Bayer Aktiengesellschaft (Bayer AG) v. TMP

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer Aktiengesellschaft v. TMP

Case No. D2002-0132

1. The Parties

Complainant is Bayer Aktiengesellschaft, 51368 Leverkusen-Bayerwerk, Germany.

Complainant’s authorised representative in this case is Colleen Connors

Butler, Esq., Brinks Hofer Gilson & Lione, Chicago, Illinois, United

States.

Respondent is TMP, Bulgurlu, Istanbul, Turkey.

2. Domain name and Registrar

The following domain names are at issue in this case:

<bayer-polymers.com>, <bayerpolymers.com>, <bayerhealthcare.com>,

<bayer-healthcare.com>, <bayerhealthcare.net>, <bayer-healthcare-company.com>,

<bayerhealthcarecompany.com>, <bayerhealthcarecompany.net>,

<bayer-healthcare-company.net>, <bayer-agriculture.com>, <bayeragriculture.com>

and <bayer-chemicals.com>.

The Registrar is VeriSign-Network Solutions Inc., located in Virginia,

United States.

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation

Center (the Center) received a Complaint in e-mail form on February 8, 2002,

and in hard-copy form on February 11, 2002. On February 13, 2002,

the Center issued an Acknowledgement of Receipt of the Complaint.

Having sent, on February 15, 2002, a Request for Registrar Verification,

a Verification Response was received on February 21, 2002.

The Verification Response was submitted on behalf of VeriSign and its subsidiary

registrars, VeriSign-Network Solutions, in respect of all the domain name

registrations at issue, stated the following:

- The Registrant is TMP, Bulgurlu, Istanbul, Istanbul 81170, Turkey;

- The domain names at issue are the ones indicated above under

2;

- The Administrative Contact, Billing Contact is "TMP, Bulgurlu,

Istanbul 81170, TR, 4437462";

- Technical Contact is VeriSign, Inc., with the same address as

indicated for the Registrar above;

- The status of the domain name registrations is: Active;

- The language of the Service Agreements is English; and

- The domain name registrant has submitted in its Registration

Agreement to the jurisdiction at the location of the principal office

of the Registrar for court adjudication of disputes concerning or

arising from the use of the domain names.

Having established a Formal Requirements Compliance Checklist, the Center

issued, on February 25, 2002, a Notification of Complaint and

Commencement of Administrative Proceeding. That Notification was transferred,

on the same date, to "postmaster" of each of the domain name addresses

at issue. All the postmaster addresses had, however, fatal errors. The Notification

was also sent to Complainant, to ICANN, to the available e-mail address

of Respondent, to the Registrar and to the Technical Contact. It was also

sent by telefax to TMP c/o Verisign Inc., but that mail did not pass. The

documents were also sent by DHL courier to TMP at the address indicated

above for Respondent.

Having received no Response from Respondent, the Center issued, on March 20, 2002,

a Notification of Respondent Default, which was notified by e-mail to the

Registrant, to the Administrative and Billing Contact and to the Technical

Contact and also by courier to Respondent.

The Center invited Mr. Henry Olsson to serve as a Sole Panelist in the

case. Having received Mr. Olsson’s Statement of Acceptance and Declaration

of Impartiality and Independence, the Center appointed Mr. Olsson as Sole

Panelist and issued a Notification of Appointment of Administrative Panel

and Projected Decision Date that was communicated to the Parties.

The Sole Panelist finds that the Administrative Panel was properly constituted

and appointed in accordance with the Rules for Uniform Domain Name Dispute

Resolution Policy and the WIPO Supplemental Rules for Uniform Domain Name

Dispute Resolution Policy.

4. Factual Background

Complainant’s company name BAYER dates back to 1863, when the firm "Friedrich Bayer

& Co." was established in Elberfeld which is now a part of the

city of Wuppertal. Later the name was transferred to a newly formed stock

corporation "Farbenfabriken vorm. Friedrich Bayer & Co.,"

which began producing and marketing pharmaceutical products in 1888, and

has since then sold such products under the trademark BAYER.

No specific information is available concerning Respondent’s activities.

5. Parties’ Contentions

A. Complainant

Complainant first contends that it is the owner of a substantial number

of registrations of the trademark BAYER covering an extensive range of

goods and services, such as pharmaceutical preparations, chemicals, waste

water treatment chemicals for industrial use, pigments, synthetic and

artificial resins, coatings, plastics, greases, lubricants, rubber and

synthetic rubber, agricultural chemicals, pesticides, insecticides, fungicides,

herbicides and cleaning materials. Complainant has submitted a printout

of the registrations of the trademark BAYER throughout the world.

In addition, Complainant has stated that it owns the corresponding domain

name at which the website http://www.bayer.com which it uses to promote

the name BAYER and providing consumers with a source for information about

the company’s business and products.

In the context of domain names, according to Complainant, its United

States and Canadian affiliates Bayer Corporation in the United States

and Bayer Inc. in Canada as well as selected divisions have registered

a number of domain names comprising the trademark BAYER in conjunction

with generic names that describe specific units, such as <bayerdiagnostics.com>

and <bayerhealth.com.> Complainant has submitted examples of such

registrations.

