WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. FBS Inc, Whoisprotection.biz / Murat Kanal

Case No. D2018-2051

1. The Parties

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

The Respondent is FBS Inc, Whoisprotection.biz of Famagusta, Cyprus / Murat Kanal of Istanbul, Turkey, self-represented.

2. The Domain Names and Registrar

The disputed domain names <bayer.ist> and <bayer.istanbul> are registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 10, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 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 September 20, 2018.

Pursuant to the Complaint submitted in English and the registrar verification dated September 10, 2018 stating that Turkish is the language of the registration agreement of the disputed domain name, on September 10, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On September 10, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.

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 in English and Turkish of the Complaint, and the proceedings commenced on September 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2018. The Respondent submitted various informal email communications but did not submit a formal response. Accordingly, on October 12, 2018, the Center notified the Parties that it would proceed to panel appointment.

The Center appointed Uğur G. Yalçıner as the sole panelist in this matter on October 30, 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 of Leverkusen, Germany, operates in the fields of health care, nutrition and plant protection. The firm of Friedrich Bayer & Co. was established in 1863 and the name was transferred to a stock corporation called “Farbenfabriken vorm. Friedrich Bayer & Co.” in 1881. This company began manufacturing and marketing pharmaceutical products in 1888, and has sold such products under the BAYER trademark ever since. The Complainant is represented by over 250 affiliates and has more than 100,000 employees worldwide.

The Complainant is the owner of about 700 registrations and pending applications of the trademark BAYER worldwide for an extensive range of goods and services, including pharmaceuticals, veterinary preparations, cosmetics, dietetic substances, coatings, plastics, agricultural chemicals, pesticides, insecticides, fungicides, and herbicides. The Complainant points to its below mentioned trademark registrations in the European Union, Cyprus and the Second Respondent’s location, Turkey.

- European Union Trade Mark registration No. 011628625 registered on August 19, 2013;

- Cyprus Trademark registrations No. 08227, 08228, 08229, 08230 registered on July 2, 1963;

- Cyprus Trademark registration No. 09515 registered on October 13, 1965; and

- Turkish Trademark registration no. 100647 registered on December 31, 1997.

The Complainant and its subsidiaries own hundreds of domain name registrations including <bayer.com> and <bayer.tr>

The disputed domain names were registered on April 24, 2018. At the time of this Decision the disputed domain names resolved to pages indicating that the respective websites are under construction. At the time of this Decision the disputed domain names did not resolve to an active webpage.

5. Parties’ Contentions

A. Complainant

The Complaint includes the following contentions:

(i) Identical or Confusingly Similar

The Complainant states that the disputed domain names fully incorporate the well-known BAYER marks and are identical to such marks. It is well established that generic Top-Level Domains (“gTLDs”) are generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between a complainant’s trademark and the domain name.

(ii) Rights or legitimate interests

The Complainant indicates that the BAYER marks are well known and obviously connected with the Complainant and its products, “Bayer” is not a word any market participant or other domain registrant would legitimately choose unless seeking to create an impression of an association with the Complainant, the Complainant 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 name incorporating the BAYER marks and these circumstances themselves are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the disputed domain names on the part of the Respondent.

The Complainant alleges that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy and there is also no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, or is commonly known by the disputed domain names or the name BAYER.

(iii) Registration and Use in Bad Faith

The Complainant contends the Respondent’s bad faith based on the following grounds;

- The Respondent registered the disputed domain names by being aware of the Complainant and its rights in its highly distinctive and well-known BAYER marks based on the high profile worldwide and considering that the Respondent had contacted one of the Complainant’s employees in Turkey on April 27, 2018, only three days after the registration of the disputed domain names, offering the disputed domain names for sale. The Respondent has registered the disputed domain names primarily for the purpose of selling as the only statement made on the website is the one informing any Internet user that the domain names at issue are on sale.

- The Respondent’s registration of the disputed domain names prevents the Complainant from reflecting its trademarks in corresponding domain names and the Respondent has engaged in a pattern of such conduct, as set out in paragraph 4(b)(ii) of the Policy.

- The Respondent registered domain names which include a trademark that is obviously connected with the Complainant and its products also supports the finding of bad faith as the very use of such domain names by someone with no connection with the products suggests opportunistic bad faith.

- The Respondent’s use of the disputed domain names is qualified to disrupt the Complainant’s business and that it is capable of reducing the number of visitors to the Complainant’s website, may adversely affect the Complainant’s business and therefore constitutes bad faith and the registration of the disputed domain names by the Respondent also constitutes an abusive threat hanging over the head of the Complainant, which also supports a finding of bad faith.

B. Respondent

The Respondent, namely Murat Kanal, is the registrant of the disputed domain name and did not reply to the Complainant’s contentions formally. The Respondent registered the disputed domain names using a privacy service to mask its identity. The Respondent submitted informal email communications asserting that he has not used the disputed domain names in a manner that is damaging or degrading the Complainant’s trademark and confirming that he had contacted the Complainant to sell the disputed domain names. He also expressed his intention to transfer of the disputed domain names to the Complainant in case of compensation of his expenses in his email of September 24, 2018 to the Center.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Although the language of the Registration Agreement for the disputed domain name is Turkish, the Complainant argues that the language of the administrative proceeding should be English based on the disputed domain names were registered in ASCII characters, the Respondent can understand English as the Respondent replied to the Complainant’s buying offer of the disputed domain names in English, the Complainant is not able to communicate in Turkish and therefore, if the Complainant was required to submit all documents in Turkish, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation and the Complainant would be unfairly disadvantaged accordingly.

