WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayer Schering Pharma AG v. Auto Direct LLC Case No. D2010-0399 1. The Parties
The Complainant is Bayer Schering Pharma AG of Berlin, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Auto Direct LLC of Eagan, 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 15, 2010. On March 16, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 17, 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”).
On March 18, 2010, the Center received an email communication from the Respondent where it was stated that the Respondent had removed all contents on the website associated with the disputed domain name and that said website was now redirecting to a website related to an online pharmacy owned by the Respondent. The Center acknowledged receipt of this communication on the same day.
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 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2010.
The Center appointed Erica Aoki as the sole panelist in this matter on April 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.
The language of this administrative proceeding is English, the language of the registration agreement. 4. Factual Background
The Complainant is part of Bayer AG, a global enterprise which is represented around the world by 350 companies. The Complainant markets its products in more than 100 countries with annual sales of over EUR 10.7 billion in 2008.
The Complainant is one of the ten largest pharmaceutical companies in the world focusing on the research and development of innovative drugs. 5. Parties' Contentions A. Complainant
The Complainant has rights in some of the most recognized trademarks in the pharmaceutical world, including YAZ.
The Complainant's products include an oral contraceptive pill which has been in the market since 2006 and which is available in many countries, including the United States, where Respondent is located.
The Complainant's trademark YAZ is registered in several countries including in the United States.
The word “yaz” is solely related to the Complainant's product as shown from a Google search and the Complainant has a strong presence on the Internet. As a result of this extensive and exclusive use, the Complainant's trademark YAZ has acquired a significant goodwill and is widely known.
The Respondent registered the disputed domain name on September 24, 2009 although it does not have any rights or legitimate interests in the disputed domain name.
The Respondent registered and used the disputed domain name in bad faith to disrupt the Complainant's business and is using it in connection with a website offering the Complainant's and third parties' products.
The Respondent has never been known by the disputed domain name
The Respondent is misleadingly diverting Internet users for commercial gains. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and used in bad faith. A. Identical or Confusingly Similar
Based on the facts and evidence presented in this case, this Panel finds that the disputed domain name is confusingly similar to the trademark YAZ in which the Complainant has rights. Indeed, there is no doubt that the disputed domain name is confusingly similar to the Complainant's registered trademark as it contains the Complainant's trademark in its entirety. The addition of the prefix “buy” in the disputed domain name is obviously not sufficient to avoid a finding of confusing similarity with the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent is in default and has thus made no assertion as to its potential rights or legitimate interests in the disputed domain name.
The Policy indicates that the registrant of a domain name may have a legitimate interest if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.
The Respondent is in no way connected with the Complainant and has no authorization to use the Complainant's trademarks YAZ.
There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The sole use of the disputed domain name by the Respondent is to divert traffic of the Internet to gain revenues.
The website “www.” associated with the disputed domain name redirects to an online pharmacy website which lists several products, including those of the Complainant and of its competitors.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
As mentioned above, the disputed domain name has been used to link to a commercial website to sell online drugs, including those produced by the Complainant and its competitors.
Based on the evidence presented in this case, the Panel is convinced that the Respondent likely knew about the Complainant's trademark YAZ when it registered the disputed domain name in September 24, 2009.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to an online location, by creating a likelihood of confusion. This behaviour constitutes evidence of bad faith. (Policy, paragraph 4(b)(iv)).
Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith. (Policy, paras. 4(a)(iii)). 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.
Erica Aoki
Sole Panelist
Dated: May 3, 2010
Full & Egal Universal Law Academy