WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Privacy Service Provided by Withheld for Privacy ehf / Todd Peter

Case No. D2021-3418

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Todd Peter, Canada.

2. The Domain Name and Registrar

The disputed domain name <agro-bayer-pl.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2021, 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 October 28, 2021, 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 29, 2021.

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 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.

The Center appointed Ian Blackshaw as the sole panelist in this matter on December 20, 2021. 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 core competencies in healthcare, nutrition, and plant protection, with headquarters in Leverkusen, Germany.

The Complainant’s company name “Bayer” dates back to 1863, when the firm of “Friedrich Bayer & Co.” was established in the town of Elberfeld, now part of the city of Wuppertal in Germany. In 1881, the name was transferred to a stock corporation called “Farbenfabriken vorm. Friedrich Bayer & Co”. This company began manufacturing and marketing pharmaceutical products in 1888 and has sold such products under the BAYER trademark ever since.

The Complainant has over 250 affiliates and more than 115,000 employees worldwide. The Complainant, itself or through the subgroups like HealthCare and CropScience, does business on all five continents, manufacturing and selling numerous products, inter alia,human pharmaceutical and medical care products, diagnostic products, and agricultural chemicals. In some countries, the Complainant also uses the word “agro” to market its CropScience products, inter alia, in Poland (“www.agro.bayer.com.pl/”). The term “Agro Bayer” is solely connected to the Complainant and its subsidiaries.

The Complainant is the owner of about 700 registrations and pending applications of the word mark BAYER, including the international trademark registration nos. 1462909 and 1476082 for BAYER registered since November 28, 2018, and December 10, 2018, respectively.

The Complainant’s registrations cover an extensive range of goods and services. Copies of these trademark registrations have been provided to the Panel and are referred to as the “BAYER Marks”.

Furthermore, the Complainant and its subsidiaries own hundreds of domain name registrations containing the BAYER Mark, including <cropscience.bayer.com>, <bayer.com>, and <bayer.us>. Due to the Complainant’s global online use of its BAYER Mark, such Mark is solely connected with the Complainant. As a result of such exclusive and extensive use, the Complainant’s BAYER Marks have acquired a significant goodwill and are widely known. Previous UDRP decisions, during almost 20 years, have found that the Complainant’s BAYER Marks are well known. Several of such decisions have been cited by the Complainant in its Complaint.

The Respondent registered the disputed domain name on September 1, 2021.

The disputed domain name is used in connection with a website featuring pay-per-click (“PPC”) advertising related to the Complainant’s business. A copy of the Respondent’s website, as available on October 15, 2021, has been provided to the Panel.

In addition, the Complainant received knowledge that the disputed domain name and the name of the Complainant’s subsidiary in Poland, Bayer Sp. z o. o., Crop Science, was being fraudulently used by the Respondent to issue fake job offers in the Complainant’s name in an attempt to extract money from the job candidates. A printout of the email sent by the Respondent in the names of Augustyn Eryk and Oliver Fuchs, respectively, using the email address “[..]@agro-bayer-pl.com” as well as the attachments to such email, purportedly an “Employment approval and Immigration Diplomatic Authorization” to work for Bayer Crop Science Polska of Warsaw, Poland, have been provided to the Panel. The Complainant has already filed a criminal complaint with the State Criminal Police Office in Düsseldorf, Germany, and with the relevant authorities in India in relation to this conduct.

The use of the disputed domain name by the Respondent is part of a larger fraud complex. The Respondent was already involved in another case concerning the domain name <cropscience-bayer.com>. The domain name was used fraudulently in the same way and has already been transferred to the Complainant in a previous UDRP proceeding. See Bayer AG v. Withheld for Privacy Purposes Privacy service provided by Withheld for Privacy ehf / Todd Peter, WIPO Case No. D2021-2726.

5. Parties’ Contentions

A. Complainant

The disputed domain name fully incorporates the well-known BAYER Marks and is confusingly similar to such Marks.

