WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer AG v. Ronald Wells
Case No. D2008-1011
1. The Parties
The Complainant is Bayer AG, of Leverkusen, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Ronald Wells, of El Cajon, California, United States of America, , representing himself.
2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2008. On July 4, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain names at issue. On July 5, 2008, GoD, Inc. 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 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”).
On July 9, 2008, the Respondent sent an email communication to the Complainant, copying the Center asking the Complainant to consider suspending the proceedings in order to have the domain names cancelled or transferred from the Respondent to the Complainant. The Center subsequently sent an email communication to the parties acknowledging receipt of the Respondent's email and advising that the Complainant may wish to consider requesting suspension of the proceedings to explore possible settlement between the parties in light of the Respondent's expressed intention to transfer the disputed domain names to the Complainant. By an email communication of July 10, 2008, to the Respondent, copying the Center, the Complainant stated that it was not willing to suspend the proceedings.
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 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2008. The Response was filed with the Center on July 29, 2008.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 7, 2008. 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 is a global enterprise with core competencies in the fields of health care, nutrition and high-tech materials. It states it operates around the world by 350 companies and has 106,000 employees worldwide. Global headquarters are in Leverkusen, Germany. The Complainant's 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.
Amongst other things, the Complainant markets its product Levitra, a prescription medicine that is used to treat erectile dysfunction (ED) since March 2003. The products are sold in numerous countries worldwide (i.e. the United Kingdom of Great Britain and Northern Ireland, Ireland, the United States of America, Austria, Norway, Spain, France, Brazil, Germany, Italy, New Zealand, Portugal, Australia, Mexico, Republic of Korea, Kuwait, Taiwan province of China, Hong Kong SAR of China, Israel) and was first sold in Germany from March 12, 2003.
The Complainant has obtained trademark registrations for LEVITRA in numerous countries, including the United States of America where Respondent is located. These registrations include:
Trademark
Type of Mark
Registration No.
Date of Registration
Country
Classes
LEVITRA
Word
US Registration No. 2,622,847
September 24, 2002
US
05
LEVITRA
Word & Device
US Registration No. 3,050,814
January 24, 2006
US
05
LEVITRA
Word
Indian Registration No. 377711
May 19, 2000
IN
05
LEVITRA
Word
German Registration No. 301 23 825
May 29, 2001
DE
05; 16; 25; 29; 30; 32; 35; 42
LEVITRA
Word
German Registration No. 300 05 001
July 15, 2000
DE
05
LEVITRA
Word
Community Registration No. 001481936
February 21, 2003
EC
05
LEVITRA
Word
International Registration No. 744146
September 25, 2000
AL, AM, AT, AZ, BA, BG, BX, BY, CH, CN, CU, CZ, DZ, EG, ES, FR, HR, HU, IT, KE, KG, KP, KZ, LI, LR, LS, LV, MA, MC, MD, MK, MZ, PL, PT, RO, RU, SI, SK, SL, SM, SZ, TJ, UA, UZ, VN, YU, AG, DK, EE, FI, GB, GE, IS, JP, LT, NO, SE, TM, TR
05
The Respondent registered the disputed domain names on June 22, 2008 and on June 23, 2008.
The Respondent states that he registered the domain names for resale through eBay.
Print outs of the eBay pages for both domain names are included in Exhibit 7 of the Complaint. The print outs show both domain names listed with a starting price of US$7.77. The page for Levitra-P has a heading “Levitra-P Domain Name ED Male Medications. The Complainant's LEVITRA & flame (or leaf) device logo is also represented. Amongst other things, the page exhorts prospective customers
“There's 350,000 results for this name on Google. This Doman name is great for ANY type of online business or advertisement related to Erectile Dysfunction Medication (the possibilities are limitless for this prime domain name)!!!”
The page for LevitraT is virtually identical, although the LEVITRA and flame (or leaf) device logo is not used and the number of Google “hits” is stated to be 190,000. It also adds the line “$$$$$$$$ Cha Ching!!!! $$$$$$$$”.
Both domain names also resolve to “parking” websites where there are “Sponsored Listings” for a range of pharmaceuticals and related services including products which compete with the Complainant's Levitra product. There are, for example, sponsored listings for Viagra tablets and products containing sildenafil, the active ingredient of Viagra.