Identity or Confusing Similarity

Complainant contends that the domain names registered by Respondent are

confusingly similar to Complainant’s trademark BAYER. According to Complainant,

when a Respondent merely adds descriptive terms to an otherwise distinctive

or well-known trademark, the domain names are to be considered as confusingly

similar to the famous trademarks, something that has been found in several

earlier Administrative Panel Decisions. Complainant contends that, consequently,

the combinations, in Respondent’s domain names, of the descriptive words

"healthcare," "chemicals," "agriculture,"

and "polymers" - which merely describe a business activity -

with the famous trademark BAYER create a confusing similarity.

Moreover, according to Complainant, the likelihood of confusion is even

greater in this case because Complainant itself has a history of using

domain names consisting of the name BAYER in combination with generic

terms that describe its various business activities. Consequently, Complainant

will be injured if Respondent would be allowed to keep the subject "BAYER"

domain names because consumers would be likely to think that any websites

set up at the domain names are related to or sponsored by Complainant.

Rights or Legitimate Interests

Complainant first contends that the trademark BAYER is recognized worldwide

and that Complainant is acknowledged as a leader in the fields of healthcare,

agriculture, chemicals and polymers. Complainant refers in this connection

to two earlier decisions by WIPO Panels where the fame of the trademark

at issue has been recognised. As Respondent can not show any of the circumstances

set forth in Section 4 c) of the Policy to demonstrate its rights or legitimate

interests or any other interest in the domain name, Complainant submits

that Respondent has in fact no rights or legitimate interests in the domain

names.

Registration and Use in Bad Faith

Complainant contends that Respondent, by a letter, in German, of January 2, 2002,

offered, until January 16, 2002, to sell the domain names at

issue for an amount of 12 million Euro (indicated to be 0,1% of the expected

sales by Complainant.) The letter indicated that replies should be sent

to a German law firm in Cologne. According to Complainant, the attorneys

at that law firm had confirmed that they had no knowledge of this letter

and were not involved in the proposed transaction.

Complainant furthermore contends that the letter just mentioned demonstrates

that Respondent deliberately registered the domain names in order to extort

considerable amounts from Complainant, a kind of activity which has been

held unlawful both by federal United States Courts and in earlier decisions

by Administrative Panels.

In addition, Complainant contends that Respondent’s registration of multiple

domain names containing the BAYER trademark is evidence of bad faith registration

(in particular such as mentioned in Paragraph 4.b (ii) of the Policy),

as also has been found in several earlier Administrative Panel Decisions.

Furthermore, according to Complainant, it has used the BAYER trademark

in worldwide commerce for many years. If a Complainant uses a famous trademark

for several years a Respondent’s knowledge of the mark at the time of

registration of the domain name is inferred. It should also be noted that

around December 6, 2001, Complainant announced to the public

that it was reorganised into a holding company with operating subsidiaries

in the areas of Healthcare, Polymers, Agrichemicals and Specialty Chemicals.

This reorganisation was announced by means of a press release and posted

on Complainant’s website which was accessible everywhere, including in

Turkey. Immediately thereafter, on December 13, 2001, Respondent

registered the domain names at issue, and this must, according to Complainant,

have been done in order to extort money from Complainant.

Finally, Complainant also indicates that Respondent has shown that it

is intimately familiar with Complainant’s business and its intent to use

the Bayer-Healthcare name to describe a major portion of its business,

something that appears clearly in the letter of January 2, 2002.

According to Complainant, Respondent has been in breach of its agreement

with VeriSign Inc. by registering and maintaining domain names that incorporate

the BAYER trademark Actually, Section 2.3 of the Service Agreement indicates

that Registrant agrees and warrants that neither the registration or the

use of any of the VeriSign services nor the manner in which Registrant

intends to use such VeriSign services will directly or indirectly infringe

the legal rights of a third party. Complainant submits that the letter

of January 2, 2002, shows that Respondent knew at the time of

registration of the domain names that the registration was unlawful.

Remedies Requested

For the reasons set out and referred to above, Complainant requests that

the domain names at issue be transferred to Complainant.

B. Respondent

Respondent has not submitted any Response and is in default.

6. Discussions and Findings

First, the Panel notes that Complainant has, in accordance with Paragraph

3.b.(xiii) of the Rules, agreed to submit, only with respect to any challenge

that may be made by Respondent to a decision by the Administrative Panel

to transfer or cancel the domain names that are the subject of the Complaint,

to the jurisdiction of the courts in the principal office of the concerned

Registrar, namely the Eastern District of Virginia.

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint

on the basis of the statements made and documents submitted and in accordance

with the Policy, these Rules and any principles of law that it deems applicable.

In the case of a default by a party, Paragraph 14 of the Rules prescribes

that if a party, in the absence of exceptional circumstances, does not comply

with a provision of, or a requirement under, these Rules, the Panel shall

draw such inferences therefrom as it considers appropriate.

On the basis of the documentation available about the various communications

to Respondent, the Panel is satisfied that Respondent has actually been

communicated both the Complaint and the Notification of Respondent Default.

