The Complainant is Bayer AG of Leverkusen, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Ivan I Ivanov of Moscow, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <bayer-pharmacy.com> and <pharmacy-bayer.com> (the “Domain Names”) are registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2009. On July 9, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the Domain Names. On July 10, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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” or “UDRP”), 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 July 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 13, 2009.
The Center appointed Amarjit Singh as the sole panelist in this matter on August 25, 2009. 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.
4. Factual Background
4.1 The Complainant claims to be a global enterprise with core competencies in the fields of health care, nutrition and high-tech materials. The Complainant's Global headquarters are in Leverkusen, Germany. The Complainant claims that its stock is included in nearly all the major share indices, traded on all German stock exchanges and included in the DAX 30, a Blue Chip stock market index consisting of the 30 major German companies trading on the Frankfurt Stock Exchange.
4.2 The Complainant submits that the company name “BAYER” dates back to 1863, when the firm of “Friedrich Bayer & Co.” was established in the town of Elberfeld, now part of the city of Wuppertal in Germany. In 1881, the name was transferred to a stock corporation called “Farbenfabriken vorm. Friedrich Bayer & Co.”. This company began manufacturing and marketing pharmaceutical products in 1888, and has sold such products under the BAYER trademark since that time.
4.3 The Complainant submits that through more than 350 local subsidiaries and with more than 106,000 employees worldwide, the Complainant does business on all five continents, manufacturing and selling numerous of products, inter alia, human pharmaceutical and medical care products, veterinary products, diagnostic products, agricultural chemicals, industrial chemicals, fabrics, paints, and specialty polymers.
4.4 The Complainant submits that the Complainant is the owner of over 1000 trademark and service mark registrations and pending applications for registration of the BAYER trademark worldwide, including the registrations in the Russian Federation, where Respondent is located. The Complainant's registrations cover an extensive range of goods and services, including without limitation: pharmaceutical preparations, chemicals, waste water treatment chemicals for industrial use, pigments, synthetic and artificial resins, coatings, plastics, greases, lubricants, rubber, synthetic rubber and rubber chemicals for use in the automotive, tire, adhesives, fibers, yarns, threads, agricultural chemicals, pesticides, insecticides, fungicides, herbicides and cleaning materials industry.
Algeria, Egypt, Kazakhstan, Liberia, Sudan, Tajikistan, Australia, Georgia, Iceland, Japan, North Korea Norway, Singapore, Turkmenistan, Turkey, Uzbekistan, Zambia, Armenia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China Republic, Cuba, Croatia, Ireland, Kenya, Kyrgyzstan, North Korea, Liechtenstein, LS, Morocco, Macedonia, Republic of Moldova, ME, Macedonia, Namibia, Serbia, Russia, San Marino, Swaziland, Ukraine, Viet Nam, Singapore
01, 05, 31
4.5 The Complainant submits that the trademark BAYER is obviously and solely connected with the Complainant. A Google search for the term “Bayer” shows that nearly all of the search results refer to the Complainant or its subsidiaries. The Complainant has annexed the printouts from the results of the search conducted on June 16, 2009 are provided as Exhibit 5.
4.6 Furthermore, the Complainant states that it has a strong presence on the Internet. Complainant and its subsidiaries own hundreds of domain name registrations containing the mark BAYER, inter alia, <bayer.com>. As a result of the exclusive and extensive use, Complainant's BAYER trademarks have acquired significant goodwill and are widely known.
5. Parties' Contentions
A. Complainant
5A.(1). The Complainant claims to be the global enterprise with core competency in the field of health care, nutrition and high tech materials. The Complainant claims to begin manufacturing pharmaceutical products in 1881 under the trademark BAYER through Corporation Farbenfabriken vorm. Friedrich Bayer & Co.
5A.(2) The Complainant also claims to be the owner of over a thousand trade and service mark registrations and pending application for registration of mark BAYER worldwide including registration in Russian Federation where the Respondent is located. The Complainant has annexed the trademark registrations as Exhibit 4 to the Complaint.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Respondent was given notice of these proceedings in accordance with the Rules. The Centre discharged its responsibility under the Policy (paragraph 2A) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
However, as stated above, the Respondent has failed to file any Response to the Complaint and has not sought to answer the Complainant's assertions, evidence or contentions in any manner, the Panel will proceed to decision to the Complaint.
The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by Policy paragraph 4(a). To succeed in this proceeding and obtain the transfer of the Domain Names, the Complainant must prove the three following elements:
1. The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the Domain Names (see below, section 6.B); and
3. The Domain Names have been registered and are being used in bad faith (see below, section 6.C).
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 14(b) of the Rules, the Panel may draw inferences it considers appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence. In these circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply.
A. Identical or Confusingly Similar
6A-1 The Complainant submits that the disputed domain names <bayer-pharmacy.com> and <pharmacy-bayer.com> are confusingly similar to the Complainant's well-known BAYER trademarks.
The Complainant further relies on the decision in Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 pertaining to the domain name <guiness.com> wherein the panel gave its findings which this Panel regards as the appropriate test for confusing similarity ( a comparison of the domain name and the mark.)
The Complainant also relies on various UDRP decisions in its Complaint with regard to the test of identical or confusingly similar domain name/service mark.
6A-3 The Complainant further submits that the Domain Names wholly incorporate the Complainant's well-known trademark BAYER, used in connection with pharmaceutical products, drugs, nutrition, high-tech materials and human and animal health care products. The fact that the word “pharmacy” is added to the Complainant's trademark does not eliminate the similarity between the Complainant's trademark and the Domain Names, as “pharmacy” is the descriptive component of the Domain Names which merely describes one of Complainant's fields of business.
