WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayer Schering Pharma AG v. Knightleyinc Case No. D2010-0352 1. The Parties
The Complainant is Bayer Schering Pharma AG of Berlin, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte of Munich, Germany.
The Respondent is Knightleyinc of Santa Barbara, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 8, 2010. On March 9, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 10, 2010, 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” 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 March 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 1, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 14, 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 Complainant, Bayer Schering Pharma AG, is a part of Bayer AG, a global enterprise with core competencies in the fields of health care, nutrition and high-tech materials. Company (Hereinafter: “the Complainant”). The Complainant markets its products in more than 100 countries and employs 38,000 employees worldwide, with annual sales of over Euro 10.7 billion in 2008.
The Complainant, along the Bayer AG enterprise, is one of the ten largest pharmaceutical companies in the world focusing on the research and development of drugs and therapeutic approaches. The Complainant and the Bayer AG enterprise manufacture and market, among others, the following brands: YAZ, YASMIN, YASMINELLE and others. The YASMIN mark is used in connection with oral contraceptives (birth control pills).
The Complainant and its affiliated companies are the owners of multiple trademark registrations for the mark YASMIN around the world. For example: German trademark registration No. 2000119 – YASMIN, with the registration date of December 13, 1990; International trademark registration No. 573544 – YASMIN, with the registration date of July 9, 1991; Australian trademark registration No. 632907 – YASMIN, with the registration date of July 3, 1995; German trademark registration No. 39539143 – YASMIN, with the filing date of June 17, 1997; United States trademark registration No. 2,177,963 – YASMIN, with the registration date of February 28, 1968; Community trademark registration No. 003255593 – YASMIN LITE, with the registration date of December 22, 2004; and many others.
As a result of the exclusive and extensive use, the YASMIN mark acquired a significant goodwill and became well known around the world.
The Complainant and its affiliated companies have also developed a presence on the Internet and are the owners of the following domain name, which contains the name “yasmin”: . The Complainant and its affiliated companies are using this domain name in connection with their activities.
The Respondent registered the disputed domain name on January 13, 2010.
The disputed domain name used to resolve to a website which promoted the sale of drugs, including oral contraceptives.
Currently, the disputed domain names resolve to a parking webpage, which displays the following announcement: “Welcome. You see this page because there is no Web site at this address. What you can do: Create domains and set up Web hosting using Parallels Plesk Control Panel”. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the YASMIN trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole.
The Complainant further argues that it has exclusive rights to the YASMIN trademark and that this trademark is widely recognized with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the YASMIN mark.
The Complainant further argues that the Respondent is not making a legitimate use of the YASMIN mark.
The Complainant further argues that the Respondent promoted goods under the disputed domain name, which bear the YASMIN trademark, without the Complainant's consent. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the Respondent was using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent was aware of its existence and of its YASMIN mark and products at the time the Respondent registered the disputed domain names.
The Complainant also argues that the Respondent engaged in cybersquatting and has registered over 180 domain names that bear famous registered trademarks of well known pharmaceutical companies. The Complainant argues that this is evidence of the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The YASMIN trademark is registered in multiple territories around the world. For example, German trademark registration No. 2000119 – YASMIN, with the registration date of December 13, 1990; International trademark registration No. 573544 – YASMIN, with the registration date of July 9, 1991; Australian trademark registration No. 632907 – YASMIN, with the registration date of July 3, 1995; German trademark registration No. 39539143 – YASMIN, with the filing date of June 17, 1997; United States trademark registration No. 2,177,963 – YASMIN, with the registration date of February 28, 1968; Community trademark registration No. 003255593 – YASMIN LITE, with the registration date of December 22, 2004; and many others.
The disputed domain name differs from the registered YASMIN trademark by the additional words “on line”, and the gTLD “.net”.
The disputed domain name integrates the Complainant's trademark YASMIN in its entirety, as a dominant element. The Panel cites the following decision with approval, “[r]espondent's domain name wholly incorporates [c]omplainant's mark […]. Accordingly, it is confusingly similar to a mark in which [c]omplainant has rights” (see Advanced Micro Devices, Inc. v. Piere Macena,WIPO Case No. D2005-0652).
The additional words “on line” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's YASMIN trademark, especially as they represent the meaning “in the Internet”, and are descriptive with respect to the use in any domain name.
Previous WIPO UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous UDRP panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD “.net” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.net” is without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights, or legitimate interest.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the YASMIN trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant, along with its affiliated companies own registrations for the YASMIN trademark since the year 1990. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
From the evidence submitted by the Complainant, the Panel finds that until recently, the disputed domain name led Internet users to a website, which promoted the sale of drugs and oral contraceptives, some of which carried the YASMIN mark. The Respondent's use of the name “yasmin” to promote similar or identical goods to the goods being sold by the Complainant clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the mark YASMIN and subsequent intent to trade off the value of these. The Respondent's previous actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made of the disputed domain name to offer quasi-identical goods to the ones the Complainant manufactures and markets constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The disputed domain name currently resolves to a parking webpage, which displays the following announcement: “Welcome. You see this page because there is no Web site at this address. What you can do: Create domains and set up Web hosting using Parallels Plesk Control Panel”. However, the fact that the Respondent has ceased the use of the domain name does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
Further, the disputed domain name is confusingly similar to the Complainant's trademark. Previous WIPO UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the use of the YASMIN trademark in the domain name and the previous use made by the Respondent of the disputed domain name, the Panel draws the inference that the disputed domain name were registered and used in bad faith.
Further, the evidence provided by the Complainant, including a Whois database search, imply cybersquatting by Respondent, as the Respondent appears to be holding over 180 domain names with typographical variation of famous pharmaceutical trademarks. The Panel agrees that this implies bad faith registration by Respondent (See Kraft Foods Global Brands, LLC v. Jet Stream Enterprises Limited, Jet Stream,WIPO Case No. D2009-0547).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name 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 name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: April 28, 2010
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