WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Konayem Temirtassova

Case No. D2016-0340

1. The Parties

The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.

The Respondent is Konayem Temirtassova of Aktau, Kazakhstan.

2. The Domain Names And Registrar

The disputed domain names <buycipro.xyz> (the “CIPRO Domain Name”) and <levitra.site> (the “LEVITRA Domain Name”) (together, the “Domain Names”) are registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 23, 2016 and March 7, 2016, the Registrar 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 Domain Names.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2016.

On March 16, 2016 the Center received an email from an individual purporting to be related to the Respondent, acknowledging receipt of a March 8, 2016 letter from the Center to “my mother (Konaiyem Temirtassova)” and requesting a copy of the notice in Russian and an explanation. On March 16, 2016, the Center responded by return email that the proceedings were conducted in English because the domain names were registered by Konayem Temirtassova with the Registrar Mesh Digital Limited pursuant to a registration agreement in English. The Center further stated that “The Respondent can refer to the Notification of Complaint document for its rights and obligations and the Response is due on March 28, 2016”. The Respondent did not submit any formal response by the due date.

On March 29, 2016, the Center received an informal communication by email from a different third party individual referring to this proceeding, stating that the letter received was “very confusing,” requesting an explanation, and observing that “We assume this has to do with kids browsing the Internet”. The Center replied that same day by email to that individual, noting that the Complaint in this proceeding had been filed against the Respondent Konayem Temirtassova, whose Response had been due on March 28, 2016, which had passed, and asking the individual to “identify your relationship with the Respondent as soon as possible”.

On March 29, 2016 the Center also sent the Parties an email notice advising them that the Respondent had failed to comply with the deadline indicated in the Notification of Complaint for the submission of its formal Response in this case, and that the Center would therefore proceed with the appointment of the single-member Administrative Panel, as designated in the Complaint.

On April 11, 1916, the Center appointed Dana Haviland as the sole panelist in this matter, pursuant to a Notification of Panel Appointment sent to the parties on that date. 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 April 12, 2016, the Center received and forwarded to the Panel a second email from the individual who had sent the March 29, 2016 email referred to above. This email stated that the Respondent’s family do not speak English and had asked for the individual’s help in getting information about the letter received earlier and the nature of the dispute, because “this family does not get involved in any Internet activities unless kids watch cartoons online and play games”. The individual also asked “Is there a possibility that someone else is using their IP?”¹ On April 19, 2016, the Center sent an email to the individual stating that the Center had forwarded the communication of April 12, 2016 to the Panel, which, pursuant to paragraphs 10 and 12 of the UDRP Rules, requested that “[the individual] identify her relationship with the Respondent Konayem Temirtassova”. No further communications have been received in this case from the individual or the Respondent.

4. Factual Background

A. Complainant

The Complainant BAYER AG, a German company doing business globally through over 250 affiliates, is a manufacturer and seller of pharmaceutical and medical products, veterinary products, diagnostic products, and agricultural chemicals.

Its product “LEVITRA”, a prescription medicine used to treat erectile dysfunction, has been marketed by the Complainant since march 2003 and is sold in many countries worldwide. The Complainant owns numerous trademark registrations for its LEVITRA product, including United States Patent and Trademark Office (“USPTO”) trademark registration no. 622847, registered on September 24, 2002; USPTO trademark registration no. 3050814, registered on January 24, 2006; and International trademark registration no. 744146, registered on september 25, 2000, covering, inter alia, Kazakhstan, where the Respondent is located (the “LEVITRA Mark”). The Complainant affiliated companies are marketing the LEVITRA product using a number of domain name registrations, including <levitra.com>.

Its product “Cipro” is an antibiotic used to treat bacterial infections, for which the Complainant obtained a patent in 1983 and began marketing in 1987. The Complainant has hundreds of trademark registrations worldwide, including USPTO trademark registration no. 1584286, registered on February 27, 1990, and Canadian trademark registration no. Tma356070, registered on May 19, 1989 (the “CIPRO Mark”). The Complainant owns numerous domain name registrations incorporating the CIPRO Mark, including <cipro.com>.

B. Respondent

The Respondent registered the domain name <buycipro.xyz> on December 29, 2014. The Respondent registered the Domain Name <levitra.site> on January 23, 2016.

