WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Privacy Protect, LLC (PrivacyProtect.org) / Henry Armando
Case No. DCO2019-0027
1. The Parties
The Complainant is Bayer AG, Germany, represented by BPM Legal, Germany.
The Respondents are Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Henry Armando, Colombia.
2. The Domain Name and Registrar
The disputed domain name <bayerandina.com.co> is registered with Central Comercializadora de Internet S.A.S. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2019. On July 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2019, 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 July 23, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 1, 2019.
The Center sent an email communication to the parties on July 23, 2019 regarding the language of the proceeding, as the Complaint was submitted in English and the language of the registration agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on August 1, 2019. The Respondent did not submit any communication regarding the language of the proceeding.
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 August 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2019.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on September 4, 2019. 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.
The Complainant in the Complaint requested English as the language of the proceedings, notwithstanding that the registration agreement is in Spanish. The Panel decided to grant the Complainant’s request for the reasons identified in section 6.A of this Decision.
4. Factual Background
This Complaint is based on the following grounds:
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 history of the Company began in 1963 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 that time.
The Complainant is represented by over 300 affiliates and has more than 100,000 employees worldwide. The Complainant, itself or through the subgroups like HealthCare and CropScience, does business on all five continents, manufacturing and selling numerous of products, inter alia human pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals. Furthermore, the Complainant is inter alia doing business also in the United States and in Colombia, including the region of Andina, where the Respondent is presumably located, through its local subsidiaries BAYER Corporation.
The Complainant has presented evidence that certified the ownership of about 700 registrations and pending applications of the word mark BAYER alone, including numerous registrations in the United States and Colombia, where the Respondent is located (together as the BAYER Marks).
Sample of Trademark BAYER in the United States:
Trademark BAYER; with registration number 1482868, registered on April 5, 1988, for classes 1, and 5;
Trademark BAYER; with registration number 2213149, registered on December 22, 1998, for class 5;
Trademark BAYER; with registration number 3222255, registered on March 27, 2007, for classes 1, 5, and 31;
Trademark BAYER; with registration number 4651390, registered on December 9, 2014, for class 5;
Trademark BAYER; with registration number 4860203, registered on November 24, 2015, for classes: 9, 10, and 37.
The Complainant’s trademark registrations cover an extensive range of goods and services.
Furthermore, the Complainant has a strong presence on the Internet with the official website “www.bayer.com”. Due to the Complainant’s global online use of its BAYER Marks, such mark is obviously and solely connected with the Complainant.
The Respondent registered the disputed domain name on February 19, 2019.
The disputed domain name is currently not used in connection with an active website.
The Respondents in this administrative proceeding are PrivacyProtect, LLC (PrivacyProtect.org) (the “First Respondent”) and Henry Armando (the “Second Respondent”). The Complainant requested to address the Complaint against both Respondents referring to them hereinafter as the Respondent, whenever no distinction amongst them is necessary.
5. Parties’ Contentions
According to the Complainant, the disputed domain name <bayerandina.com.co> reproduces the BAYER Marks which are well-known all over the world.
Also, the Complainant is a multinational company in the pharmaceutical field which develops, manufactures, distributes and sells a wide variety of pharmaceutical and other health products under the BAYER Marks. It has used its trademarks for years and has invested a substantial amount of financial resources over their history to advertise and promote its BAYER Marks in countries all over the world. The Complainant argues that the disputed domain name reproduces the Complainant’s trademarks as the dominant part and is confusingly similar to its trademark, regardless of the addition of the term “andina” – which remains highly descriptive considering the Complainant’s activities in the five continents, including the region of Andina.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and submits that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise.
Section 4.5.1 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides as follows:
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The credibility of any submissions by the parties and in particular those of the respondent (or lack of reaction after having been given a fair chance to comment) are particularly relevant.
Where it appears the parties reasonably understand the nature of the proceedings, panels have also determined the language of the proceeding/decision taking account of the panel’s ability to understand the language of both the complaint and the response such that each party may submit pleadings in a language with which it is familiar.”
