WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayer AG , Bayer Schering Pharma AG v. ARanked/Donald Allen, ARanked/Duck Dawson, Martin V/Donald Allen Case No. D2009-1682 1. The Parties
The Complainants are Bayer AG of Leverkusen, Germany and Bayer Schering Pharma AG of Berlin, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondents are ARanked/Donald Allen of Springdale, Pennsylvania, United States of America, ARanked/Duck Dawson of Boston, United States and Martin V/Donald Allen of Shellman, United States (hereinafter “the Respondent”). 2. The Domain Names and Registrars
The disputed domain names , , , , , , and are registered with Web Commerce Communications Limited dba WebN. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2009. On December 9, 2009, the Center transmitted by email to Web Commerce Communications Limited dba WebN a request for registrar verification in connection with the disputed domain names. On December 10, 2009, Web Commerce Communications Limited dba WebN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 13, 2009, the Center received an email communication which read the following: “Dear Sirs, Please kindly let us know what is the issue with these domain names? Warmest regards, Felicia”. On December 14, 2009, the Center acknowledged receipt of this email communication and informed all parties involved in this proceeding that a Complaint had been filed against the Respondent and that it would soon be formally notified of the Complaint. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 7, 2010.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on January 20, 2010. 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 First Complainant, Bayer AG, headquartered in Leverkusen, Germany, is a global enterprise with core competencies in the fields of health care, nutrition and high-tech materials. It is represented around the world by 350 companies and has 106,000 employees worldwide. The First Complainant's stock is included in nearly all major 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.
The Second Complainant is part of Bayer AG. It markets its products in more than 100 countries and has 38,000 employees worldwide with annual sales of over EUR 10.7 billion in 2008. It is one of the ten largest speciality pharmaceutical companies in the world focusing on the research and development of innovative drugs and novel therapeutic approaches. Its portfolio of brands includes some of the most widely-known brands in the world.
Both Complainants belong to the Bayer group of companies. The Second Complainant has granted the First Complainant the right to act on its behalf in the present WIPO UDRP proceedings with regard to domain names and by a Power of Attorney (Exhibit 6 to the Complaint).
The First Complainant markets its product Levitra, a prescription medicine that is used to treat erectile dysfunction and is sold in numerous countries worldwide. It was first sold in Germany on March 12, 2003.
The First Complainant has also marketed its product Cipro, one of the first broad spectrum oral fluoroquinolone medications, since 1991. It is available in more than 100 countries and has been approved for treatment of 14 types of infections.
The First Complainant has obtained trademark registrations for marks LEVITRA and CIPRO in numerous countries, including international registration number 744146 for the mark LEVITRA and United States registration number 1584286 for the mark CIPRO. As the result of exclusive and extensive use, the First Complainant's marks have obtained significant goodwill and are widely known.
The Second Complainant has marketed its product, an oral contraceptive pill, under the mark YASMIN for many years. The Second Complainant obtained trademark registration for the mark YASMIN, including Community registration number 005793831, international registration number 573544 and United States registration number 2177963. As the result of exclusive and extensive use, the Second Complainant's mark has obtained significant goodwill and is widely known.
The Respondent registered the disputed domain names between August 20, 2009 and September 3, 2009.
According to the annexes to the Complaint, the disputed domain names names , , , , , and were all used in connection with a website showing text “Возможно, неправильные параметры соединения или СУРБД не запущена” meaning “Perhaps the connection parameters are wrong or the RDBMS is not connected” and which seems to have been a server message.
According to the annexes to the Complaint, the disputed domain name was used in connection with a website providing information on various products, including those of Complainants' direct competitors.
The Respondent is also the owner of numerous other domain names incorporating third parties' trademarks. 5. Parties' Contentions A. Complainant
(a) The disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainants have rights.
- The test for confusing similarity is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors.
- It is well established that the specific top level of a domain name such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
- The second levels of the disputed domain names all wholly incorporate one of the Complainants' trademarks LEVITRA, CIPRO and YASMIN, which are used in connection with pharmaceutical products.
- The disputed domain names , and are confusingly similar to the First Complainant's LEVITRA trademark. Incorporating the words “cheap”, “buy”, “brand” and “price” does not prevent a finding of confusing similarity. For the same reason the disputed domain names , and are confusingly similar to the First Complainant's trademark CIPRO.