First, it is well established that the specific generic top-level domain name (“gTLD”) is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the Complainant’s trademark and the disputed domain name. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429: “It is already well established that the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”

Second, it is also well established that confusing similarity occurs where a trademark is recognizable as such within the disputed domain name. In the present case, the Internet user will clearly recognize the well-known BAYER Marks. The additional words “agro” and “pl” are merely generic and not suitable to eliminate the similarity between the Complainant’s trademark and the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

See also BASF SE v. WhoisGuard Protected, WhoisGuard, Inc. / Paul Okeke, WIPO Case No. D2020-2763: “The disputed domain name incorporates this mark in its entirety followed by the terms ‘agro farm’, which do not avoid confusing similarity with this trademark.”

See further Conair Corporation v. Istvan Horvath/WhoisGuard, Inc., WIPO Case No. D2015-0129: “The Complainant adds that the Respondent’s use of a generic geographical suffix such as ‘sk’ for Slovakia, ‘hu’ for Hungary, ‘cz’ for the Czech Republic and ‘pl’ for Poland as the only other element of the disputed domain names ‘does not dispel any confusion’”.

On the contrary, the use of the BAYER Marks in combination with this term will confuse Internet users as it refers directly to one of the Complainant’s subgroups, which uses the domain name <agro.bayer.com.pl> to provide information on its products.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

First of all, it is a consolidated principle that the burden of proof with regard to the rights or legitimate interests of the Respondent lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of a disputed domain name according to paragraph 4(a) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, it is sufficient that the Complainant shows prima facie evidence in order to shift the burden of production on the Respondent.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its BAYER trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the BAYER Marks. These circumstances themselves are sufficient to constitute prima facie showing by the Complainant of absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. See GGG Filmproduktion und Vertrieb e.K. v. E4 Group and Frank Jensen, WIPO Case No. D2006-1177; F. Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246; L’Association des centres distributeurs E. Leclerc - ACD LEC v. CC, WIPO Case No. D2005-1071; Wal-Mart Stores Inc. v. Frank Warmath, WIPO Case No. DTV2008-0013; and Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201.

Furthermore, 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. Neither the use of the disputed domain name in connection with a parking website featuring advertising links for third parties’ websites nor the use in connection with the attempt to induce third parties to make a payment by false pretenses are bona fide under the Policy.

Finally, there is also no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or is commonly known by the disputed domain name or the name “Cropscience Bayer”.

Under these circumstances, there is no doubt that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

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

Based on the Complainant’s high profile worldwide and the fact that the disputed domain name obviously targets the Complainant’s CropScience subgroup of products, it is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant and its rights in its highly distinctive and well-known BAYER Marks. In addition, the Respondent sent fraudulent emails to third parties and has claimed to be a subsidiary of the Complainant. The Respondent, therefore, deliberately targets the Complainant.

By using the website available at the disputed domain name to forward Internet users to a website featuring advertising links for third parties’ websites, the 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. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many previous UDRP decisions been found to qualify as bad faith under paragraph 4(b)(iv) of the Policy

Furthermore, the Respondent also sent fraudulent emails using the disputed domain name and, therefore, acted in bad faith under paragraph 4(b)(iv) of the Policy. See Bayer AG v. Volker Kammel, Whois Agent / Whois Privacy Protection Service, Inc., WIPO Case No. D2015-0540.

See also Bayer AG v. Withheld for Privacy Purposes Privacy service provided by Withheld for Privacy ehf / Todd Peter, WIPO Case No. D2021-2726.

Furthermore, the Respondent’s registration of the disputed domain name clearly prevents the Complainant from reflecting its trademarks in a corresponding domain name.

In addition, as the elements expressly mentioned in paragraph 4(b) of the Policy are non-exhaustive, practice has regarded a number of other indications and aspects as establishing bad faith.

The fact that the Respondent registered the disputed domain name which includes a trademark that is obviously connected with the Complainant and its products also supports the finding of bad faith, as the very use of such domain name by someone with no connection with the products suggests opportunistic bad faith. See America Online Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808; General Motors LLC v. desgate, WIPO Case No. D2012-0451; and RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran, WIPO Case No. D2010-0610).

