WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Patrick Ashmen
Case No. D2017-2532
1. The Parties
The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is Patrick Ashmen of Huntsville, Alabama, United States of America ("United States"), self-represented.
2. The Domain Name and Registrar
The disputed domain name <bayermonsano.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2017. On December 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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.
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 December 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 15, 2018. On January 5, 2018, the Center received three email communications from the Respondent. The Respondent did not file any formal Response.
The Center appointed Frank Schoneveld as the sole panelist in this matter on February 12, 2018. 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.
By email of February 27, 2018 the Complainant and Respondent were informed that the date by which the Administrative Panel was required to forward its decision to the Center had been extended to March 5, 2018.
4. Factual Background
The Complainant is a multinational pharmaceutical and life sciences company. The Complainant is the holder of the following trademark registrations of the mark BAYER in the United States Patent and Trademark Office ("USPTO"):
- USPTO Registration Number 1482868 registered on April 5, 1988
- USPTO Registration Number 1484862 registered on April 19, 1988
- USPTO Registration Number 2213149 registered on December 22, 1998
- USPTO Registration Number 3222255 registered on March 27, 2007
- USPTO Registration Number 4651390 registered on December 9, 2014
The Complainant is the owner of the domain names <bayer.com> registered on January 25, 1996 and <bayer.us> registered on April 19, 2002.
The disputed domain name was registered on September 14, 2016. The disputed domain name resolves to a parking website with advertising links. The disputed domain name is offered for sale at "www.godaddy.com".
5. Parties' Contentions
The Complainant states that the Complainant is a global enterprise with global headquarters in Leverkusen, Germany, and has over 250 affiliates and more than 100,000 employees worldwide, doing business on five continents, manufacturing and selling numerous products, inter alia, human pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals. The Complainant indicates that the Complainant's stock is included in nearly all the major share indices, traded on all German stock exchanges and is included in the DAX 30, a stock market index consisting of 30 major German companies trading on the Frankfurt Stock Exchange, and that it is regularly listed as one of the world's leading companies in various categories, providing a printout of the overview of the Complainant's rankings listed at the website "www.rankingthebrands.com". This website ranks Bayer as number 16 in a list of the "Top 50 Global Pharma Companies 2017" in terms of brand recognition.
The Complainant says that the company name "Bayer" dates back to 1863, when the firm of "Friedrich Bayer & Co." was established in the town of Elberfeld, now part of the city of Wuppertal in Germany and that in 1881, the name was transferred to a stock corporation called "Farbenfabriken vorm. Friedrich Bayer & Co.", and that 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 indicates that, in addition to <bayer.com> and <bayer.us>, the Complainant and its affiliates own hundreds of domain name registrations containing the BAYER mark. The Complainant contends that a search for the query "bayer" at the website "www.google.com" shows that nearly all of the search results refer to the Complainant or its subsidiaries.
The Complainant contends that as a result of the Complainant's exclusive and extensive use, the Complainant's BAYER marks have acquired significant goodwill and are widely known. The Complainant refers to 21 previous decisions decided under the UDRP that have found that the Complainant's BAYER marks are well known.
The Complainant informs that Bayer AG and Monsanto agreed to a merger on September 14, 2016 and provides copies of relevant media articles on this merger agreement. The Complainant asserts that on May 12, 2016, international media first reported about the fact that the Complainant was exploring a potential bid for Monsanto. The Complainant states that it uses a Media section in its website "www.bayer.com" for the purposes of public awareness on the matter of the merger between Bayer AG and Monsanto Company, and the Complainant has created the website "www.advancingtogether.com", where constant and official information is given on this intended merger.
The Complainant contends that the disputed domain name (i) is used in connection with a parking website featuring, inter alia, advertising links related to food supplements ("Nahrungsergänzungsmittel" in German) in direct competition to the Complainant, and (ii) the disputed domain name is offered for sale at GoDaddy, where the disputed domain name is categorized as "Business – Agriculture".
