WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. WhoisGuard Protected, WhoisGuard, Inc. / Carlos Martinez

Case No. D2018-1520

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Carlos Martinez of Santa Barbara, California, United States of America ("United States").

2. The Domain Name and Registrar

The disputed domain name <monsantoequalsbayer.com> (the "Disputed Domain Name") is registered with NameCheap, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 6, 2018. On July 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 16, 2018.

The Center verified that the Complaint together with the amended 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 July 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 7, 2018.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 31, 2018. 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

The Complainant, Bayer AG, is a multinational pharmaceutical, life sciences and agrochemical company established in Germany. The Complainant is one of the largest pharmaceutical companies worldwide and employs over 100 thousand employees in over 100 countries around the world. In 2016, the Complainant announced that it had reached an agreement to acquire the multinational biotechnology and agrochemical company Monsanto. The acquisition was completed on June 7, 2018. Monsanto is now a subsidiary of the Complainant.

The Complainant is the holder of a multitude of trade and service mark registrations across various jurisdictions throughout the world, including the United States, where the Respondent is located, for the mark BAYER, which it uses in connection with its pharmaceutical and life sciences products and services. The Complainant's trademark portfolio includes, inter alia, the following trade and service mark registrations:

- BAYER, international word mark registered with the World Intellectual Property Organization ("WIPO") under No. 182970 on February 25, 1955 in classed 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 30, 31, 32 and 34 in numerous jurisdictions;

- BAYER, word mark registered with the United States Patent and Trademark Office ("USPTO") under No. 3,222,255 on March 27, 2007 in classes 1, 5 and 31;

- BAYER, word mark registered with the ministry of commerce and industry of Panama under No. 24029 on October 4, 1979 in class 3; and

- BAYER, word mark registered with the European Union Intellectual Property Office ("EUIPO") under No. 011628625 on August 19, 2013 in classes 1, 3, 5, 9, 10, 17, 19, 31, 32, 37, 42 and 44.

The Disputed Domain Name <monsantoequalsbayer.com> was registered by the Respondent on June 8, 2018, one day after the Complainant completed its acquisition of Monsanto. The Disputed Domain Name currently does not resolve to an active webpage. The Disputed Domain Name used to resolve to a standard parking page offered by the Registrar. The parking page advertised domain name registration services offered by the Registrar and displayed sponsored links primarily related to the Complainant, Monsanto and life sciences.

5. Parties' Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant's trademark. The Complainant further claims that the Respondent has registered the Disputed Domain Name primarily to attract for commercial gain, by earning pay-per-click revenue, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The Disputed 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 Disputed Domain Name; and

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are BAYER trademarks in which it has rights. The trademarks have been registered and used in various countries in connection to the Complainant's pharmaceutical and life sciences services and products.

The Disputed Domain Name <monsantoequalsbayer.com> reproduces the Complainant's BAYER trademark in its entirety. The incorporation of the Complainant's BAYER trademark is preceded by the term "equals" and also incorporates the trademark MONSANTO, which belongs to Monsanto Company. Since June 7, 2018, Monsanto Company operates as a subsidiary of the Complainant.

Previous UDRP panels have consistently found that the inclusion of a third-party trademark in the Disputed Domain Name does not eliminate the visual impression that the Disputed Domain Name is associated with the Complainant's trademark. The fact that these terms are also trademarks of those third parties does not, of itself, preclude a finding of confusing similarity (see, inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793; Yahoo! Inc. v. Scott Mcvey, WIPO Case No. D2011-1486; WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com, WIPO Case No. D2012-0674; Philip Morris USA Inc. v. Whoisguard Protected, Whoisguard, Inc. / MARK JAYSON DAVID, WIPO Case No. D2016-2194; F. Hoffmann-La Roche AG v. Bob, WIPO Case No.
D2006-0751).

Additionally, with regard to the non-distinctive term "equals", the Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark does not avoid confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8, and cases cited therein).

Moreover, the addition of "monsanto" together with the non-distinctive term "equals" in the Disputed Domain Name may even strengthen the association with the Complainant as it directly refers to the Complainant's recent corporate acquisition of Monsanto Company (see in this regard the analysis under "C. Registered and used in bad faith").

Additionally, it is well established that the generic Top-Level Domain ("gTLD") ".com" may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant's BAYER trademark.

Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent's use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is not making any real use of the Disputed Domain Name which simply resolved to an undeveloped parking page provided by the Registrar. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant's distinctive and well-known trademark in its entirety with the addition of the trademark MONSANTO and the non-distinctive term "equals", which together relates to the Complainant's recent acquisition of the Monsanto Company. Considering the strong reputation of the Complainant's trademark, the Respondent must have had knowledge of the Complainant's rights at the time of registering the Disputed Domain Name. The Panel finds that the Respondent's awareness of the Complainant's trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, supra; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

The Disputed Domain Name currently does not resolve to an active webpage. Before the filing of the Complaint, the Responded did not actively use the Disputed Domain Name other than in connection with a parking page provided by the Registrar. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant's well-known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). The fact that there is an absence of evidence of any actual or contemplated good faith use is a further circumstance that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).

In the present case, the Panel is of the opinion that the Complainant's trademark is distinctive and widely used, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. The Panel considers that the Respondent has likely registered the Disputed Domain Name for the purpose of earning pay-per-click revenues by attracting Internet users looking for information on the Complainants recent acquisition of Monsanto Company.

Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity, which may further support an inference of bad faith in light of the circumstances in which the service or the Disputed Domain Name is used (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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 Disputed Domain Name <monsantoequalsbayer.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: September 11, 2018