WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayer AG, Bayer Schering Pharma AG, Bayer Schering Pharma Oy v. Mihail Gordenco, Old Navy ltd. Case No. D2009-1697 1. The Parties
The Complainants are Bayer AG, Bayer Schering Pharma AG, Bayer Schering Pharma Oy of Leverkusen and Berlin, Germany and Turku, Finland, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Mihail Gordenco, Old Navy ltd of Odessa, Ukraine. 2. The Domain Names and Registrars
The disputed domain names , , , , , , 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 10, 2009. On December 11, 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 14, 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. 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 8, 2009.
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 EURO 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 trusted brands in the world.
The Third Complainant is a Finnish group company of the Second Complainant and it develops and manufactures medicinal products in its own specialist field for pharmaceutical markets worldwide.
The Complainants belong to the Bayer group of companies. The Second Complainant and the Third Complainant have granted the First Complainant the right to act on its behalf in the present UDRP proceedings with regard to domain names and by a Power of Attorney (Exhibits 4 and 5 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 from March 12, 2003.
The First Complainant has obtained trademark registrations for mark LEVITRA in numerous countries, including international registration for mark LEVITRA number 744146. As the result of exclusive and extensive use, the First Complainant's mark has obtained significant goodwill and is widely known.
The Second Complainant markets its product, a combined oral contraceptive pill, under the trademark DIANE. The Second Complainant obtained trademark registrations for the mark DIANE, including international registration number 408028 and United States registration number 2873362. As the result of exclusive and extensive use, the Second Complainant's mark has obtained significant goodwill and is widely known.
The Third Complainant markets its product, a hormone releasing system, under the trademark MIRENA. The Third Complainant obtained trademark registrations for the mark MIRENA, including United States registration number 2039913.
The disputed domain names were registered on February 12, 2009.
The disputed domain names , , , , , , are all used in connection with websites providing information on various products, including those of the Complainants' direct competitors.
The Respondent is also an owner of numerous other domain names all incorporating third parties' trademarks.
The Respondent has already been involved in UDRP proceedings in F. Hoffmann-La Roche AG v. Old Navy Ltd, Mihail Gordenco,WIPO Case No. D2009-0350, which resulted in the domain name being transferred to the complainant. 5. Parties' Contentions A. Complainant
(a) The disputed domain names are identical or confusingly similar to a trademark or service mark 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 the Complainants' trademarks LEVITRA, DIANE and MIRENA, which are used in connection with pharmaceutical products.
- The disputed domain names , , , , are confusingly similar to First Complainant's LEVITRA trademark. Incorporating the words “cheap”, “discount”, “online” and “order” does not prevent a finding of confusing similarity.
- The disputed domain name is identical to the Second Complainant's DIANE-35 trademark and is confusingly similar to the Second Complainant's DIANE trademark. The addition of “-35” does not prevent from a finding of confusing similarity.
- The disputed domain name is confusingly similar to the Third Complainant's trademark MIRENA because it fully includes the mark and the additional word “birthcontrol” is merely descriptive of the effect of the product and therefore is insufficient to distinguish the disputed domain name from the Third Complainant's trademark.
(b) The Respondent has no rights or legitimate interests in respect of the disputed 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”, “diane” and “mirena” are highly distinctive and obviously connected with the Complainants' trademarks and are not words a trader would legitimately choose unless seeking to create and 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 , , , , , , are all 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 the Complainants' LEVITRA, DIANE and MIRENA trademarks.
- There is no evidence to suggest that the Respondent trades under the disputed domain names or the name corresponding to 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 registered and is using the disputed domain names in bad faith.
- The Respondent does not conduct any legitimate commercial or noncommercial 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 all made out of trademarks of various global pharmaceutical companies.
- The disputed domain names are associated with a website that provides information on the Complainants' trademarked products, hence the Respondent is aware of the product and trademarks associated with it.
- The Respondent is creating a likelihood of confusion with the Complainants' marks to divert traffic with intent to earn revenues from it. This qualifies as bad faith as this creates likelihood of confusion 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.
- 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 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 Respondents'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 Complainants' 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, DIANE and MIRENA. 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 , , , , , are confusingly similar to the trademarks of the Complainants as the domain names incorporate the whole of the respective trademarks, these being registered trademarks. Furthermore the disputed domain name is identical to DIANE-35 trademark of the Second Complainant and confusingly similar to DIANE trademark.
The use of generic descriptive words, such a “cheap”, “discount”, “online”, “order”, etc. does not preclude from a finding of confusing similarity as the disputed domain names still incorporate registered trademarks in their entirety. Same principle applies to “birthcontrol” as it is merely descriptive as to the effect of the product.
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 its 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 disputed 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 the 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 , , , , , , are 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 services under paragraph 4(c)(i) the Policy.
Secondly, in relation to paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain names and thirdly, that paragraph 4(c)(iii) of the Policy is not applicable as the use is commercial.
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, all incorporating trademarks of third parties.
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 goodwill associated with them.
The Panel finds the Complainants have carried out its burden of proof 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 violated the bad faith provision of the Policy because the disputed domain names , , , , , , are used in connection with a website providing information on various products, including those of the Complainants' direct competitors and was registered and used primarily for the purpose of confusing the public and diverting public attention from the Complainants' official websites to the Respondent's website for potential commercial gain.
The Panel finds that the Respondent's website could have attracted potential attention from the public because of its probable association with the Complainants' products and services. At the same time it has created a risk of confusion with the Complainants' products and trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's 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 names , , , , , , .
The Panel also finds that the Respondent is in violation of provisions of paragraph 4(b)(ii) of the Policy as 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'. There is clear evidence that the Respondent has engaged in a pattern of such conduct as there is evidence of further domain name registrations held by the Respondent, all incorporating trademarks of third parties.
Thus the disputed domain names , , , , , , all fall under the provisions of paragraph 4(b)(ii) of the Policy 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. In the circumstances, the Respondent must have known 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, lead 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 domain names, , , , , , , be transferred to the First Complainant.
Irina V. Savelieva
Sole Panelist
Dated: February 3, 2010
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