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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer Aktiengesellschaft v. K Dangos
Case No. D2002-0138
1. The Parties
Complainant: Bayer Aktiengesellschaft, Germany
Represented by: Colleen Connors Butler, Esq. Brinks Hofer Gilson & Lione 455 N. Cityfront Plaza Dr., Suite 3600 Chicago, Illinois, 60601, USA
Respondent: K Dangos Dangos & Partners 150, Prospect Mira Moscow RU 129366, Russian Federation.
2. The Domain Names and Registrar
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by email on February 8, 2002, and in hardcopy form on February 12, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Restrictions Dispute Resolution Policy adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the RDRP"), the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") as supplemented by the RDRP Supplemental Rules and the WIPO Supplemental Rules, which also apply to administrative proceedings under the RDRP (all the said Rules are together hereinafter referred to as "the Rules"). The Center has confirmed that payment in the required amount has been made by the Complainant. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules. Register.com, Inc. ("the Registrar") has confirmed that the domain names <bayer-healthcare.org>, <bayer-healthcare.net>, <bayerhealthcare.biz>, <bayer-healthcare.biz>, <bayer-polymers.org>, <bayer-polymers.net>, <bayerpolymers.biz>, <bayer-polymers.biz>, <bayerpolymers.info>, <bayer-polymers.info>, <bayer-chemicals.org>, <bayer-chemicals.net>, <bayerchemicals.info>, <bayer-chemicals.info>, <bayerchemicals.biz>, <bayer-chemicals.biz>, <bayer-holding.org>, <bayer-holding.net>, <bayer-holding.com>, <bayerholding.biz>, <bayer-holding.biz>, <bayerholding.info> and <bayer-holding.info> ("the Domain Names") were registered through Register.com, Inc. and that K Dangos ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On March 14, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was April 3, 2002.
On March 25, 2002, the Center received the Response in email and hardcopy form. The Center emailed the Respondent on March 25, 2002, regarding a Response deficiency. On March 28, 2002, the second version of the Response was received by the Center by email and on April 5, 2002, in hardcopy form.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is April 30, 2002.
4. Factual Background
The Complainant Bayer AG is the well known German based pharmaceutical company. The Complainant and its predecessors have traded under the name Bayer since 1863. It is the proprietor of a large number of trademark registrations world wide for the Bayer name covering an extensive range of goods and services from pharmaceutical preparations to chemicals to plastics to lubricants to insecticides to cleaning materials.
The Complainant owns the domain name <bayer.com> and has its website at "www.bayer.com". Other companies within the group headed by the Complainant are the proprietors of domain names such as <bayerdiagnostics.com>, <bayerhealth.com>, <bayerplastics.com> and <bayerleather.com>.
On or about December 6, 2001, the Complainant announced to the public in a press release that it was reorganizing into a management holding company with operating subsidiaries in the areas of healthcare, eg Bayer Healthcare, polymers, eg Bayer-Polymers, agri-chemicals and specialty chemicals, eg Bayer-Chemicals.
On January 14, 2002, the Respondent registered the Domain Names.
The Respondent is a firm with an address in Moscow, but nothing in the papers before the Panel indicates the nature of the Respondent’s business.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s trademark BAYER. The Complainant points out that they all feature the trademark BAYER combined with a service or product description consistent with the business activities of the Complainant. The Complainant points to the fact that it has a history of using domain names comprising its principal trademark in combination with generic terms that describe its various businesses. The Complainant contends that as a result, consumers are likely to associate the Domain Names and any websites to which they are connected with the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. It asserts that the Respondent cannot show any of the circumstances set out in Paragraph 4(c) of the Policy which might demonstrate the Respondent’s rights or legitimate interests in respect of the Domain Names. The Complainant asserts that the Respondent is not using or preparing to use the Domain Names in connection with a bona fide offering of goods or services, nor is it likely to because any such use would constitute trademark infringement. It asserts that the Respondent has not been commonly known by the Domain Names and is not likely to be able to show any rights prior to those of the Complainant. Thirdly, it asserts that the Respondent is not making a legitimate non-commercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.
The Complainant further contends that the Respondent has registered the Domain Names in bad faith. It points to the multiplicity of the Domain Names. It points to the fact that the Respondent must have known of the Complainant’s prior rights at the time it registered the Domain Names and finally, it asserts that by registering the Domain Names incorporating the BAYER trademark the Respondent has breached its domain name agreement in that it knew. The Complainant quotes from the Register.com Service Agreement relating to the ".biz" names in which the Respondent certifies that the registration of the domain name in question will not infringe upon or otherwise violate the rights of any third party.
With regard to the ".biz" names among the Domain Names, the Complainant contends that the Respondent must have known that the ".biz" domain names could never be used without infringing the Complainant’s trademark rights in the BAYER trademark. Accordingly, the Respondent could not have registered those names for any bona fide business or commercial purpose which is the qualifying restriction for the registration of ".biz" domain names.