The Complainant has produced WhoIs searches showing that the Respondent has registered 121 domain names, which include a number of domain names incorporating well known trademarks of pharmaceutical products such as <advair.xyz>, <buy-cialis.xyz>, <buy-lasix.xyz>, <buycialisonline.xyz>, <generic-cialis.xyz>, <generic-lasix.xyz>, <generic-xenical.xyz>,<genericxenical.xyz>,<lasix.site>, <lasix.xyz>, and <lipitor.site>.

The Complainant has submitted a screenshot showing that, at the time of filing of the complaint, the LEVITRA Domain Name was being used in connection with a parking website including links to the Complainant’s competitors’ products, “Cialis” and “Xanax”. According to the Complainant, at that time the CIPRO Domain Name was not being actively used in connection with a website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical or confusingly similar to trademarks in which it has prior registered rights, that the Respondent has no rights or legitimate interests in the Domain Names, and that the Respondent registered and is using the Domain Names in bad faith. The Complainant requests transfer of the Domain Names.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

6. Discussion And Findings

Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in the domain name; and

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

A. Identical or Confusingly Similar

The Complainant has submitted evidence to establish that it is the owner of rights in both its CIPRO Mark and its LEVITRA Mark which predate the registration of the Domain Names.

The LEVITRA Domain Name consists entirely of the Complainant’s LEVITRA Mark and the generic Top-Level Domain (“gTLD”) “.site”. The LEVITRA Domain Name is thus identical to the Complainant’s LEVITRA Mark except for the gTLD, which can be disregarded for purposes of determining the identity or confusing similarity of a domain name to a complainant’s trademark. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Iconcard S.p.A. v. Linecom, WIPO Case No. D2005-1115; L’Oréal v. Tina Smith, WIPO Case No. D2013 0820.

The CIPRO Domain Name incorporates the Complainant’s CIPRO Mark in its entirety, merely adding the generic term “buy” and the “.xyz” gTLD. The addition of a generic term like “buy” does not diminish the confusing similarity of the CIPRO Domain Name to the Complainant’s CIPRO Mark. See Lilly ICOS, LLC v. Insight Ventures/James Connell, WIPO Case No. D2006-1057 (“adding descriptive terms or other marks does not alleviate confusion”).

The Panel finds that the LEVITRA Domain Name is identical, and the CIPRO Domain Name is confusingly similar, to trademarks in which the Complainant has rights. The Complainant has thus established the first element of its claim with respect to both Domain Names under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:

before any notice to the respondent of the dispute, the respondent used, or made demonstrable 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

the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or

the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1; Virgin Enterprises Limited v. KAP Computer Solutions Pvt. Ltd., WIPO Case No. D2013-0715. Here the Complainant has made out such a prima facie case, and the Respondent has not submitted any formal response to the Complainant’s contentions or evidence to establish any rights or legitimate interests in the Domain Names.

According to the Complaint, the Respondent has registered the Domain Names including, respectively, the Complainant’s CIPRO Mark and LEVITRA Mark without the Complainant’s authorization. The Complainant asserts that the Respondent is not commonly known by the name “Cipro” or the name “Levitra”, and has not been licensed or permitted to use any of the Complainant’s trademarks in a domain name or otherwise.

There is no evidence that the Respondent has used, or made demonstrable preparations to use either Domain Name in connection with a bona fide offering of goods or services. Nor is there any evidence that the Respondent was making any legitimate or fair use of either of the Domain Names. The LEVITRA Domain Name was being used in connection with a parking website with links to the Complainant’s competitors’ products. The Respondent’s use of the Complainant’s Mark for a website displaying click-through links to the Complainant’s competitors does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Eli L. Lilly and Company v. URDMC, LLC, WIPO Case No. D2011-0715 (respondent’s use of the disputed domain name for a parking website, which advertised goods and services of the complainant and third parties that were competitive with those of the complainant, did not establish rights or legitimate interests); Columbia Insurance Company,Benjamin Moore v. Whois Data Shield and St Kitts Registry,WIPO Case No. D2007-0741; Unilever N.V. v. Kentech, Inc., WIPO Case No. D2005-1021.