The Complainant argues that:
(a) the disputed domain name fully incorporates the well-known BAYER marks and is confusingly similar to such marks;
(b) it is well established that the Top-Level Domain, such as ".com" or ".net", is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name; and
(c) the fact that the disputed domain name includes the word "monsano", which is an obvious typo of the third party trademark MONSANTO, does not eliminate the similarity between Complainant's trademark and such domain name, and on the contrary, the use of the BAYER mark in combination with the MONSANTO mark strengthens the likelihood of confusion, as the disputed domain name directly refers to the Complainant and its intention to merge with the company Monsanto. In support of this argument the Complainant refers to five UDRP panel decisions which concern domain names that include the names Bayer and Monsanto.
The Complainant contends that it is a consolidated principle that the burden of proof with regard to the rights or legitimate interests of the respondent lies on the complainant. However, satisfying the burden of proving a lack of the respondent's rights or legitimate interests in respect of a domain name according to paragraph 4(a) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, the Complainant contends that it is sufficient that the Complainant shows prima facie evidence in order to shift the burden onto the Respondent.
The Complainant argues that the BAYER marks are well known and obviously connected with the Complainant and its products, and that "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 states that it 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, asserting that these circumstances themselves are sufficient to constitute a prima facie case showing the Respondent's absence of rights or legitimate interests in the disputed domain name.
The Complainant submits, in addition, 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 within the meaning of paragraph 4(c)(i) of the Policy; and
- in fact, the Respondent is using the disputed domain name in connection with a parking website containing advertising links to third parties' websites, including links to websites offering competing products, and is offering the disputed domain name for sale, and that such use is not a bona fide use under the Policy.
The Complainant contends that there is also no evidence which suggests that the Respondent 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 "Bayer Monsano", and that under these circumstances, there is no doubt that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
The Complainant contends that:
- based on the Complainant's high profile worldwide, it is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant and its rights in its highly distinctive and well-known BAYER marks;
- the Respondent registered the disputed domain name the same day when international media reported about the fact that the Complainant has signed the definitive acquisition agreement of the Monsanto company by Bayer, which evidences that the Respondent is an "alert entrepreneur deliberately targeting the Complainant and its trademarks with the registration of the disputed domain name"; and
- the Respondent itself categorized the disputed domain name as "Business – Agriculture" which makes it clear that the Respondent is perfectly aware of the Complainant and targets its business with the registration and use of the disputed domain name.
The Complainant also contends that the Respondent's use of the disputed domain name redirects Internet users to a parking website that provides links to third parties' websites, and by using the website for sponsored links, the Respondent is, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The Complainant asserts that the use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to qualify as bad faith under paragraph 4(b)(iv) of the Policy, as the Respondent's use of the domain name attempts to attract for commercial gain Internet users to the Respondent's website 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.
The Complainant argues that the Respondent's registration of the disputed domain name also prevents the Complainant from reflecting the trademark BAYER in a corresponding domain name, and that the Respondent offered to sell the disputed domain name on the website available at "www.godaddy.com". The Complainant contends that such offering to sell a domain name on a public website has been found to indicate that a domain name has primarily been registered with the intention of selling it to the complainant or one of its competitors in return for a payment that exceeds the costs directly related to the domain name under paragraph 4(b)(i) of the Policy.
The Complainant contends that, as the elements expressly mentioned in paragraph 4(b) of the Policy are non-exhaustive, the above practice has been regarded in a number of other cases as indications and aspects establishing bad faith. The Complainant submits that the fact that the Respondent registered a domain name which includes a trademark obviously connected with the Complainant and its products, also supports the finding of bad faith as the very use of such domain name by someone with no connection with the products suggests opportunistic bad faith. The Complainant also says that it is established that the Respondent's use of the disputed domain name is "qualified" to disrupt the Complainant's business and that it is capable of reducing the number of visitors to the Complainant's website, and may adversely affect the Complainant's business and therefore constitutes bad faith. In addition, the Complaint says that the registration of the disputed domain name by the Respondent also constitutes an abusive threat hanging over the head of the Complainant, which also supports a finding of bad faith.
Finally, the Complainant requests the Panel to issue a decision that <bayermonsano.com> be transferred to the Complainant, indicating that although the disputed domain name incorporates the Complainant's BAYER marks and the third party trademark MONSANTO, the intended merger of these two companies makes transfer to the Complainant an appropriate remedy.