The Respondent admits that he was aware of the BAYER trademark when registering the Domain Names and asserts that no website is active under the Domain Names except for a ‘coming soon’ message. The Respondent points out that the Complaint was launched without advance notice to the Respondent.
The Respondent points out that the term BAYER is not only a trademark, but it is also a generic term. It is a common surname, it is also a term related to the region Bayern. The Respondent asserts that Bayer "stands for about 12 million people who are inhabitants of the region which also stands for the biggest state of Germany".
The Respondent objects to the Complainant’s history of using its trademark in combination with generic terms for Domain Names. It regards this as an inappropriate trademark expansion policy that it characterises as "particularly aggressive".
The Respondent then embarks on an extended passage equating Bayer to Welshman, Scot, Floridian, Californian, Apple, Virginian. It points out for example that many domain names featuring the word ‘apple’ and a generic term in combination are not domain names owned by Apple. It points out that Virginian, a major metal products company in the United States, does not make a practice of registering names such as <virginiansteel.com>, <virginianiron.com> etc. "Respondent regards Complainant’s self-described trademark respectively domain name expansion policy as a self-induced dilution to the trademark BAYER and a self-induced complication of domain name differentiation and a potential self-induced reason for creating more and more potential cases of confusing similarity as in this case."
The Respondent denies that the Domain Names have been registered and are being used in bad faith. The Respondent points out that the Complainant failed to register the Domain Names during the so-called sunrise period and the Complainant also failed to register the Domain Names before the reorganisational announcement referred to above. The Respondent denies that he knew of the Complainant’s intended use of more combinations of descriptive generic terms with the trademark BAYER.
"Respondent notes that he has the intention to use the domain names for his own purposes and in a way which will not conflict with the BAYER trademark or business. Respondent vehemently asserts that he did not register the domain names for the purposes referred to in 4(b)(i) and 4(b)(ii) of the Policy". In answer to the allegation under Paragraph 4(b)(i) "the Respondent offers Complainant to grant it a first right to buy the domain names at a maximum price of EUR100 per name in case Respondent in the future should want to dispose of the domain names".
The Respondent argues that the Complainant’s Complaint by reference to Paragraph 4(b)(ii) of the Policy should fail because the Complainant has failed to provide evidence that the Respondent engages in a pattern of such conduct (ie registering domain names in order to prevent the Complainant from reflecting its trademark in a corresponding domain name).
Respondent states that he did not register the Domain Names to disrupt the Complainant’s business, or intentionally to attempt to attract Internet users to its site for commercial gain. The Respondent points out that the Complainant has put forward no evidence.
The Respondent reiterates that it is making a fair use of the Domain Names. "As Complainant’s business activities are identified with the name BAYER and Complainant’s existing domain names."
The Respondent acknowledges that when domain names have been registered but not yet used it may be difficult for a Complainant to provide evidence of the absence of a right or legitimate interest and of bad faith registration and use of the Domain Names. The Respondent observes that in those cases the Complainants often rely on correspondence and contacts that they have had with the domain name owners prior to instituting the Complaint. The Respondent observes that the Complainant has filed the Complaint without having had any contact with the Respondent and that in those circumstances the Respondent’s intentions should be assessed solely by reference to the Response.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove that
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
By virtue of Paragraph 4(a) of the RDRP a registrant of a ‘.biz’ top level domain name is required to submit to a mandatory administrative proceeding in the event that a Complainant asserts to a Provider that the domain name in question is not being used or will not be used primarily for a bona fide business or commercial purpose. The burden of proof is on the Complainant and the Complaint will be regarded as invalid if the Complaint is based exclusively on alleged non-use of the domain name.
Eight of the Domain Names are ‘.biz’ domain names. Given that all the Domain Names are subject to the Policy, the Panel proposes first to consider them all by reference to the Policy. If and to the extent that the Complaint fails under the Policy, the Panel will then consider the ‘.biz’ domain names by reference to the Complaint under the RDRP.
Identical or confusingly similar
The Complainant’s trademark is BAYER. All the Domain Names comprise the trademark BAYER plus a description of an aspect of the Complainant’s business. The relevant descriptions are ‘healthcare’, ‘polymers’, ‘chemicals’, ‘holding’. Clearly none of the Domain Names are identical to the trademark BAYER. Are they confusingly similar? In the view of the Panel, all of them plainly are. First, there is no dispute that Bayer is a very powerful and well known trademark. Secondly, it is manifestly the case that when registering these Domain Names the Respondent had the Complainant in mind. Just looking at the Domain Names, clearly there has to be a serious risk that consumers will believe them to have some connection with the trademark owner.
Accordingly, the Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights.
Respondent’s Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any one of which, if found by the Panel to have been proved, shall demonstrate the Respondent’s rights or legitimate interests in respect of the Domain Names.
However, the need for the Respondent to demonstrate anything only arises once the Complainant has shown a prima facie case, the burden of proof under Paragraph 4(a) being on the Complainant.