In this case, the Complainant requested the present proceedings to be conducted in English. The first Respondent is a United States company that use the English as the first language. The Second Respondent has used a privacy service which is a company located in the United States. To register for such privacy shield it is more than likely that Second Respondent needed to submit such request in English and therefore knows the language. The website of the aforementioned privacy service is provided only in English. The Complainant has established that Spanish is not their main language that they use for business and other type of communications, also they have established that submitting all documents in Spanish in these proceedings would result in an unnecessary delay and the Complainant would have to incur in substantial expenses for translation. As a result, the Complainant would be unfairly disadvantaged.
Previous UDRP panels have granted similar requests regarding the language of the proceeding. For example Roraj Trade, LLC v. lishijie/Domain Admin, Information Privacy Protection Services Limited, WIPO Case No. D2016-1222.
The Panel also took into account that the Respondent had the opportunity to argue or request Spanish as the language of the proceeding, but the Respondent decided to present no arguments on this regard.
Based on the above and the fact that translating all the documents would be expensive in terms of time and expenses, the Panel does not consider detrimental to the Respondent if English is adopted as the language of the proceedings. Therefore, the Panel grants the Complainant’s request and decides English as the language of the proceedings.
B. Identical or Confusingly Similar
The Complainant provided enough evidence of their numerous above-mentioned BAYER Marks around the world.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. Due to the fact that the disputed domain name incorporates the Complainant’s BAYER Marks in its entirety, the addition of the dictionary term “andina” does not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview 3.0.
Previous UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for the purposes of the Policy”. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
It has been generally accepted by UDRP panels that the addition of dictionary or other geographical terms such as “andina” is irrelevant when considering whether a domain name is identical or confusingly similar to a trademark.
For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainant.
C. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy,
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence, demonstrating rights or legitimate interests in the disputed domain name. See section 2.1 of the WIPO Overview 3.0. In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.
The Complainant declared that it is not affiliated or associated with the Respondent in any way. The Complainant argued that it has not authorized or given any license to the Respondent in order to register, use or include the Complainant’s trademarks in a domain name. Furthermore, the Complainant established that the Respondent is not commonly known by the disputed domain name or the BAYER Marks.
The Complainant stated that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks.
Finally, in this case The Respondent is in default. Therefore the Respondent did not present any evidence which suggests that 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 “bayerandina”.
The Panel finds that the Respondent is not using the disputed domain name for a bona fide offering of goods or services nor has provided any evidence showing demonstrable preparations to use the disputed domain name. The Respondent is using the disputed domain name in association with an inactive page, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See section 2.2 of the WIPO Overview 3.0.
Moreover, the Panel finds that, given the composition of the disputed domain name, it carries a risk of implied affiliation, sponsorship or endorsement by the Complainant in “Colombia” or other countries of the “Andina region”. See section 2.5.1 of the WIPO Overview 3.0. Also, the BAYER Mark has been previously recognized by previous UDRP panels as well-known. See 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.”; Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115, <bayerchemicals.net> et al., “Indeed, as also recognized in previous WIPO decisions cited in the Complaint, the BAYER trademark is a worldwide renown trademark”; Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205, <www.bayer.com> “The Complainant has furthermore established that it has an established goodwill and reputation in many jurisdictions throughout the world”.
For all the above-mentioned reasons, the Panel finds that the Complainant has fulfilled the second element of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that the Complainant’s BAYER Mark are well-known throughout the world. Thus, the Respondent knew or should have known of the Complainant’s BAYER Mark at the time of registration of the disputed domain name, namely February 19, 2019. See section 3.2.2 of the WIPO Overview 3.0.
Recognizing the famous nature of the BAYER Mark in the world, the Panel finds that the Respondent’s knew of the Complainant’s rights at the time of registration of the disputed domain name, and that the disputed domain name was chosen by the Respondent in order to capitalize on the Complainant’s goodwill and reputation.
The disputed domain name was registered and is also being held in bad faith.
At this moment the disputed domain name resolves to an inactive website.
It has been established in various UDRP decisions that passive holding under the appropriate circumstances would not prevent a finding of bad faith. The leading case in this regard is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which 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 was registered and is being used in bad faith due to (i) the reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response, (iii) the use of a privacy service, and (iv) the nature of the disputed domain name, which carries a risk of implied affiliation.
For all the foregoing reasons the Panel finds that the disputed domain name <bayerandina.com.co> 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 <bayerandina.com.co> be transferred to the Complainant.
Ada L. Redondo Aguilera
Date: September 15, 2019