It is established practice to make a decision regarding the language of the proceeding to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. In this case, the Panel notes that the email communications between the Parties have been sent in English, which suggest it is likely that the Respondent can understand English or at least is able to translate documents from/to English/Turkish. The Panel, noting that the Respondent was notified of the present proceeding in both English and Turkish, and that he has, nevertheless, failed to comment on the language of the proceeding, agrees with the above-mentioned issues which are asserted by the Complainant and determines English to be the language of this proceeding.

6.2. Substantive Proceedings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements are present:

(i) The disputed domain name registered by the Respondent 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.

A. Identical or Confusingly Similar

The Complainant submits evidence for its registered trademarks in the European Union, Cyprus and Turkey. The Panel also determined that trademark BAYER is registered to the well-known trademarks registry of the Turkish Patent and Trademark Office. Accordingly, the Panel is satisfied that the Complainant is the owner of the trademark BAYER.

The disputed domain names entirely incorporate the Complainant’s trademark. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., 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.”

It is an accepted principle that gTLDs, in this case “.ist” and “.istanbul”, are to be typically disregarded in the consideration of the issue of whether a domain name is identical or confusingly similar to a complainant’s trademark. Disregarding the gTLDs “.ist” and “.istanbul”, the Panel notes that the disputed domain names are identical to the Complainant’s trademark.

In the light of the above the Panel finds that the disputed domain names are identical to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Once the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.)

The Panel confirms that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has neither replied to the Complainant’s contentions formally nor presented any evidence to support his legitimate interests or rights in the disputed domain names, merely that he sought to sell the domain names at issue to the Complainant. As the Respondent has failed to rebut this case, the Panel concluded that the Complainant has established the second element of paragraph 4(a) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Spenco Medical Corporation v. Transure Enterprise Ltd, WIPO Case No. D2009-1765; Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630; Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493.

The Panel also notes that the disputed domain names do not resolve to an active website and there is no evidence of the Respondent’s demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services, but they have been attempted to be sold by the Respondent and this further shows that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain names.

As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled by the Complainant.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith.

Paragraph 4(b)(i) of the Policy provides that one circumstance evidencing bad faith registration and use is “circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name.”

In the present case, the Respondent has proven that he has registered the domain names at issue primarily for the purpose of selling to the Complainant in the following ways:

- The screenshot of the correspondence between the Respondent and one of the Complainant’s employees in Turkey, which was evidenced by the Complainant, reveals that the Respondent contacted the Complainant’s subsidiary in Turkey in order to sell the domain name to the Complainant. The Complainant claims that the Respondent contacted the Complainant three days after the registration of the disputed domain name, however the Panel could not determine the date of communication as there is no date on the provided document.

- According to the Complainant’s assertion and the screen shots and print outs of the websites provided, there was an information on the websites associated with the disputed domain names that the domain names are on sale and the contact person is the Respondent. Even though the mentioned information at the websites had been changed to the information of the privacy service and the websites are under construction at the time of this decision, the print outs of the website dated June 4, 2018 prove that the Respondent has registered the disputed domains in order to sell them. See Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642.

- The email communication between Thomas Bayer and the Respondent, which was evidenced by the Complainant, shows that the Respondent demanded USD 7,500 for each disputed domain name in his reply to Complainant’s buying offer. There is no doubt that the demanded fee exceeds the Respondent’s

out-of-pocket costs associated with the disputed domain names. The Panel finds that the amount of the demanded fee indicates the bad faith of the Respondent. See Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034.

The Panel agrees with the findings in the similar case where panel has held that “The Complainant has provided evidence that the Respondent purchased the disputed domain name in order to sell it in gross excess of the registration costs. The wording of the Respondent’s email of March 26, 2012 (Annex 6 to the Complaint) leaves no doubt in this Panel’s mind that the Respondent directed his offer to sell the disputed domain name to the Complainant ten days after it registered the disputed domain name on March 16, 2012. This conduct shows the Respondent’s full knowledge of the existence of the Complainant and its YAHOO marks” (Yahoo! Inc. v. Mr. Omid Pournazar, WIPO Case No. D2012-1612).

The Panel finds that these circumstances indicate that the Respondent registered the disputed domain names primarily for the purpose of selling them to the Complainant.

The Panel confirms the reputation and recognition of the Complainant’s trademark BAYER and is convinced that the Respondent was aware of the Complainant and its reputation in the trademark BAYER when the disputed domain names were registered. Moreover, Istanbul is where the head office of the Complainant’s Turkish subsidiary “Bayer Türk Kimya San. Ltd. Şti.” is found. Therefore the Panel concludes that the addition of the gTLDs “.istanbul” and “.ist” may create an association with the Complainant in the mind of the Internet users since it references the city in which the Complainant also operates through its subsidiary. Several UDRP panels have held that registering and using the domain names which correspond to widely-known trademarks suggests bad faith. (Philip Morris USA Inc. v. Luca Brignoli, WIPO Case No. D2014-1180; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).

Having considered all the facts in this case, the Panel holds that the Respondent registered and is using the disputed domain name in bad faith.

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 names <bayer.ist> and <bayer.istanbul> be transferred to the Complainant.

Uğur G. Yalçıner
Sole Panelist
Date: November 12, 2018