Bayer Aktiengesellschaft (Bayer AG) v. Dangos & Partners

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

Domain Names:

<bayer-healthcare.org>

<bayer-healthcare.net>

<bayerhealthcare.biz>

<bayer-healthcare.biz>

<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>

<bayer-holding.info>

Registrar:Register.com, Inc.

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

A. Complainant

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.

B. Respondent

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

General

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.

Bad Faith

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.

7. Decision

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.

Tony Willoughby

Sole Panelist

Dated: April 27, 2002

More cases by this complainant

• Bayer Aktiengesellschaft (Bayer AG) v. TMP — D2002-0132 · bayer-agriculture.com, bayeragriculture.com, bayer-chemicals.com · Transfer · 16 Apr 2002