WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Daniel H. Davies, Interplanetarium Corp.
Case No. D2003-0908
1. The Parties
The Complainant is Bayer AG, Leverkusen, Germany, represented by Noetinger & Armando, Argentina.
The Respondent is Daniel H. Davies, Interplanetarium Corp., Coral Gables, Florida, United States of America, represented by Axel Menges, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Blueberry Hill Communications, Inc. dba .
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2003 (electronic version), and on November 18, 2003 (hardcopy). On November 14, 2003, the Center transmitted by email to Blueberry Hill Communications, Inc. dba a request for registrar verification in connection with the domain name at issue. On December 12, 2003, Blueberry Hill Communications, Inc. dba 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. On January 6, 2004, 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 January 6, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 26, 2004. On January 22, 2004, Respondent requested an extension of term to submit his Response. The Center granted an extension of term, and the new due date for Response was set for February 9, 2004. The Response was filed with the Center on February 6, 2004.
The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on February 17, 2004. 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
Complainant is the owner of the trademark BAYASPIRINA in Argentina, Germany, Benelux, Bolivia, Brazil, Chile, China, Costa Rica, Cuba, El Salvador, the Philippines, Guatemala, Honduras, Nicaragua, Paraguay, Taiwan and Venezuela.
Complainant conducts its business operations through affiliates and distributors in more than 100 countries. Acetyl salicilic acid, a product discovered by Bayer AG in 1897, is commercialized under the marks BAYASPIRINA, BAYASPIRIN, ASPIRINA or ASPIRIN in virtually every country in the world.
Respondent is in the business of developing and marketing technology services and solutions.
The disputed domain name was registered on February 21, 2000.
5. Parties� Contentions
A. Complainant
A.1. Identity or Confusing Similarity
Complainant asserted the following:
1. The trademark BAYASPIRINA was first used in Argentina in 1911.
2. During the period 1999-2002, Complainant�s advertising expenditure through its Argentine affiliate Bayer S.A. was of approximately $ 66,300,000 (sixty six million three hundred thousand pesos).
3. According to the newspaper "Clarín," BAYASPIRINA is the mark that enjoys the highest market awareness in the country.
4. Respondent�s domain name is identical to the Complainant�s trademarks.
5. The harm caused by the Respondent to the Complainant by having registered in his name a domain name which is identical to its allegedly famous trademark is serious and is likely to cause confusion to the public.
A.2. Respondent�s lack of rights or legitimate interests in respect of the domain name
Complainant asserted the following:
1. Respondent has no relation whatsoever with the BAYASPIRINA trademark.
2. Complainant has been prevented from reflecting one of its most important trademarks without additions, in a corresponding domain name. As a result, Complainant loses an incalculable number of visits from customers and potential customers.
3. The fact that the disputed domain name is not associated with any type of content amounts to lack of rights or legitimate interests on the side of Respondent, since Respondent is not making a legitimate non-commercial or fair use of the domain name.
4. The illegitimacy of appropriation of the domain name by the Respondent is flagrant in view of Complainant's rights to the trademark BAYASPIRINA all over the world.
5. Had Respondent made a reasonable search prior to applying for registration of the contested domain name, he would have been aware that he was not in a position to register the disputed domain name, without infringing Complainant�s trademark rights to BAYASPIRINA.
A.3 Bad faith registration and use
Complainant submitted the following arguments:
1. Respondent intends to disrupt the business of Complainant by depriving it of a domain name in which Respondent has no legitimate interest.
2. The fact that the Respondent does not provide any content associated to the disputed domain is a clear indication that he intends to prevent Complainant from promoting the product covered by the trademark BAYASPIRINA, and an attempt to induce Internet users to believe that Complainant does not own a website or it is not technically prepared to maintain an active website.
3. Complainant invokes the doctrine of passive holding, and argues that even if Respondent has not caused the disputed domain name to resolve to any website, there can be no doubt that Respondent has used the contested domain name in bad faith. To that end, Complainant cites the following cases :
• Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
• Grupo Financiero Inbursa, S.A. de C.V. v. Alejandro Delgado-Ayala, WIPO Case No. D2001-0172 (March 27, 2001).