- The disputed domain names and are confusingly similar to the Second Complainant's YASMIN trademark because they fully include the mark and the additional words “birth” and “pill” are merely generic and therefore insufficient to distinguish the disputed domain names from the Second Complainant's trademark.
(b) The Respondent has no rights or legitimate interests in respect of the domain names.
- The Complainants have not licensed or otherwise permitted the Respondent to use any of their trademarks and have not permitted the Respondent to apply for or use any domain name incorporating any of the Complainants' marks.
- The words “levitra”, “cipro” and “yasmin” are highly distinctive and obviously connected with the Complainant's trademarks and are not words a trader would legitimately choose unless seeking to create the impression of an association with the Complainants.
- There is no evidence of use of the disputed domain names with a bona fide offering of goods or services.
- The disputed domain names , , , , , and were linked to a website that displays a server message in the Russian language. The disputed domain name was used in connection with a website providing information on various products, including those of the Complainants' direct competitors. The Respondent is attempting to capitalize on Second Complainant's trademark.
- There is no evidence to suggest that the Respondent trades under the disputed domain names or a name corresponding to any of the disputed domain names, or is commonly known by said domain names or is making legitimate noncommercial or fair use of the disputed domain names.
(c) The Respondent has no rights or legitimate interests in respect of the domain names.
- The Respondent does not conduct any legitimate commercial or non-commercial business activity. As the Complainants' trademarks are distinctive and well known, it is highly unlikely that the Respondent registered the disputed domain names while not being aware of the Complainants' rights in their trademarks. This is supported by the fact that the Respondent has registered further domain names containing the trademarks of various global pharmaceutical companies.
- The disputed domain name at one time provided information on the Second Complainant's trademarked product, hence the Respondent is aware of the product and trademarks associated with it.
- The Respondent is creating a likelihood of confusion with the Second Complainant's mark to divert Internet traffic with intent to earn revenues from it. This qualifies as bad faith as this creates a likelihood of confusion as to the source, sponsortship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website.
- The Respondent is acting in bad faith due to acting in a pattern of preventing owners of trademarks from reflecting their marks in corresponding domain names through registering numerous other domain names incorporating third parties' trademarks.
- The fact that the disputed domain names , , , , , and are not actively used but merely passively held does not obstruct a finding of bad faith if such passive holding is equal to active use.
- The circumstances clearly justify equating passive holding to active use in this case as the Complainants' marks have strong reputation and are widely known; the Respondent has provided no evidence as to any actual or contemplated good faith use; the Respondent has taken active steps to conceal its true identity by providing false WhoIs information; and it is not conceivable how any active or contemplated use of the disputed domain names would be legitimate.
- Further the Respondent's bad faith is further evidenced by the attempt to hide the true identity of the Respondent by providing false WhoIs information.
- The elements of bad faith mentioned under the Policy are non-exhaustive and other indications and aspects can be considered as establishing bad faith. The fact that the Respondent has registered the disputed domain names which include trademarks obviously connected with the Complainants' products 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. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules.
However the Respondent failed to file a Response to the Complaint and has not sought to answer the Complainants' assertions, evidence or contentions in any other manner.
The Panel finds that the Respondent has been given sufficient opportunity to file a Response.
The Panel finds that the Respondent has been given fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Panel is satisfied that the disputed domain names are all controlled by the same person or entity, based on the use of the same email address, […]@, in the WhoIs records for each of the disputed domain names. Additionally the Panel finds that, the Respondent's provision of incorrect address information across the domain name registrations in the WhoIs database is a clear attempt to mask the true identity of the Respondent. Such, the panel in Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057 considered that it would be an unjustifiable economic burden to require the complainant to submit separate complaints for each disputed domain name, when there is a clear identifiable connection in the information provided in the WhoIs database that connects the registrants of the domain names. In this case the Panel is satisfied that the email address provided in the WhoIs database serves as a clear connecting factor between the domain names and will proceed accordingly in treating the Respondents as a single entity and considering the disputed domain names in the same proceeding.