In response to notification of the Complaint, the Respondent states in three emails of January 05, 2018 that:
"Received, thank you. If you're interested in purchasing the subject domain it can be purchased online through godaddy.com"
"the subject domain is mine, and can and may be purchased thru goddady asking price is as posted on their site. I am not clear about your request for 2000.00 dollars for staffing up your judge panel I am clear that i am not abandoning the subject domain."
The third email was a repeat of the above. No other communication was received from the Respondent.
6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Rules at paragraph 15(a) require that "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In the absence of any substantive rebuttal by the Respondent to the Complainant's assertions, the Panel therefore proceeds on the basis of the Complaint submitted by the Complainant and the informal emails received from the Respondent, as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable.
A. Identical or Confusingly Similar
The Complainant has provided compelling evidence showing that it is the holder of the BAYER trademark registered in (amongst other jurisdictions) the United States, and has rights arising from such registered trademarks. The Respondent does not challenge such evidence or respond to the contentions the Complainant has submitted.
It is clear that the disputed domain name <bayermonsano.com> includes the Complainant's BAYER trademark and adds "monsano". The first and significant part of the disputed domain name is "bayer" which is the same spelling as the Complainant's BAYER trademark. The addition of "monsano" is insufficient in itself to avoid a finding of confusing similarity to the Complainant's mark.
Further, in the Panel's view the Top-Level Domain, ".com", does not in this case affect the disputed domain name for the purpose of determining whether it is confusingly similar to the Complainant's trademarks.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's BAYER trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The evidence provided by the Complainant indicates that:
(i) the Respondent has no relationship with the Complainant;
(ii) the Complainant has not permitted the Respondent to apply for or to use any domain name incorporating the BAYER marks;
(iii) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, including the BAYER trademark incorporated into the disputed domain name.
The evidence also indicates that the "Bayer" name is well known as being associated with the Complainant and its products, and that the well-known BAYER mark is not a word having any particular dictionary meaning. It appears unlikely then, that a domain name registrant would choose such a word unless it was intended that the domain name create an impression of an association or other connection with the Complainant. However, it is clear that neither the Respondent nor the disputed domain name has any connection with owner of the BAYER mark.
It is noted that the Respondent's name does not bear any resemblance to the disputed domain name and there is nothing in the evidence before the Panel, including in the WhoIs record for the disputed domain name, that suggests the Respondent is commonly known by the disputed domain name.
Since 1988 the word "Bayer" has been registered by the Complainant as a trademark in the United States where the Respondent has his address, so it is difficult to see how the Respondent could not have, and indeed should have, been aware of the Complainant's trademark rights in the Bayer name which forms a distinctive part of the disputed domain name.
In addition, the prominent use in the disputed domain name of the Complainant's well-known BAYER trademark, suggests that the Respondent has a right to use this mark in the disputed domain name or that the disputed domain name is associated with the Complainant. However, the Complainant makes it very clear that it has never given the Respondent permission to use the BAYER trademark, and that its use without the Complainant's permission could well violate the Complainant's rights in its BAYER trademark. At the same time there is no evidence the Respondent has any right or legitimate interest in the disputed domain name.
The evidence provided by the Complainant, together with the conclusion that the BAYER mark is well known, means there is likely to be limited circumstances in which the Respondent might have any rights or legitimate interest in the disputed domain name. In the absence of any submission from the Respondent on this element of the Policy, paragraph 4(a)(ii), a prima facie case has been established that the Respondent has no rights or legitimate interests in the disputed domain name. In the Panel's view it is more likely than not the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to provide any rebuttal of this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant submits as evidence a copy of the webpage to which the disputed domain name resolves. It is contended that this is evidence of the Respondent's use of the disputed domain name to redirect Internet users to a parking website that provides links to third parties' websites, and by using the website for sponsored links the Respondent is, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website.
It is noted however, that this webpage says at the bottom: "This page is provided courtesy of Godaddy.com..., LLC,...", raising the question whether it was the Respondent or the Registrar of the disputed domain name who is using the disputed domain name's website for links to third parties' websites.
