WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Private Registration / Mark Nowak

Case No. D2017-1706

1. The Parties

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

The Respondent is Private Registration of Denver, Colorado, United States of America (“US”) / Mark Nowak, Melbourne, Florida, US.

2. The Domain Name and Registrar

The disputed domain name <bayermaterialsciencenafta.com> is registered with DropCatch.com 1269 LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2017. On September 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2017, 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 September 11, 2017, 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 September 16, 2017.

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 September 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2017.

After being served with the Complaint on September 16, 2017, the Respondent sent an email to the Complainant’s representative, in order to sell the domain for USD 2,000. The Complainant’s representative informed the Center.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on November 1, 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, whose headquarters are in Germany. 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 100,000 employees worldwide.

It used to have a subgroup named Bayer Material Science, which is legally and economically independent and operates under Covestro AG since September 1, 2015.

The Complainant and its subsidiaries own hundreds of domain name registrations containing the BAYER Mark.

The Complainant is the registered owner of BAYER trademarks:

- American trademark BAYER No 1482868, registered on April 5, 1988, and protected in classes 1 and 5

- American trademark BAYER No 1484862, registered on April 19, 1988, and protected in classes 1 and 2

- American trademark BAYER No 2213149, registered on December 22, 1998, and protected in classes 5 and 10

- American trademark BAYER No 3222255, registered on January 9, 2007, and protected in classes 1, 5 and 31

- American trademark BAYER No 4651390, registered on December 9, 2014, and protected in class 5

- American trademark BAYER No 4860203, registered on August 19, 2014, and protected in classes 9, 10 and 37

The disputed domain name <bayermaterialsciencenafta.com> was registered on April 17, 2017 and resolves to a website that reproduces the BAYER CROSS trademark, provides content and images of the Complainant and advertises third parties’ products.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Complainant has a strong presence on the Internet. Due to the global online use of the BAYER trademark, such trademark is obviously and solely connected with the Complainant. As a result, the BAYER trademark has acquired a significant goodwill.

The Complainant relies on prior UDRP decisions which decided that the BAYER trademark is well-known.

The disputed domain name <bayermaterialsciencenafta.com> resolves to a website that reproduces the BAYER CROSS trademark, provides content and pictures of the Complainant and includes links to
third-party websites, where, inter alia, liquids for e-cigarettes are offered for sale.

The email contact address mentioned on the WhoIs is the same as the email contact address provided on the WhoIs of the domain name <e-liquid-cigarette.com> The Respondent is the registrant of another domain name <e-liquid-depot.com> which redirects to the website “www.eliquiddepot.com”.

The address mentioned on the WhoIs of the disputed domain name is identical to the address mentioned on the contact page on the website “www.purecigs.com”.

The disputed domain name fully incorporates the BAYER trademark. The fact that it includes the additional words “Material”, “Science” and “NAFTA” does not eliminate the similarity between the BAYER trademark and the disputed domain name. It is well established that confusing similarity is given where a trademark is recognizable as such within the domain name.

The disputed domain name is composed of the BAYER trademark with the addition of the words “Materials” and “Science”. As already explained “BAYER Material Science” was the name of one of the Complainant’s former subgroups.

The addition of the acronym “NAFTA”, which designates the free trade agreement between the United States of America, Canada and Mexico, suggests that the website concerns the presence of Bayer AG or the regulation of its products inside the NAFTA countries.

Therefore, the disputed domain name is confusingly similar to the BAYER trademarks.

The Respondent has no right or legitimate interest, since he is not a licensee of the Complainant and was not authorized to use any of the Complainant’s trademarks or domain names.

It is sufficient that the Complainant shows a prima facie evidence in order to shift the burden of proof on the Respondent.

The BAYER trademarks are well-known and BAYER is not a word that a third-party would legitimately choose unless seeking to create an impression of an association with the Complainant.

The Respondent is not using the disputed domain name with a bona fide offering of goods or services, since it is used to advertise third parties’ products. There is also no evidence of a legitimate non-commercial or fair use of the disputed domain name.

Under these circumstances, there is no doubt that the respondent has no rights or legitimate interests in respect of the disputed domain name.

Concerning bad faith registration, the Complainant contends that the Respondent could not ignore the Complainant’s trademark rights when he registered the disputed domain name.

Besides, the Respondent is using the famous BAYER CROSS logo on its website.

Concerning bad faith use, the Complainant contends that, by advertising third parties’ products, the Respondent is using the disputed domain name to divert traffic intended for the Complainant’s website and the BAYER trademark.

Moreover, the BAYER trademark is used to obtain revenues from the diversion of Internet users.

The fact that the Respondent registered a 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 by someone with no connection with the products suggests opportunistic bad faith.

The Respondent’s use of the disputed domain name is qualified to disrupt the Complainant’s business and constitutes an abusive threat hanging over the head of the Complainant, which also supports a finding of bad faith.

Using a privacy shield service to hide one’s identity is another proof of bad faith.

The Complainant asserts that in the meaning of paragraph 4(b)(iv) of the Policy the Respondent’s use attempts 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

Therefore, the disputed domain name was registered and is used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has clearly established its registered rights in the BAYER trademark.

The disputed domain name <bayermaterialsciencenafta.com> is composed of the Complainant’s BAYER trademark. BAYER is the first term and is therefore the term that draws the attention.

The addition of the terms “material” and “science” to the BAYER trademark implies that the website is edited by the former Bayer AG’s subgroup, called Bayer Material Science.

The addition of the final acronym presence of the acronym “NAFTA”, which designates the free trade agreement between the United States of America, Canada and Mexico, suggests that the website concerns the presence of Bayer AG or the regulation of its products in the NAFTA countries.

The addition of the terms “Material Science NAFTA” are only descriptive and do not eliminate any likelihood of confusion with the BAYER trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BAYER trademark. The condition of paragraph 4(a)(i) if the Policy has been satisfied.

B. Rights or Legitimate Interests

As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, its 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark 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 trademark or service mark at issue.

The Respondent did not respond to the Complaint. Consequently it did not provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.

In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s absence of rights or legitimate interests in the disputed domain name.

The Respondent has not been licensed or authorized to use the Complainant’s well-known BAYER trademarks or to register the disputed domain name.

The Respondent does not make a fair or noncommercial use of the disputed domain name.

Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by an Administrative Panel to be evidence of bad faith registration and use of a domain name. It provides that:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you 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 on-line 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.”

The Respondent could not ignore the Complainant’s rights in the well-known BAYER trademark when it registered the disputed domain name.

After receiving the Complaint, the Respondent’s reaction was to offer to sell the disputed domain name to the Complainant for the price of USD 2,000.

Choosing to register the disputed domain name through a privacy shield service to hide one’s identity further suggests bad faith registration.

The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to sell it and to make a commercial gain.

By registering the disputed domain name and by using the BAYER logo on his website, the Respondent clearly and deliberately intends to create an impression of an association with the Complainant.

It’s established that the Respondent is involved in selling liquid for e-cigarettes and uses the disputed domain name to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name (Policy, paragraph 4(b)(iv)). This contemplates bad faith use for the purposes of the Policy.

Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.

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 <bayermaterialsciencenafta.com> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: November 15, 2017