WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. FlokiNET Ltd WhoisProtection, FlokiNET Ltd

Case No. D2020-2907

1. The Parties

The Complainant is Bayer AG, Germany, represented by BPM Legal., Germany.

The Respondent is FlokiNET Ltd WhoisProtection, FlokiNET Ltd, Seychelles.

2. The Domain Name and Registrar

The disputed domain name <cropsciencebayer.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2020. On November 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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 November 5, 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 November 6, 2020.

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 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2020. The Response was filed with the Center on November 26, 2020. The Complainant submitted an unsolicited supplemental filing on December 1, 2020.

The Center appointed Adam Taylor as the sole panelist in this matter on December 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

The Complainant is a multinational pharmaceutical and life sciences company that has traded under the name “Bayer” since 1863. The Complainant has more than 115,000 employees worldwide.

One of the Complainant’s subsidiaries, Bayer Cropscience AG, operates a division of the Complainant’s group known as “Bayer Crop Science”, including use of a website at “www.cropscience.bayer.com”.

The Complainant owns many trade marks for BAYER including International Registration No. 1462909, registered on November 28, 2018, in classes 1, 3, 5, 9, 10, 31, 35, 42 and 44.

The Respondent registered the disputed domain name was registered on April 24, 2020.

The Respondent says that it is a provider of domain name and proxy services and that it registered the disputed domain name on behalf of one of its customers, a German art collective known as “the Peng Collective” and on whose behalf the Respondent has apparently filed the Response. Accordingly, references to the Respondent below include the Respondent’s customer unless otherwise stated.

As of June 10, 2020, the disputed domain name resolved to a placeholder page.

On or about November 9, 2020, (i.e., after the Complaint was filed), the Respondent launched a website at the disputed domain name. It was branded with a logo that was a slight modification of the Complainant’s “BAYER cross” logo (“Baier” instead of “Bayer”) plus the heading “AggroCrap”. The website parodied / criticized the Complainant (in German).

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows.

The Complainant’s BAYER marks have acquired significant goodwill and are widely known, as has been held in numerous previous UDRP cases.

The disputed domain name is confusingly similar to the Complainant’s mark, which it wholly incorporates and is clearly recognisable. The term “cropscience” is generic and insufficient to eliminate the confusing similarity. On the contrary, the phrase adds to the confusion as it denotes one of the Complainant’s divisions.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant has not authorised the Respondent to use its trade marks in any domain name.

There is no evidence of the Respondent’s use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

Nor is there any evidence of legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith.

In light of the Complainant’s high worldwide profile, and the fact that the disputed domain name targets the Complainant’s Cropscience division, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s trade marks.

The disputed domain name constitutes a passive holding in bad faith because the Complainant’s marks are well-known, the Respondent has provided no evidence of actual or contemplated good faith use and there is no conceivable good faith use to which the disputed domain name could legitimately be put.

The disputed domain name prevents the Complainant from reflecting its trade marks in a corresponding domain name.

The fact that the disputed domain name includes a trade mark so obviously connected with the Complainant and its products is suggestive of opportunistic bad faith and it also constitutes an abusive threat hanging over the head of the Complainant.

B. Respondent

A summary of the Respondent’s contentions is as follows.

The website at the disputed domain name shows that the Respondent set out to parody and express a negative opinion about the Complainant, which is protected as free speech.

Although the disputed domain name uses the Complainant’s name, this is in the context of a parody and so it will not confuse website visitors. The disputed domain name was not registered in bad faith or to abuse the Complainant’s trade mark. See Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812.

The Respondent’s website is different to that of the Complainant, including a different logo, with “Baier” instead of “Bayer”, and a different font and different images.

The website at the disputed domain name does not appear in major search engines. The disputed domain name will only be used by the Respondent for the purposes of art and free speech.

Transferring the disputed domain name to the Complainant would damage free speech, meaning that large corporations could easily close down all negative reviews / websites that incorporate their brand.

C. Complainant’s Supplemental Filing

A summary of the Complainant’s additional contentions is as follows.

The Respondent does not provide any evidence that it acts as a proxy for the third party. It therefore cannot rely on the claimed use of the disputed domain name by the third party and has no rights or legitimate interests in the disputed domain name.

The content at the website was created by a third party in an attempt to protect the Respondent’s interests after the Respondent became aware of the UDRP Complaint. This act does not constitute rights or legitimate interests but, rather, is designed to frustrate the Complainant’s efforts to obtain transfer of the disputed domain name.

Noncommercial or fair use of a disputed domain name can only be recognised as rights or legitimate interests if demonstrably made before any notice of the dispute.

Even if the website had been made available before notice of the dispute, it would still not qualify as fair because the disputed domain name is identical to the Complainant’s trade mark, thereby carrying a high risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the trade mark owner.

Furthermore, there is no disclaimer on the website informing visitors that the site is not operated by the Complainant. On the contrary, the website uses the Complainant’s well-known “Bayer cross”, with only a minor graphical modification, suggesting endorsement or affiliation with the Complainant.