The Respondent's default does not automatically result in a decision in favor of the Complainants. The Complainants must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainants must prove that each of the three following elements are satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent's failure to reply to the Complainants' assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply. A. Identical or Confusingly Similar
The Complainants have registered the trademarks LEVITRA, CIPRO and YASMIN. These marks are subject to a number of registrations, including Community marks, international marks and registrations worldwide, including in the United States. The Complainants submit that the disputed domain names , , , , , , and are confusingly similar to the trademarks of the Complainants as the domain names incorporate the whole of the respective registered trademarks.
The use of generic descriptive words, such as “buy”, “cheap”, “brand”, etc. does not preclude a finding of confusing similarity as the disputed domain names still incorporate the registered trademarks in their entireties.
The Panel refers to a number of past UDRP decisions, which confirm 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 (Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd.,WIPO Case No. D2000-0802).
Further the Panel finds that the disputed domain names may be directly associated in the minds of the consumers with the Complainants' trademarks.
The Panel finds that the Complainants have satisfied their burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainants' assertions, it is up to the Panel to consider whether the Respondent's use of the disputed domain names demonstrates rights or legitimate interests in the domain names.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:
(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) 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 complainant's marks.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy. By not responding to the Complainants' contentions, the Respondent in this proceeding has never attempted to show its rights and legitimate interests.
Firstly, there is no evidence that before any notice of a dispute with the Complainants, the Respondent was using the disputed domain names for a legitimate offer of goods and services. The Respondent does not use the disputed domain names in connection with a bona fide offering of goods and services, for example, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
According to the documents submitted by the Complainants the disputed domain names , , , , , and were linked to a website that displayed a server message in the Russian language. The disputed domain name has used in connection with a website providing information on various products, including those of the Complainants' direct competitors.
The Panel finds no evidence that the Respondent was using or is using the disputed domain names for a legitimate offering of goods and services.
Thus, the Panel finds that the Respondent's use of the disputed domain names does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) the Policy.
Secondly, as for the Respondent's potential arguments of under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain names.
The Complainants have registered the trademarks in various countries around the world and these trademarks have acquired substantial goodwill.
The Panel believes that the Respondent knew about the Complainants' trademarks at the time of registration of the disputed domain names. This is further supported by the fact that the Respondent has numerous other registrations of domain names incorporating trademarks of pharmaceutical companies.
It is the Panel's view, on the present facts, that the Respondent probably registered the disputed domain names with awareness of the Complainants' products and trademarks as well as the goodwill associated with them.
The Panel finds the Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy to show that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Complainants contend that the Respondent has registered and used the disputed domain name in bad faith because this disputed domain name has used in connection with a website providing information on various products, including those of Complainants' direct competitors and was registered and used primarily for the purpose of confusing the public and diverting Internet traffic from the Complainants' official websites to the Respondent's website for potential commercial gain.
The Panel finds that the Respondent's website could potentially have attracted Internet users the public because of its seeming association with the Complainants' products and services. At the same time it created a risk of confusion with the Complainants' products and trademarks as to the source, sponsorship, affiliation or endorsement of its website.
The Panel finds that the Complainants presented circumstantial evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of disputed domain name .
The Panel also finds that the Respondent is in violation of the provisions of paragraph 4(b)(ii) of the Policy as the Respondent has “registered the domain name[s] in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name[s], provided that [the Respondent] has engaged in a pattern of such conduct”. There is clear evidence that the Respondent has engaged in a pattern of such conduct there is evidence of further domain name registrations held by the Respondent in this case, and additionally incorporating trademarks of major pharmaceutical companies.
Thus the disputed domain names , , , , , and all fall under the provisions of paragraph 4(b)(ii) for the purposes of establishing bad faith requirements.
The Panel holds that the Respondent has registered the disputed domain names in bad faith. The Respondent does not conduct any legitimate business activity using the disputed domain names. The Respondent must have known of the Complainants' products and should have been aware of the trademarks of the Complainants. These findings, together with the finding that the Respondent has no rights or legitimate interests in the domain names, leads the Panel to conclude that the disputed domain names have been registered by the Respondent in bad faith.
The Panel finds the Complainants have shown that the Respondent registered and used the disputed domain names in bad faith. 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 disputed domain names , , , , , , and be transferred to the Complainant.
Irina V. Savelieva
Sole Panelist
Dated: February 3, 2010
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