The Complainant further relies upon various UDRP decisions on the proposition that a domain name wholly incorporates a registered trade mark may be sufficient to establish confusing similarity for the purposes of the policy despite the addition of descriptive words such as “pharmacy”.
The Complainant relies upon numerous UDRP decisions with regard to the above proposition and submits that the Domain Names <bayer-pharmacy.com> and <pharmacy-bayer.com> are confusingly similar to the well-known trademark BAYER in which the Complainant claims to have exclusive rights.
6A-4 The Respondent did not respond to the Complaint filed by the Complainant. The Panel accepts the Complainant's arguments as persuasive and in the absence of any denial on the part of the Respondent, the Panel finds that the Complainant has satisfied the first element of UDRP.
B. Rights or Legitimate Interests
6B-1 The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain names incorporating the trademark BAYER.
6B-2 The Complainant further submits that the well-known mark BAYER is highly distinctive and obviously connected with the Complainant's business and products and is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant.
6B-3 The Complainant further submits that there is no evidence of its use, or demonstrable preparations to use the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services.
6B-4 The Complainant further submits that the Respondent was using the domain name <pharmacy-bayer.com> to provide a pharmacy related website which was promoted by spam emails and therefore used the domain name <pharmacy-bayer.com> to capitalize on the Complainant's mark. Such use is not a bona fide use pursuant to Paragraph 4(c)(i) of the Policy.
6B-5 The Complainant further submits that finally, there is no evidence, which suggests that Respondent trades under the domain names or the names “BAYER-PHARMACY” and/or “PHARMACY-BAYER”, or is commonly known by said domain names or the names “BAYER-PHARMACY” and/or “PHARMACY-BAYER”, or is making a legitimate non-commercial or fair use of the domain names.
6B-6 The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to register or use any domain names incorporating the trademark BAYER.
6B-7 The Respondent did not respond to the Complaint filed by the Complainant.
The Panel finds therefore that the in light of the circumstances above referred to, that the Complainant has made out its unrebutted prima facie case under the second element of the UDRP.
C. Registered and Used in Bad Faith
6C-1 The Complainant submits that Respondent has also registered and is using the Domain Names in bad faith.
6C-2 The Complainant further submits that the Respondent does not conduct any legitimate commercial or noncommercial business activity. The Complainant's highly distinctive trademark BAYER is long established and widely known. It is therefore inconceivable that the Respondent registered the domain names unaware of the Complainant's rights in its trademark BAYER. This assertion is supported by the fact that the Respondent registered juxtapositions of the Complainant's trademark and the word “pharmacy”, describing one of the Complainant's fields of business, and therefore was obviously thinking of the Complainant when registering the Domain Names.
6C-3 The Complainant further submits that first, by registering the two different domain names including the Complainant's well-known trademark BAYER the Respondent prevents the Complainant from reflecting its trademark under a corresponding domain name and engages in a pattern of such conduct. This also constitutes bad faith.
The Complainant also relies on various UDRP decisions on the question of bad faith under UDRP.
6C-4 That the Complainant further submits that the fact that the Respondent registered a well-known trademark which is obviously connected with the Complainant's products also supports the finding of bad faith. The very use of a well-known trademark by someone with no connection with the product suggests opportunistic bad faith.
The Complainant relies upon the decision of WIPO on use of well-known trademark by someone with no connection with the product suggests opportunistic bad faith.
6C-5 The Complainant further submits that the Respondent's bad faith is further evidenced the attempt to hide its true an identity behind a false registrant name.
The Complainant submits that Ivan Ivanovich Ivanov was a Russian-Soviet mathematician who worked in the field of number theory and died on December 17, 1939 but is in all likelihood not the Respondent's true name.
The Complainant relies upon various UDRP decisions on the proposition of concealing true identity while registering the domain name.
6C-6 The Complainant states that with regard to the domain name <pharmacy-bayer.com> evidence of bad faith use is further established by the fact that the Respondent used the disputed domain name <pharmacy-bayer.com> in connection with a pharmacy related website which was promoted by spam emails and therefore tried to divert traffic intended for Complainant's website to its own by creating a likelihood of confusion with the Complainant's trademark for commercial gain.
6C-7 The Complainant submits that this qualifies as bad faith under paragraph 4(b)(iv) of the Policy as the Respondent's use of the domain name attempts to attract for commercial gain Internet users to the Respondent's website.
The Complainant relies upon the decision of Ahead Software AG. v. Leduc Jean,
WIPO Case No. D2004-0323.
6C-8 The Complainant further argues the fact that the domain name <bayer-pharmacy.com> is not actively used but merely passively held as such does not obstruct a finding of bad faith with regard to this domain name as such passive holding of the domain name is equal to active use in the present case.
6C-9 The Complainant further submits that the circumstances in this case clearly justify the finding of bad faith, of passive holding and active use, because:
- The Complainant's trademarks have a strong reputation and are widely known;
- The Respondent had provided no evidence whatsoever of any actual or contemplated good faith use;
- The Respondent has taken active steps to conceal its true identity; and
- It is not conceivable of any plausible actual or contemplated active use of the Domain Names that would not be illegitimate.
6C-10 The Respondent did not respond to the Complaint filed by the Complainant. In the absence of any denial on the part of the Respondent, the Panel is persuaded in light of the present record that the Respondent has registered and used the Domain Names in bad faith and the Complainant has satisfied the third element of UDRP.
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 names, <bayer-pharmacy.com> and <pharmacy-bayer.com> be transferred to the Complainant.
Amarjit Singh Sole Panelist
Dated: September 8, 2009
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