• Telstra Corporation Limited v. Peter Yellowlees, WIPO Case No. D2002-0638 (September 9, 2002).
4. The original registrant for the disputed domain name was KIT EXPRESS SRL, an Argentine company, with domicile at Córdoba, Argentina, its administrative contact being Mr. Romani, with the same domicile.
5. KIT EXPRESS S.R.L. also applied for and obtained the domain name , providing the same contact information mentioned in the foregoing point.
6. The domain name has been disputed before an Argentine Court, which has issued an interlocutory injunction thereby ordering the suspension of the registration for such domain name, and authorizing Complainant to register under its name, until the Court reaches a final decision.
7. Upon commencement of the Argentine legal actions regarding , the domain name was suddenly transferred from KIT EXPRESS S.R.L. to Daniel H. Davies/Interplanetarium Corp, allegedly in Florida, United States of America.
8. After having visited the website "," which relates to the contact details listed on the Registrar�s WHOIS database for the domain name , Complainant learned that Mr. Davies and Mr. Romani are partners, the latter being the company President and the former its Vice President.
9. Having consulted the WHOIS database regarding the domain name , Complainant learned that the owner of this domain name is Mr. Romani.
B. Respondent
B.1. Identity or Confusing Similarity
Respondent contested the following:
1. The term "aspirin" is a generic term, which may even be found in the dictionary.
2. In the United States and Argentina there are many aspirin products marketed under different brand names.
3. There are trademark registrations in the U.S. for ASPIRIN, like the following:
Registration No.
Trademark
Class
Goods/Services covered
2788617
Aspirin
14
Jewelry
2763261
AspirinCheck
42
Medical testing
2656522
HR Aspirin
35
Advertising and Business
1311932
UN Aspirin
05
Pharmaceuticals
2688842
Aspirin Works
42
Conducting clinical laboratory and home use tests to measure aspirin effectiveness
4. The trademark ASPIRINA originally applied before the USPTO by Complainant on or about 2000 for class 05, to cover analgesics, has been abandoned by the Applicant's express request on 2003.
5. Complainant has not filed applications to register the trademark BAYASPIRIN or BAYASPIRINA in the U.S.
6. The disputed domain name is not confusingly similar to a trademark in which the Complainant has rights, because Complainant and Respondent are in completely different businesses.
B.2. Respondent�s rights or legitimate interests in respect of the domain name
Respondent argued the following:
1. The website "www." is presently hosted and has been on and off during the present development stage regarding technological services, Internet applications and computer software.
2. The generic name "aspirin" is associated with headache, and thus Respondent has come up with the idea to develop and market technology solutions that would be headache free.
3. Respondent considered it a great business opportunity to offer Better Applications, free of all the traditional problems related to technology (e.g. headaches); according to Respondent, one thing led to the other and soon Respondent came up with the concept of Better Applications, Yes Headache-free, which later on became Bayaspirina.
4. Respondent was well-prepared to use the disputed domain name in connection with a bona fide offering of goods or services, without intent for commercial gain to misleadingly divert consumers or to tarnish the term BAYASPIRINA in any way.
5. During a three-month period, the website to which resolves received only 179 visitors.
6. Complainant has already registered and , and thus Internet users could simply type the term BAYASPIRINA in any search engine such as Google or Yahoo and instantly be redirected to the respective .org and .net websites (and not only ).
7. Counsel to Complainant contacted Mr. Carpio offering to buy the domain names and . Respondent has denied offers to sell the said domain names.
8. On July 8, 2003, a trademark application was filed with the United States Patent and Trademark Office (USPTO), on behalf of Interplanetarium Corp., in class 42 (TM Application No. 78271541).
B.3. Bad faith registration and use
Respondent submitted the following arguments (those arguments that are reproductions of the arguments made under points B.1 and B.2 supra, are not herein repeated):
1. If Complainant is so concerned about Internet users accessing its website, it should have registered the contested domain name far earlier.
