The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is Wuxi Yilian LLC of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2017. On February 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 16, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 18, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on February 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2017.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 21, 2017. 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 plant protection. It is headquartered in Germany. The Complainant’s Bayer name dates back to 1863 when the firm Friedrich Bayer & Co. was established in Germany. In 1881, the name was transferred to the stock corporation Farbenfabriken vorm. Friedrich Bayer & Co., which began manufacturing and marketing pharmaceutical products in 1888 and has sold such products under the BAYER mark ever since. The Complainant is represented by over 250 affiliates and has more than 100,000 employees worldwide. The Complainant, itself or through its affiliates, manufactures and sells numerous products worldwide, including human pharmaceutical and medical care products, veterinary products, and agricultural chemicals, among other goods. In China, the Complainant’s local subsidiary trades under the name Bayer (China) Limited.
The Complainant owns about 700 trademark registrations and pending applications for the mark BAYER around the world for an extensive range of goods and services, including pharmaceuticals, veterinary preparations, cosmetics, dietic substances, coatings, plastics, agricultural chemicals, pesticides, insecticides, fungicides, and herbicides. Among the Complainant’s trademark registrations are many registrations for its BAYER mark in China, where the Respondent is located, including China Registration Nos. 76013, 76022, 76011 and 76014 (each registered August 2, 1977), 1297369 and 1297377 (each registered July 21, 1999), 1299991, 1299855, and 1299985 (each registered July 28, 1999), and 1317774 and 1318037 (each registered September 28, 1999). The Complainant also has a strong Internet presence. It and its subsidiaries own hundreds of registrations for domain names that contain the BAYER mark, including and . A search on “” (the Google search engine offered for mainland China) shows that nearly all of the search results for “bayer” refer to the Complainant or its subsidiaries. Previous WIPO panels have determined that the Complainant’s BAYER marks are well-known, including, among others, in the following cases: Bayer Aktiengesellschaft v. K Dangos,WIPO Case No. D2002-0138; Bayer Aktiengesellschaft v. Dangos & Partners,WIPO Case No. D2002-1115; Bayer Aktiengesellschaft v. Yongho Ko,WIPO Case No. D2001-0205; Bayer Aktiengesellschaft v. Amaltea Impex SRL,WIPO Case No. DRO2005-0006; Bayer Aktiengesellschaft v. TMP,WIPO Case No. D2002-0132; Bayer Aktiengesellschaft v. Sonny Mei,WIPO Case No. D2006-1349.
On May 12, 2016, international media first began to report the fact that the Complainant is exploring a potential bid for its United States of America competitor Monsanto Co. In September, 2016, the Complainant and Monsanto Co. agreed on the merger.
The Respondent registered the disputed domain name on September 15, 2016. The disputed domain name does not resolve to any website. A reverse WhoIs search reveals that the Respondent’s name is associated with more than 49,000 domain names. Many of such include English words, such as , , , , , , , , , , and . Additionally, according to the evidence of the Complainant, the Respondent has been involved in at least 10 UDRP proceedings, all of which resulted in the transfer of the disputed domain names at issue to the respective complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s BAYER mark. It fully incorporates the well-known BAYER mark. The generic Top-Level Domain (“gTLD”) “.net” is not an element of distinctiveness that can be considered when evaluating the identity or confusing similarity between a complainant’s trademark and a disputed domain name. That the disputed domain name includes a third-party trademark, MONSANTO, does not eliminate the similarity between the Complainant’s mark and the disputed domain name. On the contrary, the use of the BAYER mark in connection with the MONSANTO mark strengthens the likelihood of confusion because it refers to the Complainant and its intentions to merge with Monsanto Co.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The BAYER marks are well known and obviously connected to the Complainant and its products. “Bayer” is not a word that any market participant or domain name registrant would choose unless seeking to create an impression of association with the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name that incorporates the BAYER mark. These circumstances themselves are sufficient to establish a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. Furthermore, there is no evidence of the Respondent’s use of (or demonstrable preparations to use) the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence to suggest that the Respondent is making a legitimate noncommercial fair use of the disputed domain name or that the Respondent is commonly known by the disputed domain name.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. Given the Complainant’s high profile worldwide, it is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant and its rights in the BAYER mark. Additionally, that the Respondent has registered several other domain names composed of third parties’ trademarks and has been involved in several UDRP proceedings already is evidence that the Respondent is deliberately targeting trademark owners, including the Complainant in this case. The fact that the disputed domain name is not actively used does not prevent a finding of bad faith use. In light of the overall circumstances, the Respondent’s passive holding of the disputed domain name amounts to bad faith use: the Complainant’s BAYER mark is well known; the Respondent has provided no evidence of any actual or contemplated good faith use; the combination of the words “bayer” and “monsanto” in the disputed domain name clearly refers to the Complainant; and there is no possible or conceivable good faith use of the disputed domain name that would not be illegitimate. Additionally, the Respondent’s registration of the disputed domain name prevents the Complainant from reflecting its mark in a corresponding domain name and the Respondent has engaged in a pattern of such conduct. The fact that the Respondent registered a domain name which includes a mark that is obviously connected with the Complainant and its products supports a finding of bad faith because the very use of such domain name by someone with no connection with the products suggests opportunistic bad faith. The Respondent’s registration of the disputed domain name also constitutes an abusive threat hanging over the head of the Complainant, which also supports a finding of bad faith.
