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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayer Aktiengesellschaft v. Amaltea Impex SRL

Case No. DRO2005-0006

1. The Parties

The Complainant is Bayer Aktiengesellschaft of Leverkusen-Bayerwerk, Germany, represented by Brinks Hofer Gilson & Lione of the United States of America.

The Respondent is Amaltea Impex SRL of Bucharest, Romania.

 

2. The Domain Name and Registrar

The disputed domain name <bayer.ro> is registered with RNC.ro.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2005. On November 18, 2005, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On November 18, 2005, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 12, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2006.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 13, 2006. 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 language of the proceeding is English.

 

4. Factual Background

The Complainant and its affiliates are the owners of a substantial number of trademark registrations for the name BAYER throughout the world, including a pair of registrations in Romania, the Respondent’s place of domicile. The Complainant’s trademark BAYER has been used for more than 100 years in the pharmaceutical industry. Moreover, the Complainant and its subsidiaries are the registrants of several country-related domain names such as: <bayer.de>, <bayer.at>, <bayer.it>, <bayer.ru> and others.

The Complainant’s trademark registrations predate the registration of the Respondent’s domain name <bayer.ro>.

 

5. Parties’ Contentions

A. The Complainant

The Complainant submits that:

The domain name <bayer.ro> is identical to the Complainant’s trademark BAYER, and therefore is confusingly similar thereto.

The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use its trademark and service marks, or to seek the registration of any domain name incorporating the Complainant’s trademarks.

Furthermore, the Respondent has no prior rights or legitimate interests in the domain name and it is not known under the name “Bayer” or any similar term.

The Respondent is not using or preparing to use the domain name in connection with a bona fide offering of goods or services. The Respondent’s lack of legitimate rights is evidenced by the fact that the Respondent has yet to create a website at the domain name.

The Respondent could not possibly use the domain name in connection with a bona fide offering of goods or services, since such use inevitably would constitute an infringement of the world-renowned BAYER trademark.

The domain name was registered and used in bad faith.

The Respondent has already been accused of and subsequently found to be in violation of the Policy. In SAirgroup v. Amaltea Impex SRL and Evergreen SRL, WIPO Case DRO2001-0002, the panel noted that the “Respondents apparently also registered other well-known marks of airlines such as Sabena and Air France, which shows a typical behavior of hijacking domain names”.

Given the worldwide fame of the BAYER trademark, as well as the Respondent’s past registrations of domain names incorporating famous trademarks, it is inconceivable that the Respondent did not know of the BAYER mark when registering the disputed domain name. Thus, the Respondent’s knowledge of the BAYER trademark is evidence of bad faith under the Policy.

The Respondent’s failure to respond to a letter sent by the Complainant in August 2005 regarding the domain name is further evidence of bad faith under the Policy.

The website under the disputed domain name is not active, hence this is a passive holding case, which further indicates the Respondent’s bad faith.

The Respondent has registered the domain name in dispute to create the impression that its business is in some way associated with the Complainant.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions. Thus, the Respondent has failed to submit any statement. It has not contested the allegations in the Complaint and the Panel shall decide on the basis of the Complainant’s submissions, and shall draw such inferences from the Respondent’s default that it considers appropriate (paragraph 14(b) of the Rules).

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name registered by the Respondent be transferred to the Complainant:

(1) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds the disputed domain name to be confusingly similar to the trademark BAYER owned by the Complainant. As indicated by the Complainant, and in accordance with many decisions rendered under the Policy, the addition of the ccTLD “.ro” has no significance when considering the issue of confusing similarity.

The Complainant has thus succeeded in proving evidence of the confusing similarity between its trademark and the domain name under dispute.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that before any notice to the respondent of the dispute, he/she/it used or made 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

(b) that the respondent is commonly known by the domain name, even if he/she/it has not acquired any trademark rights; or

(c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use or apply for any domain name incorporating the BAYER trademark. The Respondent does not appear to make any legitimate use of the domain name for its own commercial or non-commercial activities. The Respondent has not been known under this domain name. The Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the absence of any legitimate use, and the Respondent’s failure to justify the use of the disputed domain name, constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.

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

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, 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 the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.

Accordingly, for a complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.

In the absence of contrary evidence, the Panel finds that, given the widespread use and fame of the Complainant’s BAYER trademark, the Respondent had actual knowledge of the Complainant’s trademark when it registered the domain name. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark and activities at the time of the registration of the disputed domain name may be considered an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, “It is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant. The respondent was not authorised by the complainant to use its mark nor any of the disputed domain names”.

As regards the Respondent’s use of the domain name, it appears that under the website that is connected with the Respondent’s domain name there is a list of sponsored links, thereby allowing the Respondent to make commercial gain. As stressed in Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078, “It [is] now a well-known practice to display on a web page or search engine various links to other commercial websites: every link activated by an Internet user enables the hoster of the search engine to collect financial remuneration proportional to the number of connections.”

This Panel agrees with previous panels that have held that it is evidence of bad faith if “the Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links” (Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062).

Moreover, as asserted by the Complainant, the Respondent’s failure to respond to the Complainant’s August 2005 letter is further evidence of bad faith. In this sense see GMI Sound Corporation v. Fitzpatrick Brothers Studios, WIPO Case D2005-0204 where the panel found, “The full circumstances adumbrated here; including a prior mark registration and a failure to answer a clear demand letter, constitute sufficient evidence and inference of bad faith use”; and Nike, Inc. v. Azumano Travel, WIPO Case D2000-1598, where the panel noted, “Failure to positively respond to a complainant’s efforts to make contact ‘provides strong support for a determination of “bad faith” registration and use’”.

In addition, it appears that the same Respondent in the past has registered other domain names containing well known trademarks such as <swissair.ro> and <sabena.ro>.

Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

 

7. Decision

For all 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.ro> be transferred to the Complainant.

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Fabrizio Bedarida
Sole Panelist

Date: January 27, 2006