The fact the disputed domain name is a “.com” domain name (i.e., which implies commercial use) is further evidence against free speech.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Preliminary – Informal Response

The Response is in the form of an email to the Center, which does not comply with the formal requirements set out in paragraph 5 of the Rules. In particular, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case.

B. Preliminary – Supplemental Filing

The Complainant has made an unsolicited supplemental filing.

Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some exceptional circumstance.

In this case, the Panel has decided to admit the filing as its main purpose is to address the Respondent’s website at the disputed domain name which was launched after the Complainant filed its Complaint and which could not therefore have been anticipated in the Complaint.

C. Identical or Confusingly Similar

The Complainant has established rights in the mark BAYER by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.

Section 1.8 of WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element. Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive terms “crop science” is insufficient to avert a finding of confusing similarity.

In any case, the Complainant has also established unregistered trade mark rights for the purpose of the Policy in the term “Bayer Crop Science” arising from its trading activity under that name. The disputed domain name is confusingly similar to that unregistered mark also as it merely switches the order of the words.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

D. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.

Here, the Respondent has used the disputed domain name for a website parodying / criticizing the Complainant. In certain circumstances, genuine and noncommercial criticism (including parody) can support a claim to a legitimate interest under paragraph 4(c)(iii) of the Policy. See section 2.6 of WIPO Overview 3.0.

However, in the case, the website was uploaded only after the Complaint was filed, and it could therefore be seen as a defensive move designed to bolster the Response rather than a genuine parody / criticism site.

But even if this website had been launched before the Respondent received any notice of the dispute, that would not have helped the Respondent’s case. This is because, as explained in section 2.6.2 of WIPO Overview 3.0, previous UDRP panels have found that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trade mark (i.e., <trademark.tld>) as this creates an impermissible risk of user confusion through impersonation.

In this case, the disputed domain name is virtually identical to the name of the Complainant’s trading division, and unregistered trade mark, differing only in that it moves the trade mark BAYER so that it follows rather than precedes the descriptive phrase “crop science”. In the Panel’s view, this disputed domain name therefore constitutes a misrepresentation to Internet users that any associated website is likely to be connected with the Complainant. Certainly, there is nothing in the disputed domain name to indicate that it leads to a site that contains content parodying, or critical, of the Complainant. While Internet users arriving at the Respondent’s website will at some point realise that it is not officially associated with the Complainant – albeit that the Respondent’s use of a slightly-modified version of the Complainant’s logo may at least temporarily perpetuate any confusion – the visitors have nonetheless been attracted to the site on a false premise; instead of the Complainant’s site, they are confronted with an unexpected parody / criticism site.

The Respondent invokes the case of Wal-Mart Stores, Inc. v. Traffic Yoon, supra. However, not only was that decision based on the first, not the second, element of the Policy, it concerned a domain name, <boycottwalmart.com>, which added an important distinguishing word “boycott” that the panel considered was sufficient to signal to Internet users that the domain name would not lead to a website operated by the trade mark owner itself. Whereas, in this case, the disputed domain name does not contain any extra such term warning Internet users that it leads to a parody / criticism site.

For these reasons, the Panel does not consider that the website is a legitimate parody / criticism site for the purposes of the Policy.

Nor is there any evidence that paragraphs 4(c)(i) or (ii) of the Policy apply in the circumstances of this case.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

E. Registered and Used in Bad Faith

As explained above, even if the Panel were to accept that the Respondent genuinely registered the disputed domain name for the purposes of a parody / criticism website, the Respondent has nonetheless used for its website a domain name that is likely to make a misrepresentation to users that any associated website is connected with the Complainant. As the panel put it in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376, the disputed domain name would “catch by surprise” visitors intending to reach the Complainant’s website. In the Panel’s view, this constitutes registration and use in bad faith.

The Respondent claims that the disputed domain name does not currently appear in major search engines. However, even if so, that does not help the Respondent’s as the website may do in future or Internet users may find it by other means – and presumably the Respondent intends its website to be seen by others.

The Panel disagrees with the Respondent’s assertion that if the Complainant is successful in this case, that would mean that large corporations can easily shut down all negative reviews or websites that incorporate their brand names. First the UDRP is concerned with Internet domain names only. Second, as explained above, the key factor in this case is not merely that the disputed domain name mentions the Complainant’s brand but rather that the disputed domain name is virtually identical to the Complainant’s trade mark, without any extra word(s) signalling to Internet users that the disputed domain name leads to a website that parodies / criticizes the Complainant rather than to one operated by the Complainant itself.

The Panel would add that it is not qualified to assess, and it expresses no opinion on, the views expressed by the Respondent. The issue here is solely the nature of the disputed domain name which the Respondent has opted to register and use in conjunction with its parody / criticism website.

The Panel concludes that the Respondent has registered and is using the domain name in bad faith and that the Complainant has therefore established the third element of 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, <cropsciencebayer.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: December 17, 2020