It is further established that the Respondent’s use of the disputed domain name may disrupt the Complainant’s business and 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. See BR IP Holder LLC v. Registrant [1966810]: Tech Administrator, WIPO Case No. D2009-1358); and Estée Lauder Inc. v. estelauder.com, estlauder.net and Jeff Hanna, WIPO Case No. D2000-0869.

The registration of the disputed domain name by the Respondent also constitutes an abusive threat hanging over the head of the Complainant, which also supports a finding of bad faith. See Akbank Turk A.S. v. Mustafa Ismet Cinar, WIPO Case No. D2009-0642; Digital Platform Iletisim Hizmetler A.S. v. Digiturk Co., WIPO Case No. D2008-0111; and Novo Nordisk A/S v. Service, Customer, WIPO Case No. D2009-0160.

For all the foregoing reasons it is established that the Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(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.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP decisions in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140.

In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the Complainant’s well-known and widely used BAYER registered trademark and this makes the disputed domain name confusingly similar to the Complainant’s well-known and widely used BAYER registered trademark.

The addition of the words “agro” and “pl” do not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain name. See BASF SE v. WhoisGuard Protected, WhoisGuard, Inc. / Paul Okeke, WIPO Case No. D2020-2763, and Conair Corporation v. Istvan Horvath/WhoisGuard, Inc., WIPO Case No. D2015-0129.

Furthermore, the addition of the gTLD “.com” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant’s well-known and widely used BAYER registered trademark; this being a standard registration requirement of domain names. See Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and widely used BAYER registered trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, prior rights and prior commercial use.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:

- whether there is any 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 before any notice to the Respondent of the dispute;
- whether 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;
- whether 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.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and widely used BAYER registered trademark. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and widely used BAYER registered trademark, which the Panel considers, as asserted above by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. The implied affiliation caused by the construction of the disputed domain name is reinforced given the Complainant’s use of the domain name <agro.bayer.com.pl> for its Polish subsidiary. Accordingly, the intent of the Respondent to cause such an association is underscored given the fraudulent use of the disputed domain name for an email scheme impersonating Complainant’s Polish subsidiary.

Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well-known and widely used BAYER registered trademark and also the valuable goodwill that the Complainant has established in that trademark through the Complainant’s prior commercial use, without any rights or justification for doing so.

Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. Notwithstanding the fraudulent email scheme, the use of the confusingly similar disputed domain name to resolve to a parking page with links to competitors of the Complainant does not constitute a bona fide offering of goods or services. Furthermore, the use of the disputed domain name for purposes of impersonating the Complainant’s subsidiary in an email is such use that can never confer rights or legitimate interests on the Respondent. See section 2.13 of the WIPO Overview 3.0.

Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(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 [its] website or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name confusingly similar to the Complainant’s well-known and widely used BAYER registered trademark, is trading unfairly on the Complainant’s valuable goodwill established in such trademark.

Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by, or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance; but, as noted above, the Respondent appears to have been fully aware of the notoriety of the Complainant and its worldwide business activity, as well as its well-known and widely used BAYER registered trademark and its prior commercial use. The Panel’s finding is reinforced given the Respondent’s use of the disputed domain name to impersonate the Complainant’s subsidiary, the use of the Complainant’s trademark in both the construction of the disputed domain name but also throughout the employment offer sent through the impersonating email, and the fact that the disputed domain name not only replicates the Complainant’s BAYER mark entirely but is also confusingly similar to the Complainant’s domain name <agro.bayer.com.pl>.

Furthermore, the use of the confusingly similar disputed domain name to resolve to a parking page with links to competitors of the Complainant constitutes bad faith within the context of paragraph 4(b)(iv) of the Policy.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent in the circumstances of this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its contentions, as set out above, especially the use by the Respondent of the disputed domain name for fraudulent purposes and also as a parking page for connecting to the Complainant’s competitors’ products, and also based on the previous UDRP cases cited by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <agro-bayer-pl.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: December 27, 2021