2. Respondent never linked the disputed domain name to one of the many providers of generic products, and thus Respondent is not preventing Complainant from "promoting one of its best known products."
3. Transfer of ownership of the contested domain name in the U.S. is only related to Respondent�s strategy to take a global approach when developing and marketing technology services and solutions.
4. Respondent cites Wine of the Month Club, Inc. v. Kris Calef, WIPO Case No. D2003-0703 (December 16, 2003), to support his claim of absence of bad faith registration and use.
6. Discussion and Findings
In accordance with the Policy, Paragraph 4(a), the Complainant must prove that each of the following three elements are at present:
"(i) the domain name in question 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 domain name, and
(iii) the domain name has been registered and is being used in bad faith."
A. Identical or Confusingly Similar
Complainant has submitted a list of 28 trademark registrations that cover BAYASPIRINA in 16 countries of the world. Some of them were applied for as early as the year of 1922 (Chile and Guatemala). Complainant�s assertion that "the mark BAYASPIRINA was first used in Argentina in 1911" has not been contested.
Complainant has also submitted a list of 13 trademarks registered in Argentina, comprised of, or containing the mark BAYASPIRINA. One of the most senior Argentine trademarks of Complainant, i.e. Registration No. 1575728 BAYASPIRINA in class 5, was filed on February 17, 1995, and granted on April 26, 1995.
The above mentioned trademark registrations confer exclusive rights upon Complainant, with respect to the trademark BAYASPIRINA. The fact that Complainant has no trademark registrations in the U.S. for BAYASPIRINA is irrelevant. The Policy only requires that Complainant shows rights to a trademark, which Complainant has sufficiently proven. There are sufficient contacts between Respondent and the previous holder of the disputed domain name registration, an Argentine company (with which Respondent apparently has business ties), domiciled in Argentina, with an Administrative Contact also domiciled in Argentina (who has been acknowledged to be Respondent�s partner), at the time when the contested domain was transferred � June 4, 2003 � to conclude that Respondent knew or should have known of the existence of Complainant�s trademark registrations.
Complainant has provided evidence showing that a major Argentine newspaper categorizes BAYASPIRINA as the mark that enjoys the highest market awareness in the country, based on a poll conducted among Argentines.
Respondent holds no exclusive rights to the trademark BAYASPIRINA. Respondent�s trademark application No. 78271541, BAYASPIRINA.COM, filed before the USPTO to cover services from class 42, does not confer such rights upon Respondent, so long as no registration is issued.
The words "aspirin" or "aspirina" are not at issue in this procedure. What the Policy requires this Panel to do, is to determine whether the disputed domain name is confusingly similar to the trademark BAYASPIRINA in which Complainant has proven to hold exclusive rights.
The word BAYASPIRINA is an arbitrary word. It cannot be found in dictionaries of the English or Spanish Languages. This inherent characteristic of such trademark, in addition to recognition and the considerable amount of resources invested in publicizing it, which facts have been proven by Complainant and remained uncontested by Respondent, render the said trademark solid and distinctive.
In comparing Complainant�s trademark to the disputed domain name , we must not take into account the generic top-level domain (gTLD) ".com," because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (December 4, 2000), (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (June 13, 2000); J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035 (March 23, 2000).
Thus, having eliminated the gTLD ".com" for the purpose of conducting this analysis, the Panel finds that the disputed domain name is identical to Complainant�s trademark BAYASPIRINA.
This analysis is confirmed by the fact that a considerable number of UDRP Panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 (September 30, 2001), (citing in turn Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464 (July 27, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000); World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001).
Therefore, Complainant has met the first requirement of the Policy.
B. Rights or Legitimate Interests
The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:
"(i) before any notice to you of the dispute, your use of, or 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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." (Policy, Paragraph 4(c)).