Respondent has, however, not submitted any Response and has consequently

not, despite the opportunity given, contested any of the contentions by

Complainant. The Panel will therefore have to operate and consider the case

on the basis of the factual circumstances contained in the Complaint and

the documents available to support these contentions.

The Service Agreements relating to the domain name registrations at issue,

as submitted by Complainant, incorporates the Policy which is, by reference,

made applicable to those registrations. Respondent is thus required to submit

to an administrative proceeding by approved administrative dispute settlement

Provider approved by ICANN. WIPO is such an approved Provider. The Panel

concludes that the dispute is properly within the Panel’s jurisdiction.

Paragraph 4.a of the Policy directs that Complainant must prove each of

the following:

- that the domain names registered by Respondent are identical

or confusingly similar to a trademark or a service mark in which Complainant

has rights;

- that Respondent has no rights or legitimate interests in the

domain names; and

- that the domain names have been registered and are being used

in bad faith.

In the following parts of the Decision the Panel discusses each of those

elements.

Identity or Confusing Similarity

In this respect Complainant has, according to Paragraph 4.a(i) of the Policy,

to prove that the domain names at issue are identical with or confusingly

similar to a trademark or a service mark in which Complainant has rights.

The Panel first notes that the trademark BAYER is the subject of o great

number of registrations in different countries and that it has been used

worldwide for more than 100 years. The Panel concludes that in fact the

trademark is a famous trademark with world-wide presence and being used

in a considerable range of goods and services.

The Penal furthermore notes that Complainant has, in connection with the

trademark BAYER, registered a corresponding domain name and set up a website

under <www.bayer.com> in order to promote the name on the Internet

and provide consumers and customers with information concerning Complainant’s

company.

The domain names at issue in this case contain Complainant’s trademark

BAYER in combination with various descriptive terms which are obviously

referring to parts of the business of Complainant. In the view of this Panel

this combination of certain descriptive terms and the distinctive and famous

trademark BAYER creates, as Complainant has submitted, a confusing similarity

between the domain names and Complainant’s trademark.

Rights or Legitimate Interests

In this respect Complainant has, according to Paragraph 4.a(ii) of the

Policy, to prove that Respondent has no rights or legitimate interests in

the domain names.

With reference to the fame of the BAYER trademark Complainant has basically

invoked that Respondent has shown none of the circumstances mentioned in

Paragraph 4.c to demonstrate rights or legitimate interests in the

domain names.

Respondent has been given ample opportunities to argue why it has registered

domain names containing the BAYER trademark together with descriptive notions

clearly related to the business of Complainant and why this was done immediately

after Complainant’s widely publicised announcement about the reorganisation

of its activities. In the absence of any further indications about the circumstances

relating to the registration of the domain names at issue, the Panel concludes

that it has been clearly established that Respondent has no rights or legitimate

interests in the domain names at issue.

Registration and Use in Bad Faith

In this respect, Complainant has, according to Paragraph 4.a(iii) to prove

that Respondent’s domain names have been registered and are being used in

bad faith. Paragraph 4.b then mentions a number of circumstances which,

in particular but without limitations, shall, if found to be present by

the Panel, be evidence of registration and use of a domain name in bad faith.

To prove that Respondent has registered and is using the domain names at

issue in bad faith, Complainant has invoked a number of circumstances, primarily

a letter of January 2, 2002, containing what is basically an offer

to sell the domain names at issue for a considerable amount in Euros. In

addition, Complainant has contended, inter alia, that the multiple

registrations of domain names containing the trademark BAYER is evidence

of bad faith, that Respondent must have had knowledge of the trademark when

it registered the domain names and that Respondent’s breach of its domain

name service agreement is also a sign of bad faith. Complainant has supported

its allegations by documentary evidence, in particular the letter of January 2, 2002,

in German with English translation.

Respondent has not responded to any of the contentions by Complainant and

has thus not thrown any further light over the circumstances in connection

with its registration and use of the domain names at issue.

The evidence presented and the circumstances in the case leads the Panel

to the conclusion that it has been established that the domain names have

been registered and are being used in bad faith, especially such bad faith

as mentioned in Paragraph 4.b.(i) of the Policy.

Conclusion

In the light of the foregoing, the Administrative Panel concludes that

the domain names at issue in this case are confusingly similar to Complainant’s

trademark, that Respondent has no rights or legitimate interests in the

domain names and that Respondent’s domain names have been registered and

are being used in bad faith.

7. Decision

Pursuant to Paragraph 4.i of the Policy and in accordance with the request

by Complainant the Administrative Panel requires that the following domain

names be transferred to Complainant:

<bayer-polymers.com>

<bayerpolymers.com>

<bayerhealthcare.com>

<bayer-healthcare.com>

<bayerhealthcare.net>

<bayer-healthcare-company.com>

<bayerhealthcarecompany.com>

<bayerhealthcarecompany.net>

<bayer-healthcare-company.net>

<bayer-agriculture.com>

<bayeragriculture.com> and

<bayer-chemicals.com>.

Henry Olsson

Sole Panelist

Dated: April 16, 2002

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