The Complainant is Bayer Aktiengesellschaft of Germany, represented by Brinks Hofer Gilson & Lione, United States of America.
The Respondent is Sonny Mei, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bayer-schering.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2006. On October 20, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 23, 2006, Register.com 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. The Center verified that 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 October 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2006.
The Center appointed Wolter Wefers Bettink as the Sole Panelist in this matter on November 21, 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.
On November 29, 2006, the Panel issued an Administrative Panel Order, requesting the Complainant to provide the Panel with a signed letter from an authorized representative of the trademark holder for SCHERING, consenting to the Complainant’s demand to transfer the disputed domain name <bayer-schering.com> to the Complainant.
On December 1, 2006, the Center received a signed declaration of consent from Schering AG.
The language of the proceeding is English.
4. Factual Background
The Complainant is the holder of, amongst others, the following wordmarks, registered with the United States Patent and Trademark Office:
- BAYER, registered June 6, 1922, under registration number 155,612;
- BAYER, registered May 27, 1997, under registration number 2,065,441
and the following word marks, registered with the German Intellectual Property Office
(Deutches Patentamt, Markenabteilung):
- BAYER, registered June 2, 1900, under registration number 44115, most recently renewed on November 1, 1998;
- BAYER, registered December 5, 2002, under registration number 302 41 977.
The Complainant owns, amongst others, the domain names <bayer.de>, <bayer.us> and <bayer.com>.
Schering AG is, amongst others, the holder of the following word mark, registered with the German Intellectual Property Office (Deutches Patentamt, Markenabteilung):
- SCHERING, registered March 20, 1924, most recently renewed April 19, 2004,
under registration number 312 428.
Schering AG owns, amongst others, the domain name
<schering.de>.
5. Parties’ Contentions
A. Complainant
Rights in BAYER
The Complainant contends that its trademarks are widely known throughout the world. The Complainant’s company dates back to 1863. Currently, the Complainant is represented by some 350 companies on five continents, with 93,00 employees worldwide. The Bayer Group currently markets some 5.000 products, with net sales for fiscal year 2004 of Euro 29,758 million.
Rights in SCHERING
In June 2006, the Complainant acquired 90 % of the shares in Schering AG. A new company, which will be called Bayer Schering Pharma AG is currently being formed.
Identical or Confusingly Similar
The Complainant contends that the disputed domain
name is identical or confusingly similar to the BAYER trademark because the
BAYER trademark is fully incorporated within the Domain Name and comprises the
dominant portion thereof, see Magnum Piering, Inc. v. The Mudjackers, WIPO
Case No. D2000-1525: “when a domain name wholly incorporates a complainant’s
registered mark, that is sufficient to establish identity or confusing similarity
for the purposes of the Policy”.
The disputed domain name is confusingly similar, even
though it also incorporates an additional term, namely the SCHERING trademark.
See Chevron Corporation v. Young Wook Kim¸WIPO
Case No. D2001-1142: “The Panel is aware that another petroleum company’s
famous mark, viz “Texaco”, also is contained in the disputed domain
name and that Texaco is not a party to this proceeding. However, the Panel finds
that the Complainant nonetheless satisfies the requirements of the Policy at
4a(i).”
The Complainant contends that the combination of both
trademarks only increases the confusion, especially in light of the pending
merger. See Clifford Chance LLP And Punder GmbH v. CPIC Inc.,WIPO
Case No. D2000-1603: “The disputed domain name incorporates the whole
of both the CLIFFORD CHANCE and PÜNDER registered marks (…) It is thus
confusingly similar to both marks.”
Respondent’s Rights or Legitimate Interest
The Complainant states that the Respondent is not affiliated with the Complainant or Schering AG in any way. Neither the Complainant nor Schering AG have ever licensed, or otherwise authorized Respondent to use the BAYER mark, the SCHERING mark, or any other trademarks of the Complainant or Schering AG.
The Complainant further contends that the Respondent is not using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services, nor in connection with a legitimate noncommercial or fair use. Consequently, the Respondent cannot be commonly known by the domain name.
Registration and Use in Bad Faith
The Complainant contends that the Respondent must
have been aware of the BAYER and SCHERING trademarks, because both marks are
famous throughout the world. The BAYER mark is registered in the United States,
Respondent’s home country. Furthermore, the Respondent registered the
disputed domain name on March 23, 2006, shortly after Complainant’s corporate
takeover bid for Schering AG was announced. See Oriola Oy and Kronans Droghandel
AB v. Yes/Mr. Mustonen, WIPO Case No. D2006-0447:
“The fact that the Domain Name was registered on the very day that news
was first published of the merger talks between the Complainant and Monsanto
Company leads the Panel irresistibly to the conclusion that it was an opportunist
act by an alert entrepreneur with a view to making a profit”, see also
along similar lines CGNU plc v. Tess Caffrey/WIPPYWOW, WIPO
Case No. D2000-0769 and Láir Liquide v. MIC, WIPO
Case No. D2001-1246.
B. Respondent
The Respondent did not file a Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the BAYER mark and the Panel notes that the Complainant, for the purposes of these proceedings, has been authorized to act on behalf of the owner of the SCHERING trademark.
The Panel finds that the disputed domain name is confusingly similar to both
the BAYER and the SCHERING trademarks as the domain name fully incorporates
both trademarks. This is already sufficient to lead the public into assuming
that the disputed domain name is somehow connected with the Complainant, given
the fame of the Complainant’s trademarks. See eAuto, LLC v. Triple
S Auto Parts, WIPO Case No. 2000-0047;
Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO
Case No. D2000-1525; Cf. Wal-Mart Stores, Inc. v. MacLeod, WIPO
Case No. D2000-0662.
Therefore the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and the first element of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant has not licensed its trademark to the Respondent, nor has it consented to the Respondent’s use of its trademark as part of the domain name and there is no evidence of any other right or legitimate interest of the Respondent.
Therefore, the Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name, and the second element of the Policy has been met.
C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name shortly after the Complainant’s public announcement of its corporate takeover bid on Schering AG.
The Respondent is using the disputed domain name for a landing website, with paid advertising listings and links to various websites, including competing pharmaceutical and/or chemical companies. Thus, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website per paragraph 4(b)(iv) of the Policy.
The Panel finds that the disputed domain name is registered and being used
in bad faith, and accordingly, the third element of the Policy has been met.
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-schering.com> be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: December 12, 2006
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