Respondent has not submitted evidence showing that he has used, or made actual demonstrable preparations to use the disputed domain name in connection with a bona fide offer of goods or services. In fact, Respondent has not filed any piece of evidence showing use of the domain name in connection with the technological services, Internet applications and computer software which he allegedly has provided or intends to provide. Respondent has not submitted any piece of evidence showing that any website associated to the disputed domain name has been "on and off." Therefore, Complainant�s assertion that the disputed domain name is inactive, i.e., that it does not resolve to any web page with content associated thereto, must stay.
No argument has been raised by Respondent, alleging that he has been commonly known as .
Respondent has not provided any evidence to support his assertion that he intends to "develop and market technology solutions that would be headache free," under the trademark "Better Applications, Yes Headache-free," or that he has done so in the past. None of the materials submitted with the Response constitute evidence of offering of services under said "concept" or mark. Nor do they constitute evidence of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. In the absence of evidence to support the assertion that is somehow a derivation of the trademark "Better Applications, Yes Headache-free," and a showing that Respondent holds any rights to any such trademark, this Panel simply finds Respondent�s argument not viable (see Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428 (August 9, 2000), claiming that domain name originated with a dog named "Yahoo"; The Nasdaq Stock Market, Inc. v. Grewal, WIPO Case No. DTV2001-0001 (March 12, 2001), claiming that was registered for organization called "North American Sikhs Demanding Answers to their Questions", or "NASDAQ," Wal-Mart Stores, Inc. v. Excel Stock Exchange, WIPO Case No. D2002-0966 (December 17, 2002), claiming that and were the contraction of the last names of Mr. Clive Walter, an energy consultant and Mr. Peter Martin, an engineer, who should legitimately be able to trade as "Wal(ter)-Mart(in) Associates, "Walmart Associates" or even "Wal-Martbank," or "Walmartbank").
The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name. The second requirement set forth in the Policy has therefore been fulfilled.
C. Registered and Used in Bad Faith
According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
Many panels have recognized that the four factors set forth in Paragraph 4(b) of the Policy are nonexclusive, i.e., �without limitation� (e.g. Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 (April 10, 2002); Expedia, Inc. v. Miles Pennella, WIPO Case No. D2001-1416 (March 14, 2002)), and "that other circumstances can be evidence that a domain name was registered and is being used in bad faith" (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)).
Complainant has invoked the "Passive Holding" doctrine initiated in Telstra: "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name �being used in bad faith� is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
But before analyzing the Passive Holding doctrine, as applicable to the present case, the Panel would like to briefly address the following circumstances surrounding the registration and transfer of the disputed domain name:
Considering that Complainant�s trademark BAYASPIRINA has been extensively publicized in Argentina by Complainant, in addition to the fact that Complainant�s trademark has been duly registered in and added to a publicly accessible database of protected trademarks in 16 countries of the world, including Argentina, where the original registrant of the disputed domain name is domiciled, this Panel presumes that, at the time of registration of the disputed domain name, Respondent knew or should have known of the existence of Complainant�s trademark BAYASPIRINA. See Antena 3 de Televisión S.A. c/ D. Javier García Quintas, WIPO Case No. D2002-0537 (September 6, 2002); ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (February 12, 2002). Taking into account that Complainant�s trademark is an invented word, which cannot be found in dictionaries, and that Complainant�s trademark has been recognized as highly distinctive by one of the main Argentine newspapers based on a poll, this Panel finds it difficult to presume that Respondent�s registration of the disputed domain name was merely coincidental. Thus, this Panel decides that the contested domain name was registered in bad faith.
Complainant has proven that the disputed domain name was originally applied for, and registered by KIT EXPRESS, SRL (see the Notarial Record submitted by Complainant (Annex 10 to the Complaint), containing a certified printout of the relevant WHOIS database), an Argentine company (see Complaint, p. 10) domiciled in Argentina (see Annex 10 to the Complaint), which Administrative Contact was Mr. Romani, who at the time of registration of the disputed domain name declared to have been domiciled in Argentina (see Id.). Thus, it is reasonable to expect that at the time of registration of the disputed domain name, Respondent knew or should have known of the existence of Complainant�s Argentine trademark registrations, and the widespread recognition that such marks enjoy in Argentina.