There is no dispute between the parties that BAYER is a trademark of the Complainant and that the generic words forming part of the Domain Names accurately describe aspects of the Complainant’s business. Clearly the Complainant has not granted to the Respondent any licence for the Respondent to use its trademark in this way, there is no indication that the Respondent is using the Domain Names or making any preparation to use the Domain Names in any way. Manifestly, the Respondent is not known by any of the Domain Names.
In light of this, the Panel accepts that the Complainant has made out a prima facie case. The Respondent has a case to answer. How has the Respondent responded to this allegation? The Respondent does not address this allegation directly at all. The only statement in the Response which could have any bearing at all on this allegation appears in Paragraph 10, namely "Respondent notes that he has the intention to use the Domain Names for his own purposes and in a way which will not conflict with the BAYER trademark or business."
This is an inadequate answer to the allegation. It gives the Panel no basis for concluding that the Respondent has rights or legitimate interests in respect of the Domain Names. Moreover, the Panel is unable to think of any reason why the Respondent could reasonably be said to have rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found to be present shall demonstrate that the Domain Names were registered in bad faith and are being used in bad faith.
The Respondent addresses each of the four sub-Paragraphs of 4(b). As to (i) the Respondent states that it did not register the Domain Names primarily with a view to selling them at a profit to the Complainant. To support that proposition, it makes an open offer to the Complainant to grant it an option to purchase the Domain Names at a very modest price in the event that the Respondent finds in the future that it does not need the Domain Names. As to (ii) the Respondent denies that he registered the Domain Names to prevent the Complainant from reflecting its trademark in corresponding domain names. The Respondent points out that the Complainant’s trademark is BAYER and nothing that the Respondent has done prevents the Respondent from using that trademark as part of the Domain Name. Somewhat strangely (in the view of the Panel) the Respondent argues that there is no evidence of any pattern, evidence of a pattern being required by Paragraph 4(b)(ii) of the Policy. In the view of the Panel, the multiplicity of the Domain Names in issue is itself evidence of the pattern. However, as the Respondent points out, there is no direct evidence that the Respondent had any such intention when it registered the Domain Names. As to Paragraph 4(b)(iii) the Respondent denies that it registered the Domain Names in order to disrupt the Complainant’s business within the meaning of that sub-paragraph. That sub-paragraph calls for the Respondent to be a competitor of the Complainant and, while the Respondent does not appear to make the point, there is no evidence that the Respondent is a competitor of the Complainant. Finally, insofar as Paragraph 4(b)(iv) is concerned the Respondent denies that the Respondent intended to use the Domain Names to attract Internet users to its website or other online location for commercial gain and misleading them as to the source, sponsorship, affiliation or endorsement of the Respondent’s website etc or of any product or service offered by the Respondent at that website etc.
The Respondent’s answer to the bad faith allegation is a mixture of denials and assertions that the Complainant has adduced any evidence in support of the allegation.
In taking that approach and in failing to identify for what purpose the Respondent registered the Domain Names, the Respondent is in the view of the Panel, taking an unrealistic approach.
The Panel is faced with 23 domain names, all of which feature the Complainant’s famous trademark and a generic term accurately describing a business activity of the Complainant. In those circumstances there can be no question but that the Respondent who admits that he was well aware of the Complainant’s trademark at the time of registration of the Domain Names, had the Complainant positively in mind when registering the Domain Names.
If the Respondent had a fair use in mind for the Domain Names, then the Respondent should have identified what it was pursuant to Paragraph 4(c) of the Policy. That paragraph is a paragraph addressed to respondents and calling for them to demonstrate rights or legitimate interests in circumstances where the Complainant has made out a prima facie case.
The failure of the Respondent to do so in this case leads the Panel inexorably to the conclusion that whatever intentions the Respondent may have had at the date of registration of the Domain Names, on the balance of probabilities, the use it had in mind was not a fair one. It may have been with a view to selling the Domain Names to the Complainant at a profit (Paragraph 4(b)(i) of the Policy) or it could have been with a view to deriving some commercial gain on the back of the Complainant’s goodwill (Paragraph 4(b)(iv) of the Policy). In passing, the Panel should say that it is firmly of the view that the offer made in the Response to sell the Domain Names to the Complainant for a very modest price as and when the Respondent has no further need of the Domain Names is no answer to what might have been the Respondent’s intentions as at the date of registration of the Domain Names.
The Panel finds that the Respondent registered the Domain Names in bad faith and is using them in bad faith within the meaning of Paragraphs 4(a)(iii) and either 4(b)(i) or 4(b)(iv) of the Policy.
In light of these findings under the Policy, it is not necessary for the Panel to consider the separate allegations in relation to the ".biz" names under the RDRP.
In light of the foregoing findings, namely that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith, the Panel directs that all 23 of the Domain Names be transferred to the Complainant.
Dated: April 27, 2002