The Complainant requests that the disputed domain name be transferred to it. Although the disputed domain name contains the third-party mark MONSANTO as well as the Complainant’s mark, the intended merger of the two mark owners makes transfer to the Complainant appropriate. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. The Respondent owns registrations for many domain names that contain English words. Additionally, substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. The Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English in light of these circumstances. 6.2 Substantive Discussion
The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The Complainant is the owner of the BAYER mark and owns several trademark registrations for the mark. The Panel accepts that the Complainant’s BAYER mark is well known.
The disputed domain name comprises the terms “bayer” and “monsanto” and the gTLD “.net”. Initially, as a technical part of the disputed domain name, the gTLD “.net” is not relevant in determining whether the disputed domain name is identical or confusingly similar to the BAYER trademark and is without legal significance. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc.,WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. The disputed domain name reproduces the Complainant’s BAYER mark in its entirety. The disputed domain name also reproduces the MONSANTO mark owned by a third party in its entirety. This does not sufficiently distinguish the disputed domain name from the Complainant’s mark. Moreover, the disputed domain name is intended to reflect the pending merger between the Complainant and Monsanto Co. See Société Air France v. Ali Ferhat Kurtulus Levent Mert/Erdem Yavuz,WIPO Case No. D2004-0759. Indeed, persons who have knowledge of the pending merger are likely to believe that the disputed domain name has a connection with the merged entity. See Albertis Infraestructuras, S.A. v. Syed Hussaind (PDAPB),WIPO Case No. D2006-1007.
Therefore, the disputed domain name is confusingly similar to the Complainant’s BAYER mark. B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The Respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is not used in connection with any active website. Nor has the Respondent demonstrated preparation to use the disputed domain name in connection with a bona fide offering of goods or services.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant states, and the Respondent does not deny, that the Complainant never licensed or authorized the Respondent to use the BAYER mark or to register a domain name including the mark.
Finally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, the Panel finds that the Complainant satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 such website or location or of a product or service on such website or location.
The Respondent was undoubtedly aware of the Complainant and its BAYER mark at the time of registration of the disputed domain name and that such registration was in bad faith. The Complainant and its BAYER mark are known widely and throughout the world. The BAYER mark has been in use for more than a century. Additionally, the Complainant owns trademark registrations for its BAYER marks in many jurisdictions, including several in China where the Respondent is located. A simple Internet search for “bayer” would have yielded many obvious references to the Complainant. Moreover, the incorporation of the MONSANTO mark in the disputed domain name is evidence that the Respondent was aware of the Complainant and its intended merger with Monsanto Co. The Respondent’s intentional registration of a domain name incorporating the Complainant’s well-known mark, being fully aware of the Complainant’s rights in the mark, without any rights or legitimate interests in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113.
Although the Respondent is passively holding the disputed domain name, passive holding can still constitute bad faith use under the particular circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The disputed domain name incorporates the Complainant’s extensively used and well-known BAYER mark in its entirety and the Respondent must have been aware that Internet users would be led to believe that the disputed domain name and any resolving website would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206. Additionally, Internet users who are aware of the proposed merger between the Complainant and Monsanto Co. would be led to believe that the disputed domain name and any resolving website would be associated with the merged entity. See Albertis Infraestructuras, S.A., supra. Moreover, the Respondent’s holding of the disputed domain name prevents the Complainant from reflecting its mark in the same domain name. See AXA S.A. supra. The Respondent has held and continues to hold other domain names that are comprised of, in part, other well-known third-party marks, which is prima facie evidence that the Respondent regularly has been engaging in a pattern of abusive registrations. See Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer,WIPO Case No. DAU2013-0012. Under the totality of the present circumstances, the Respondent’s passive holding of the disputed domain name amounts to use in bad faith. See Telstra Corporation Limited, supra.
Therefore, the Panel finds that the Complainant satisfied the third element under paragraph 4(a) of the Policy. D. Transfer as a Remedy
The disputed domain name contains the Complainant’s BAYER mark, but also contains the well-known MONSANTO mark owned by third party Monsanto Co. However, the Complainant and Monsanto Co. intend to merge. If the Complainant and Monsanto Co. ultimately do not merge, then Monsanto Co. would have the same recourse to a UDRP proceeding or court action that the Complainant had in this proceeding. See Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: March 31, 2017
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