Moreover, Complainant has proven that Mr. Carpio and Respondent are partners (see Complaint, p. 10 and Annex 13 thereto). Respondent has acknowledged his relationship with the former registrant of the domain name, Mr. Carpio (see Response, pp. 16-17 and Annex 8 thereto). Respondent declared that he has "nothing to hide" (see Id. at p. 16), stating that the "transfer of ownership of B in the US is only related to the Respondent�s strategy to take a global approach when developing and marketing technology services and solutions" (Id.). Respondent stated that Mr. Carpio and himself "established Interplanetarium Corp. on November 29, 2001, [sic.]". Mr. Davies has declared that Mr. Romani and himself are "experienced business people [sic.]", and implies that they were aware of the Argentine business environment when they decided to transfer the domain name to the U.S. company. Respondent and Mr. Carpio claim to have worked for "multinational corporations, such as Kodak and American Express [sic]" (see Annex 8 to the Response) and to be aware of the existence of "world-known companies as Telemundo, Xerox, Baccardi, Café Pilon, Motorola, Burger King [sic.]" (Id.) Respondent even refers to Complainant in a familiar fashion as "Bayer." Thus, this Panel concludes that at the time when the disputed domain name was transferred to Mr. Daniel H. Davies, Mr. Davies knew of the existence of Complainant, i.e., Bayer AG (a multinational such as Kodak or American Express, and which is normally referred to as "Bayer"), or any of its subsidiaries. Additionally, since Mr. Carpio was Respondent�s partner in Interplanetarium Corp., and since both Mr. Carpio and Respondent allegedly had knowledge of the Argentine business environment, it is reasonable to expect that Respondent knew or should have known of Complainant�s trademark registrations, and/or the widespread recognition that such a renowned and recognizable mark in the market as BAYASPIRINA enjoyed in Argentina. Thus, the evidence submitted in connection to this case leads the Panel to conclude that the disputed domain name was registered in bad faith.
This conclusion is confirmed by the fact that the contested domain name was assigned by KIT EXPRESS, SRL to Respondent on June 4, 2003, some months after an Argentine Court issued an interlocutory injunction, regarding the domain name registered by KIT EXPRESS, SRL.
With respect to the Passive Holding doctrine, the Panel has found the following circumstances:
(i) Complainant�s trademark BAYASPIRINA is distinctive, has a strong reputation, is widely known and considerable resources have been spent in publicizing it, as evidenced by its substantial use and recognition in Argentina. Evidence of registration of said trademark in other countries has also been submitted.
(ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name .
(iii) The transfer of the disputed domain name occured after an interlocutory injunction was issued by an Argentine Court, affecting the domain name , which was owned by Kit Express S.R.L., the same Argentine company that owned . The Respondent has acknowledged to have links to Kit Express, and the Administrative Contact of Kit Express is Respondent�s partner, Mr. Carpio, an individual domiciled in Argentina.
(iv) Respondent has no relationship whatsoever with the trademark BAYASPIRINA, and failed to provide any evidence supporting any such relationship. Respondent did not submit any evidence showing that is the contraction of the trademark "Better Applications, Yes Headache-free," or that any services have been rendered or have demonstrably been prepared to be offered under said trademark. The Panel agrees with the decision rendered in Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000), in that bad faith is found where a domain name "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith."
(v) Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant�s rights under trademark law.
Wine of the Month Club, Inc. v. Kris Calef (see supra), is not applicable to the present case. In Wine of the Month, Respondent was actually providing a service to members, i.e., he was using the contested domain name. Additionally, Respondent was using the term "International" together to "Wine of the Month Club" on his home page, thus distinguishing his usage from that of Complainant. Therefore, Wine of the Month is not related to the case at hand.
Complainant has thus established that the disputed domain name has been registered and is being used in bad faith. The third requirement of the Policy has therefore been fulfilled.
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 be transferred to Complainant.
Kiyoshi I. Tsuru
Sole Panelist
Date: March 19, 2004
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