At the time the Complaint was filed, the CIPRO Domain Name was not being used in connection with a website, and the Respondent has submitted no evidence that would support a finding of any rights or legitimate interests under paragraph 4(a)(ii) of the Policy. Moreover, the Respondent’s history of registering many domain names incorporating similarly well known trademarks of pharmaceutical products gives rise to an inference that the registration and intended use of the CIPRO Domain Name was for the purpose of commercial gain through sponsored links like those found on the LEVITRA Domain Name website in this case, and thus gave rise to no rights or legitimate interests in the CIPRO Domain Name.

Recent UDRP cases against the Respondent found no rights or legitimate interests with respect to a number of domain names registered by the Respondent and others which incorporated well known trademarks of pharmaceutical products and resolved to parking websites including sponsored links to the products of competitors to the complainants in those cases. See AbbVie Inc v. Konayem Temirtassova, NAF Claim No. 1604178 and F. Hoffmann-La Roche AG v. Konayem Temirtassova, Tigran Movsisyan, Aleksandr Bannikov, Valentin Barshev, Oleg Sobin, Igor Ivanov, Sergey Timofeev, Igor Ivanov, N/A, Vladimir D Kiskov, Private Person, Irina F Scherban, Private Person, Aleksandr V Sivkov, Private Person, Igor Ivanov, [RU]70983550, Albert Sadykov, [RU]722410292, Tigran Mosisyan, [AM]0720347, Vladimir Kiskov, [RU]4607604244, Anastasiya Yankova, [RU]4606291090, Konstantin Tkachev, [RU]4507343219, Kristina Melnichenko, [RU]712403282, Igor A Ivanov, Private Person, Zhuhai Yingxun Keji Limited aka Zhuhai Yingxun information technology limited, WIPO Case No. D2015-0984 (a consolidated case against the Respondent and others resulting in transfer of 74 domain names incorporating various well known trademarks of pharmaceutical products).

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in either of the two Domain Names, and that the Complainant has satisfied the second element of its claim with respect to both Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy:

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

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

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

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

The registration and use of the LEVITRA Domain Name for a parking website shows that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the products offered for sale through the sponsored links on the website. Thus the registration and use of the LEVITRA Domain Name constitute bad faith registration and use under paragraph 4(b)(iv) of the Policy. See AbbVie Inc v. Konayem Temirtassova, supra, another case against the Respondent, wherein the panel found bad faith registration and use of three domain names similarly incorporating well known pharmaceutical trademarks and used for parking websites, citing a series of UDRP cases finding bad faith registration and use of domain names under paragraph 4(b)(iv) of the Policy “where the respondent was using the confusingly similar domain to attract Internet users to its commercial website.” The AbbVie panel also found that "Respondent's demonstrated pattern of bad faith use and registration of domain names to profit from unsuspecting Internet users is further and conclusive evidence of its bad faith in the present case."

Although the evidence shows passive holding of the CIPRO Domain Name at the time of filing of the Complaint, the particular circumstances of this case and the evidence submitted by the Complainant of the Respondent's other domain name registrations support a finding that the registration and use of the CIPRO Domain Name was part of the Respondent’s pattern of registering a large number of domain names incorporating well known trademarks of pharmaceutical products for use as parking websites for commercial gain, and therefore also constitutes bad faith registration and use. See WIPO Overview 2.0, paragraph 3.2 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (under the circumstances of a particular case, passive use may support a finding of bad faith registration and use). In F. Hoffman v. Konayem Temirtassova et al., supra, transferring the 74 domain names in question, the panel found bad faith use under the similar circumstances of that case, even with respect to inactive websites, citing WIPO Overview 2.0, paragraph 3.2.

The Panel finds that the Complainant has established the Respondent’s bad faith registration and use of both the LEVITRA Domain Name and the CIPRO Domain Name. The Complainant has therefore satisfied the third element of its claims with respect to both Domain Names, under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <buycipro.xyz> and <levitra.site> be transferred to the Complainant.

Dana Haviland
Sole Panelist
Date: April 25, 2016

¹ The Panel cannot answer this question, as there is insufficient evidence in this case for its determination, but the issue of possible identity theft with respect to the name or IP address of the Respondent, though troubling, is not essential to the resolution of the Complainant’s claim for transfer within this administrative proceeding of limited scope.