Disputed Domain Name is identical to its RESOCHIN Trademark in view of it fully incorporates such trademark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the following:
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 RESOCHIN Trademark that is sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Disputed Domain Name on the part of the Respondent;
- there is no evidence of 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 within the meaning of paragraph 4(c)(i) of the Policy;
- before filing of the Complaint the website under the Disputed Domain Name had been used as a platform for the sales offer of the disputed domain name and thus capitalizing on the Complainant’s trademark;
- there is also no evidence which suggests that the Respondent is commonly known by the Disputed Domain Name or the name “resochin”.
The Complainant further alleges that the Respondent has registered and is using the Disputed Domain Name in bad faith since “resochin” is an invented word, which is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant.
The Complainant also contends that it is inconceivable that the Respondent registered the Disputed Domain Name being unaware of Bayer and the Complainant’s rights in its highly distinctive RESOCHIN Trademark that is supported by the following facts:
- a simple search on Wikipedia reveals that under the entry for chloroquine, product Resochin is explicitly mentioned (Annex 10 to the Complaint);
- nowadays every average informed person has heard about the treatment with chloroquine on COVID-19 patients and can easily connect the name Resochin and the Complainant with the substance;
- the Respondent registered the Disputed Domain Name only three days after the Complainant filed for its RESOCHIN Trademark application in the United States, where the Respondent is located and since the Complainant had also published a relevant article about its product and the effect on SARS-CoV-2 patients;
- the Respondent has registered the Disputed Domain Name clearly for the purpose of selling it to the Complainant or its competitors and profit at the expense of the Complainant’s trademark. The Respondent is obviously an alert entrepreneur deliberately targeting the Complainant and its trademark with the Disputed Domain Name registration.
The Complainant further argues that the Respondent offered to sell the Disputed Domain Name on its website for the amount of USD 343,333. Such offer to sell the Disputed Domain Name on a public website has been found to indicate that the Disputed Domain Name has primarily been registered with the intention of selling it to the Complainant or one of its competitors in return for a payment that exceeds the costs directly related to the Disputed Domain Name.
Finally, the Complainant also argues that the Respondent’s use of the Disputed Domain Name is qualified to disrupt the Complainant’s business and that it is capable of reducing the number of visitors to the Complainant’s website, may adversely affect the Complainant’s business and therefore constitutes bad faith. The fact that the Respondent used a privacy registration service suggests that he wanted to hide his identity without any legitimate reason, and this proves bad faith towards the registration and use of the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant to succeed must satisfy the Panel that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive rights in the RESOCHIN Trademark, which predate the registration of the Disputed Domain Name for more than fifty years.
The Disputed Domain Name completely reproduces the Complainant’s RESOCHIN Trademark in combination with the generic Top-Level Domain (“gTLD”) suffix “.net”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11, the applicable gTLD 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.
Previous UDRP panels have recognized that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark; see bridport & cie S.A v. Privatewhois.net, Private Whois bridportadvisory.com, WIPO Case No. D2011-2262.
In view of the above, the Panel concludes that the Disputed Domain Name is identical to the Complainant’s RESOCHIN Trademark and that the Complainant satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Based on the evidence provided by the Complainant, the Panel considers that the Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services and is not commonly known by the Disputed Domain Name. Also, the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the Complainant’s RESOCHIN Trademark or to register the Disputed Domain Name.
Moreover, the Panel finds that there is no evidence that the Respondent is commonly known by the Disputed Domain Name.
The Respondent has offered to sell the Disputed Domain Name for USD 343,333, an amount that exceeds, without evidence to the contrary, the Respondent’s out-of-pocket expenses for registering the Disputed Domain Name.
With respect to the circumstances of this case, the Panel considers that it is more likely that the Respondent registered the Disputed Domain Name with the sole intention of commercial gain by attracting the consumers to its website.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests to use the Disputed Domain Name. Therefore, the second element in paragraph 4(a) of the Policy has been satisfied by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate to bad faith conduct on the part of the respondent, namely:
“(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location.”
According to section 3.1.4 of the WIPO Overview 3.0, previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In this case the Disputed Domain Name is confusingly similar to the Complainant’s widely-known trademark and was registered to attract, for commercial gain, Internet users to the website under it by creating a likelihood of confusion with the Complainant’s trademark.
In accordance with section 3.2.2 of the WIPO Overview 3.0 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), UDRP 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. Under the circumstances of this case, it can be inferred that the Respondent was well aware of the Complainant’s RESOCHIN Trademark when registering the Disputed Domain Name.
The Disputed Domain Name previously led to a website offering the sale of the Disputed Domain Name for USD 343,333. Therefore, the Panel considers it is obvious that the Respondent has registered the Disputed Domain Name primarily for the purpose of its selling to the Complainant or to the Complainant’s competitor(s), for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name that is strong evidence of bad faith.
However, UDRP panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that a respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner or its competitor (WIPO Overview 3.0, section 3.1). In the case at hand, the Respondent has not presented any justification of registering the Disputed Domain Name. Moreover, there have been different cases in the past where the Respondent was involved in cybersquatting, which is further evidence of bad faith registration and use of the Disputed Domain Name.
Accordingly, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith, and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <resochin.net> be transferred to the Complainant.
Date: June 15, 2020