5. Discussion and Findings
As noted above, the Complainant has clearly established ownership of registered trademarks for LEVITRA in many countries of the world, including the United States of America where the Respondent is located.
The question of resemblance for the purposes of the Policy requires a comparison of the domain names to the trademark rights which have been proved. This is a different test to that involved in Trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. The question of the scope of the Complainant's trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c) of the Policy.
The domain names differ from the Complainant's trademarks only by the addition of a descriptive or generic term, respectively, “tablets” or “-pills” and the gTLD.com. Obviously, the distinguishing feature of each domain name is the Complainant's trademark LEVITRA; the combination of the descriptive term and the .com gTLD do not detract from that. Accordingly, the Panel finds that both domain names are confusingly similar to the Complainant's proved trademark rights.
The domain names were registered well after the Complainant acquired its rights.
The word “levitra” is not the Respondent's name, nor is it derived from the Respondent's name. So far as the Panel is aware, it is not a common, plain or otherwise descriptive term and has significance only as the Complainant's trademark. The Complainant has not licensed it to the Respondent or otherwise authorized the Respondent to use the domain names. These factors in combination are sufficient to raise a prima facie case against the Respondent having rights or legitimate interests in the domain names. See e.g. the discussion in David Lindsay, International Domain Name Law: ICANN and the UDRP, (Hart Publishing 2007) 281 – 8.
The Respondent does not seek to rebut the inference that it has no rights or legitimate interests in the domain names. Rather, while denying that it has registered and used the domain names in bad faith, the Respondent consents to the transfer of the domain name to the Complainant.
Numerous panels have accepted that an order for transfer is appropriate when consented to by a respondent, either immediately or on a showing of a prima facie case by the complainant in such circumstances. See e.g. Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207; Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg,WIPO Case No. D2006-1336; Amgen Inc. v. Texas International Property Associates,WIPO Case No. D2007-0155; Levantur, S.A. v. Rarenames, WebReg,WIPO Case No. D2007-0857; Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains, Inc.,WIPO Case No. D2007-0917; Fry's Electronics Inc. v. Texas International Property Associates,WIPO Case No. D2007-0343; and, Tom Stoppard, Tom Stoppard Limited v. Texas International Property AssociatesWIPO Case No. D2007-1404.
In this case, as already noted, the Complainant has clearly established that the domain names are confusingly similar to the Complainant's proved registered trademarks and, at the least, a prima facie case under the other two requirements of paragraph 4(a) of the Policy.
The Respondent denies selection of the sponsored links generated at the “parking” page; stating that they are automatically generated by the Registrar. The Panel notes, however, that the Respondent has chosen to leave the domain names “parked” with GoD Inc. even if he has not selected the “CashParking” option.
The Respondent denies registering the domain names to sell to the Complainant or one of its competitors for in excess of his “out of pocket” expenses. This denial has two components. First, the Respondent states that, as soon as he bought the domain names, he put them up for auction on eBay. Secondly, he points to the advertised starting price of US$7.77 which, with the upfront listing fees, resulted in a negative profit.
That the Respondent is currently “out of pocket” is not, however, the issue. Rather, it was what the Respondent was seeking or hoping to achieve. The Respondent admittedly has a business of selling domain names – he describes it as a part time hobby. The eBay listings for both domain names were clearly intended to emphasise their commercial potential. The Respondent clearly was hoping to achieve more than a “negative profit” within the 7 days the domain names were intended to be auctioned.
Thirdly, the Respondent appears to deny that he knew LEVITRA was a, or the Complainant's, trademark. This presumably means that the Respondent was not aware of the formal legal characterization of the “Levitra” as a trademark since, as already noted, the eBay listings clearly seek to exploit the commercial value of the domain names, the distinctive feature of which is the word “levitra”. The Respondent further states that, once he learned “Levitra” was “trademarked” he made attempts to transfer the domain names to the Complainant. The Respondent states that these attempts were “denied”. Evidence of what these attempts were is not provided. Nor is clear why the Respondent as the registrant of the domain names could not unilaterally transfer them to the Complainant or simply cancel them.
In all of these circumstances, the Respondent's consent to the transfer of the domain names to the Complainant is clearly appropriate.
6. 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, and be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: August 21, 2008
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