WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Xu Pengzhi

Case No. DCO2017-0039

1. The Parties

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

The Respondent is Xu Pengzhi of Baoding, Hebei, China.

2. The Domain Name and Registrar

The disputed domain name <bayer-monsanto.co> is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2017. On October 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2017, 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.

On October 18, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On October 20, 2017, 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 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 October 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2017.

The Center appointed Sok Ling MOI as the sole panelist in this matter on November 23, 2017. 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 health care, nutrition and plant protection. The use of the corporate name “Bayer” dates back to 1863. The Complainant has been manufacturing and marketing pharmaceutical products under the BAYER trade mark since 1888.

The Complainant is represented by over 250 affiliates and has more than 100,000 employees worldwide. In China where the Respondent is located, the Complainant has a local subsidiary trading under the name of “Bayer (China) Limited”, serving the China market through its website at “www.bayer.com.cn”.

The Complainant is the proprietor of some 700 trade mark registrations and pending applications for the word mark BAYER across the world, including in China, including the following:

Jurisdiction

Trade Mark

Registration No.

Registration Date

Class

USA

BAYER

155612

June 6, 1922

5

USA

BAYER

1482868

April 5, 1988

1 & 5

USA

BAYER

1484862

April 19, 1988

1

China

BAYER

76013

August 2, 1977

1

China

BAYER

76022

August 2, 1977

3

China

BAYER

1317774

September 28, 1999

5

The Complainant and its subsidiaries are also the proprietors of hundreds of domain name registrations containing the BAYER trade mark, including <bayer.com> and <bayer.com.cn>.

On May 12, 2016, international media reported a potential bid by the Complainant for its competitor Monsanto Co. The merger was subsequently agreed on September 14, 2016.

The disputed domain name <bayer-monsanto.co> was registered on September 15, 2016, one day after the agreed merger. According to the evidence submitted by the Complainant, the disputed domain name does not resolve to any active website and appears never to have done so in the past.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its BAYER trade mark. The Complainant further contends that 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.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Respondent, presumably a Chinese native, did not comment on the language issue.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and

(b) according to the evidence submitted by the Complainant, the Respondent has registered several other domain names which contain Latin characters and English words, such as <lvmh- dior.com>, <lvmh-kering.com>, <lvmhdior.com>, <siemens-bombardier.com> and <att-directv.com>.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the 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 has been registered and is being used in bad faith.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in BAYER by virtue of its use and registration of the same as trade mark.

The disputed domain name incorporates the Complainant’s trade mark BAYER in its entirety. The disputed domain name also incorporates the MONSANTO mark owned by a third party in its entirety. The addition of the “-“ symbol and the third party trade mark MONSANTO does not eliminate the similarity between the disputed domain name and the Complainant’s trade mark. On the contrary, the addition of the MONSANTO mark may potentially increase the confusion amongst persons who have knowledge of the merger between the Complainant and the Monsanto pharmaceutical company. Such persons may believe the disputed domain name to be associated with the merged entity.

The addition of the generic Top-Level Domain (“gTLD”) “.co” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, 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; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) 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 trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the BAYER trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “bayer” or “monsanto.

As the disputed domain name does not resolve to any active website, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name. Since the Respondent did not file a response to the Complaint and has thus failed to offer any explanation for his registration of the disputed domain name, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of the 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 trade mark 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.

The Complainant and its trade mark BAYER enjoy a strong reputation worldwide. BAYER is distinctively associated with the Complainant and is recognised as a well-known mark. The Panel notes that the BAYER trade mark has been registered in China since 1977. It is highly unlikely that the Respondent was unaware of the Complainant and its trade mark when it registered the disputed domain name. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the BAYER trade mark and its extensive use by the Complainant. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.

Further, the Panel finds it beyond coincidental that the Respondent registered the disputed domain name one day after the agreed merger between the Complainant and its competitor Monsanto Co was announced. The timing of the registration points to opportunistic bad faith.

The Panel notes that, according to the evidence submitted by the Complainant, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.2.

The Panel notes that the Respondent has registered several other domain names which contain well-known third party brand names, such as <lvmh- dior.com>, <lvmh-kering.com>, <lvmhdior.com>, <siemens-bombardier.com> and <att-directv.com>. This pattern of conduct suggests that the Respondent is engaged in cybersquatting activities, and has in all likelihood registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name. The circumstances under paragraph 4(b)(ii) of the Policy clearly apply.

The Respondent has not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under 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 <bayer-monsanto.co> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: December 8, 2017