WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Ruud van der Linden
Case No. D2017-0328
1. The Parties
The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is Ruud van der Linden of Schiedam, the Netherlands, represented by Huijzer Advocaten B.V., the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <bayer-monsanto.org> (the "Domain Name") is registered with Cronon AG Berlin, Niederlassung Regensburg (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2017. On February 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 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 March 3, 2017, the Center sent an email communication to the Parties in English and German regarding the language of the proceeding. On March 6, 2017, the Respondent requested that Dutch or alternatively English be the language of the proceeding. On the same day, the Complainant requested that English be 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 in English, and the proceedings commenced on March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. The Respondent did not submit any response.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on April 6, 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 in the fields of health care, nutrition and plant protection. The company name "Bayer" dates back to 1863, and the Complainant has been manufacturing and marketing pharmaceutical products since 1888 under the BAYER trademark. In the Netherlands, where the Respondent is located, the Complainant has a local subsidiary trading under the name "Bayer B.V".
The Complainant owns some 700 registrations and pending applications of the word mark BAYER alone, including European Union Trade Mark ("EUTM") Registration No. 011628625, registered on August 19, 2013, and International Registration No. 182970, registered on February 25, 1955, that cover the Netherlands (the "BAYER Marks").
On May 12, 2016, rumors circulated in the international media in connection with the Complainant's potential bid for its competitor "Monsanto Co". The Complainant and Monsanto agreed on their merger in September 2016.
The Respondent registered the Domain Name on May 21, 2016. The Domain Name is not used in connection with an active website. The Respondent is the registered owner of additional domain names, some of which seem to target third parties' trademarks.
5. Parties' Contentions
The registration agreement is in German. The Complainant requests the present proceedings to be commenced in English, as the Respondent is the registered owner of numerous domain names built of common English words. The Complainant therefore argues that the Respondent can understand English. The Complaint is involved in a number of complaints filed with regard to registrations targeting the merger between the Complainant and the company Monsanto, Co. All these UDRP complaints have been filed in English. If the Complainant were required to submit all documents in German, the UDRP proceeding would be unduly delayed and the Complainant would have substantial expenses for translation. As a result, the Complainant would be unfairly disadvantaged.
The Complainant argues that the Complainant's BAYER Marks have acquired a significant goodwill and are widely known. Previous decisions under the UDRP have already found that the Complainant's BAYER Marks are well-known. The fact that the Domain Name includes the third-party trademark MONSANTO does not eliminate the similarity between the Complainant's trademark and the Domain Name. On the contrary, the Complainant finds that the use of the BAYER Marks in connection with the MONSANTO marks strengthens the likelihood of confusion.
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 Marks. Furthermore, the Complainant cannot see any evidence of the Respondent's use of, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. There is no evidence that suggests that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, or is commonly known by the Domain Name.
As to bad faith, the Complainant points out that the Respondent must have known of the Complainant and its trademark. The Respondent has also registered several other domain names including third parties' trademarks. Moreover, the Respondent registered the Domain Name only nine days after international media first reported about the potential bid for Monsanto Co. The Domain Name is not actively used. This does not obstruct a finding of bad faith use under the Policy. In the light of the overall circumstances of a domain name's registration, passive holding of a domain name may equate to the active use of a domain name.
The Respondent did not reply to the Complainant's contentions. However, on March 6, 2017, the Center received the following email:
"I act as legal representative of Mr. R. (Ruud) van der Linden, residing in Schiedam, The Netherlands. In response to your email dd March 3, 2017 ("Language of Proceedings") concerning the domainname www.bayer-monsanto.org, I can advise you that the domainname is registered at www.strato.nl in the Dutch language. Therefore it will be wishful to proceed in the Dutch language.
If this is not possible we can agree with proceedings in English.
As it is to my client we can first act through mediation with a first proposal for a fast settlement.
Awaiting for your reply.
6. Discussion and Findings
6.1. Language of the proceeding
Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties. Importantly, paragraph 11(a) also states that the determination of the language of the proceeding is "subject to the authority of the Panel […], having regard to the circumstances of the administrative proceeding".
The language of the Registration Agreement is German. The Complainant submitted its Complaint in English, and requested that English be the language of the proceeding. The Complainant argues that the Respondent can understand English. Taking into account that the Complaint is involved in a number of UDRP complaints filed with regard to domain name registrations targeting the agreed merger, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation if the Complainant were required to submit all documents in German.
The Panel finds that the Respondent is most likely to understand English and has been given a fair chance to object. The Respondent does not appear to have any specific connection to Germany or the German language. On contrary, as confirmed by the email from his legal representative, if Dutch is not an option, the Respondent prefers English to German.
The Panel determines that the language of this proceeding will be English.
6.2. Substantive Issues
Turning to the merits of the case, in order to prevail, the Complainant must prove the three elements in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark BAYER. The trademark is well-known. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant's trademark BAYER with the third-party trademark MONSANTO. The Panel finds that the Complainant's trademark is identifiable in the Domain Name and the addition of the MONSANTO mark does not distinguish the Domain Name from the Complainant's trademark. The confusion may, in fact, be increased by the addition as the Complainant's intention to merge with the Monsanto pharmaceutical company has been reported in the press.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") ".org".
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way.
The Respondent is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name. There is no evidence of the Respondent's use, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. There is no evidence that suggests that the Respondent is making a legitimate noncommercial or fair use of the Domain Name or the name "Bayer-Monsanto".
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent must have been aware of the Complainant's trademark and its business when the Respondent registered the Domain Name. The timing of the registration of the Domain Name shortly after the Complainant announced its intentions to bid for the "Monsanto Co." company points to bad faith.
The Complainant has also produced evidence that the Respondent with no apparent legitimate interest is registering domain names containing names of third parties.
The fact that the Domain Name is not actively used does not hinder a finding of bad faith use under the Policy. Passive holding may equate with active use of a domain name, see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant's trademark is well known, the Respondents has provided no evidence of any good faith use, and the Panel cannot conceive of any good faith use of the Domain Name. Moreover, the registration took place shortly after the merger talks in the news, and the Respondent has not provided any substantive response to the Complaint.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bayer-monsanto.org> be transferred to the Complainant.
Date: April 10, 2017