A copy of the Respondent's registration agreement with the Registrar was provided by the Complainant. This agreement is entitled "Godaddy Domain Name Registration Agreement Last revised: July 11, 2017" and states in relevant part at Clause 10 ("DEFAULT SETTING; PARKED PAGE"):
"GoDaddy's Default Settings. If you do not direct your domain name away from GoDaddy's name servers as described above, GoDaddy will direct your domain name to a "Parked Page" ("Default Setting"). You acknowledge and agree that GoDaddy has the right to set the Default Setting.
Parked Page Default Setting. … If your domain name is directed to a Parked Page, you acknowledge and agree that GoDaddy may display both (a) in-house advertising (which includes links to GoDaddy products and services) and (b) third-party advertising (which includes links to third-party products and services) on your Parked Page …. In addition, you acknowledge and agree that all in-house and third-party advertising will be selected by GoDaddy and its advertising partners, as appropriate, and you will not be permitted to customize the advertising, or entitled to any compensation in exchange therefor. ... GoDaddy makes no effort to edit, control, monitor, or restrict the content and third-party advertising displayed on GoDaddy's Parked Pages, and expressly disclaims any liability or responsibility to you or any third party in connection therewith."
The statement on the webpage to which the disputed domain name resolves states that it is provided "courtesy of Godaddy.com, LLC" and given the terms of the Registration Agreement set out above, it seems more likely it is the Registrar who placed the parked page linking the disputed domain name to third party websites. It also appears more likely that it is the Registrar who has profited from the click-through revenues generated at the webpage of the disputed domain name, however, this is not clear. It may be that the Respondent's agreement to allow the Registrar to place a parking page generating click-through revenues is evidence of registration and use in bad faith by the Respondent, however, in this case it is not necessary to come to any conclusion on that issue given the other actions of the Respondent.
The agreement between the Bayer and Monsanto companies were the subject of reports by the international media since May 2016, and was entered into on September 14, 2016 – the same day the disputed domain name was registered by the Respondent. This agreement connected the BAYER trademark with Monsanto. The minor spelling difference between "monsanto" and "monsano" is so small as to not detract from a conclusion that "monsano" refers to Monsanto, especially because of its use in combination with the Complainant's mark BAYER. The combination of "monsano" and "bayer", given the reported acquisition of Monsanto by Bayer and this connection between the well-known BAYER mark and Monsanto, leads the Panel to infer that the Respondent knew that registration of the disputed domain name would be confusingly similar to the Complainant's BAYER trademark. Knowing that the disputed domain name is confusingly similar to the Complainant's trademark, the Respondent now seeks to sell the disputed domain name through the Registrar, as expressly stated in the Respondent's emails of January 5, 2018. The price for immediate sale of the disputed domain name was USD 10,000 when the Panel accessed "www.auctions.godaddy.com" on March 1, 2018 at 15:35 CET. Such an amount is clearly in excess of any out-of-pocket costs that might be directly related to the disputed domain name.
The above suggests:
(a) the Respondent has registered and is using the disputed domain name primarily for the purpose of selling the disputed domain name to the highest bidder and in excess of any out-of-pocket costs related to the disputed domain name;
(b) the Respondent has done so knowing that the disputed domain name contains the well-known trademark of the Complainant and will likely attract Internet users away from the Complainant's official sites;
(c) the Respondent appears to be doing so with the express purpose of increasing his commercial gain from sale of the disputed domain name (whether the sale be to the Complainant or a third party); and
(d) the Respondent appears to be using the disputed domain name to create a likelihood of confusion with the Complainant's own well-known mark as to the source, affiliation or endorsement of the disputed domain name, and this is done in order to increase the sale price of the disputed domain name.
The above considerations and evidence indicate the Respondent seeks to trade-off and take unfair advantage of the Complainant's well-known trademark, and amounts to bad faith registration and use. In the absence of any submission from the Respondent on this aspect of the Complainant's claims, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
The evidence before the Panel indicates that the disputed domain name also incorporates a word that has only one letter different to the trademark MONSANTO. The Panel considers that, without prejudice to the rights of the owner of the trademark MONSANTO, transfer to the Complainant of the disputed domain name is an appropriate remedy in this case.
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 <bayermonsano.com>, be transferred to the Complainant.
Date: March 2, 2018