WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v.Privacy Service Provided by Withheld for Privacy ehf / Sandra Abidemi
Case No. D2021-3968
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 / Sandra Abidemi, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <bayeragro-pl.com>(the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2021. On November 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 26, 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 November 29, 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 November 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 December 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on January 12, 2022. 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 the fields of healthcare, nutrition and plant protection. Global headquarters are in Leverkusen, Germany.
The Complainant’s stock is included in nearly all the major share indices, traded on all German stock exchanges and included in the DAX 40, a Blue-Chip stock market index consisting of the 40 major German companies trading on the Frankfurt Stock Exchange.
The company name BAYER dates back to 1863, when the firm “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 that time.
The Complainant is represented by over 250 affiliates and has 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.
The Complainant provides information on its subgroup CropScience online inter alia at “http://www.cropscience.bayer.com”.
In some countries, the Complainant also uses the word “agro” to market its CropScience products, inter alia in Poland (“https://www.agro.bayer.com.pl/”) and Brazil (“https://www.agro.bayer.com.br/”).
The Complainant is the owner of about 700 registrations and pending applications of the word mark BAYER alone, including the International Trademarks number 1462909 and number 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.
Furthermore, the Complainant has a strong presence on the Internet. The Complainant and its subsidiaries own hundreds of domain name registrations containing the BAYER trademark.
The Disputed Domain Name was registered on November 21, 2021 and resolved to an inactive website.
5. Parties’ Contentions
The Complainant argues that the Disputed Domain Name is confusingly similar to the BAYER trademark in which it claims to have rights. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights due to the fact that the Disputed Domain Name fully incorporates the well-known BAYER trademarks and is confusingly similar to such marks.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a bona fide use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant.
The trademark BAYER is not a word any market participant or other domain registrant would legitimately choose unless seeking to create an impression of an association with the Complainant.
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 BAYER trademarks.
The Complainant argues that 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.
It is hard to believe that the Respondent registered the Disputed Domain Name unaware of the Complainant and its rights and its highly distinctive and well-known BAYER trademarks.
The Respondent has a history of targeting third parties’ trademarks including BAYER by registering the corresponding Disputed Domain Name.
As a final point, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
In order to prove the first element of the Policy, the Complainant must first establish that there is a trademark or service mark in which it has rights. In the present case, the Complainant has established the ownership of BAYER trademarks. The trademarks have been registered and used in connection to the Complainant’s services and products.
The Disputed Domain Name <bayeragro-pl.com> reproduces the Complainant’s BAYER trademark in its entirety. The incorporation of the Complainant’s BAYER trademark is followed by the words “agro-pl”, which does not prevent a finding of confusing similarity.
In the present case, the BAYER trademark is recognizable.
As stated at section 1.8 of the 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 would not prevent a finding of confusing similarity. In this case, the Panel finds that the Complainant’s BAYER trademark is clearly recognizable within the Disputed Domain Name.
Additionally, it is well established that generic Top-Level Domains (“gTLD”) (in this case “.com”) is generally disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights (see section 1.11 of the WIPO Overview).
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s BAYER trademark. Accordingly, the Complainant has complied with the first of the three elements of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie case demonstrating that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent see section 2.1 of the WIPO Overview 3.0.
The Panel notices that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights, noting BAYER is a well-known trademark own by the Complainant. The Respondent’s registration and use of the Disputed Domain Name was not authorized by the Complainant.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Disputed Domain Name is not being used in connection to an active website.
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been refuted by the Respondent.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant has complied with the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith namely:
“(i) circumstances indicating that you [the registrant] have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In the present case, the Panel finds it is hard to believe that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name in November 21, 2021. The Disputed Domain Name includes the Complainant’s distinctive and well-known BAYER trademark in its entirety with the addition of the words “agro-pl”.
The Panel notes that the Complainant trademark BAYER is well known throughout the world. Thus, the Respondent knew or should have known of the Complainant’s BAYER trademark at the time of registration of the disputed domain. See section 3.2.2 of the WIPO Overview 3.0.
Recognizing the famous nature of the BAYER trademark in the world, the Panel finds that the Respondent’s knowledge of the Complainant’s rights at the time of registration of the Disputed Domain Name that was chosen by the Respondent was in order to capitalize on the Complainant’s goodwill and reputation. Moreover, the Panel finds that the composition of the Disputed Domain Name is such as bayeragro-pl.com>, that it may have been chosen to suggest sponsorship or endorsement by the Complainant in the agro industry.
Also, BAYER as a trademark has been previously recognized by other UDRP Panelist as a well-known trademark, for example: Bayer Aktiengesellschaft v. K Dangos, WIPO Case No. D2002-0138 (<bayer-healthcare.org> et al.) “First, there is no dispute that Bayer is a very powerful and well known trademark.”; WIPO Case No. D2002-1115 (<bayerchemicals.net> et al.) Bayer Aktiengesellschaft v. Dangos & Partners “Indeed, as also recognized in previous WIPO decisions cited in the Complaint, the BAYER trademark is a worldwide renown trademark”; WIPO Case No. D2001-0205 (<wwwbayer.com>) Bayer Aktiengesellschaft v. Yongho Ko “The Complainant has furthermore established that it has an established goodwill and reputation in many jurisdictions throughout the world […]”.
At the time of the decision, the Disputed Domain Name resolved to an inactive website.
It has been established in various UDRP decisions that passive holding under the appropriate circumstances does not prevent a finding of bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it was found that in order to establish that the registrant was using a domain name in bad faith it was not necessary to find that it had undertaken any positive action in relation to the domain name. Indeed, in circumstances of inaction (“passive holding”), this behavior falls within the concept of the domain name “being used in bad faith”. See also, section 3.3 of the WIPO Overview 3.0. From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
In the present case, the Panel finds that the Disputed Domain Name is being used in bad faith due to the following factors: (i) the reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response, (iii) the Respondent’s concealing its identity behind a privacy service, and (iv) the fact that the disputed domain name resolves to an inactive website.
For all the foregoing reasons the Panel finds that the Disputed Domain Name <bayeragro-pl.com> has been both registered and used in bad faith.
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 <bayeragro-pl.com> be transferred to the Complainant.
Ada L. Redondo Aguilera
Date: January 26, 2022