The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is John Callahan of Kirkwood, Missouri, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2017. On October 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 9, 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.
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, and the proceedings commenced on October 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2017.
The Center appointed Jane Lambert as the sole panelist in this matter on November 27, 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. On December 21, 2017, the Center received two email communications, one from the Complainant and one from the Respondent. The Panel notes the contents of these communications but does not find that they substantively alter the Panel’s decision in this matter. Notably, the Respondent has not provided any convincing supporting evidence to his mere claims in the matter. 4. Factual Background
The Complainant is a well-known German public company. Its shares are quoted on the Frankfurt and other stock exchanges and are included in the DAX 30 index. It is the holding company of one of the world’s largest pharmaceutical and life sciences groups the products of which include human and veterinary pharmaceuticals, consumer healthcare products, agricultural chemicals, biotechnology products and high value polymers. The group’s consolidated turnover was just under EUR 47 billion in 2016 and its pre-tax profit almost EUR 5.9 billion that same year.
The Complainant company is named after its founder, Friedrich Bayer, who started the business in 1863. His surname is also used as a trade mark for the group’s pharmaceutical and other products and has been registered for such goods in many countries of the world. One of those countries is the United States of America where the Complainant has registered the BAYER mark with the United States Patent and Trademark Office for various goods in classes 1 and 5 under registration number 1482868 with effect from April 5, 1988.
On May 16, 2016, the Complainant announced that its intention to acquire and merge with Monsanto Co. Inc., the American agrochemical and biotechnology conglomerate, subject to the approval of the US and other antitrust authorities. The two companies signed a merger agreement on September 14, 2016.
The Respondent applied to register the disputed domain names on the September 15, 2016 which was the very next day.
All that is known of the Respondent is his entry on the “whoIs” database in respect of the disputed domain names. He does not appear to have any connection with either the Complainant or the Monsanto Company. 5. Parties’ Contentions A. Complainant
The Complainant asks for the transfer of the disputed domain names on the grounds that each of those disputed domain names is confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of those domain names and that the Respondent registered and is using those domain names in bad faith.
As for the first ground, the Complainant refers to its vast portfolio of trade mark registrations around the world of which US trade mark number 1482868 mentioned above is an example. The disputed domain names incorporate that trade mark and combine it with Monsanto’s and the word “news” thereby suggesting that they are domain names for official websites communicating news of the proposed acquisition and merger or even that they will be used for the main websites for the combined enterprise if and when such merger takes place.
In respect of the second ground, the Complainant reminds the Panel that it does not have to prove a negative. It is enough for a complainant to show the unlikelihood of the respondent’s having any rights or legitimate interests in a disputed domain name leaving it to the respondent to prove otherwise in his or her response if he or she wishes to do so. The Complainant points out that it has not licensed the Respondent and that nobody would trade under as BAYER mark unless he or she wished to misrepresent a connection with the Complainant. None of the circumstances set out in paragraph 4(c) of the Policy appears to apply to the Respondent.
As for the third ground, the Complainant refers the Panel to the well known decision of Mr. Andrew Christie in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In that case the Panel held that “the passive holding of the domain name by the [r]espondent” (that is to say, registering a domain name but not actually doing anything with it) could in some circumstances amount to registration and use in bad faith. The Complainant argues that the circumstances of this case point to a similar conclusion. The facts and matters upon which it relies are as follows:
“- The Complainant’s BAYER Marks are well-known;
- The Respondents had provided no evidence whatsoever of any actual or contemplated good faith use;
- The combination of the words ‘bayer’ and ‘monsanto’ clearly refers to the Complainant; and
- From all of the circumstances, there does not appear to be any possible or conceivable good faith use of the disputed domain names , that would not be illegitimate.”
The Complainant also contends that:
“- the Respondent’s registration of the disputed domain names prevents the Complainant from reflecting its trademarks in a corresponding domain name and [that] the Respondent has engaged in a pattern of such conduct, as set out in paragraph 4(b)(ii) of the Policy” though it has adduced no evidence of such pattern of conduct;
- The Respondent has offered to sell the disputed domain names on the Sedo website contrary and is therefore one of the circumstances set out in paragraph 4(b);
- The use of the disputed domain names would disrupt the Complainant’s business by diverting Internet traffic from its sites; and
- “The registration of the disputed domain names by the Respondent also constitutes an abusive threat hanging over the head of the Complainant, which also supports a finding of bad faith.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The agreements for the registration of the disputed domain names incorporated the Policy paragraph 4(a) of which provides:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a ʻcomplainantʼ) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The Complainant is the registered proprietor of the BAYER word mark which is registered with the US Patent and Trademark Office as trade mark number 1482868. That is clearly a trade mark in which the Complainant has rights.
Neither disputed domain name is identical to that mark but both incorporate the word mark together with the words “monsanto” and “news”. It is the incorporation of the BAYER word mark that imports similarity and the incorporation of the “monsanto” and “news” that induces confusion. The confusion arises because the words infer that the domain names are intended either for a website for the merged company or for news of the proposed merger. In neither case would that be true. B. Rights or Legitimate Interests
The Panel finds the second element to be present.
The Complainant’s submission that a complainant need not prove a negative is accepted. The Panel also agrees that nobody could trade under a name or mark that is the same or similar to the disputed domain names without risking an action for trade mark infringement, passing off or some similar cause of action at the suit of the Complainant, Monsanto or both. The Complainant has not licensed the Respondent to register the disputed domain names. There is no evidence to suggest that the Complainant has acquiesced in such registration or use or that the Complainant is estopped or otherwise prevented from objecting to the same. The Respondent had an opportunity to justify his registration and use of the disputed domain names but chose not to do so. C. Registered and Used in Bad Faith
The Panel holds that the third element is present.
Paragraph 4(a)(iii) of the Policy requires a Complainant to prove that the Respondent has registered a domain name and used it in bad faith. To assist Panelists, the UDRP sets out in paragraph 4(b) a set of circumstances which, if found to be present, are to be taken as evidence of the registration and use of a domain name in bad faith. The words “but without limitation” indicate that those circumstances are illustrative and not exhaustive. In practice, most cases fall comfortably within one or more of the circumstances in 4(b) but this one does not do so.
It does, however, have a lot in common with Nuclear Marshmallows and the temptation is to follow that case without more ado. However, that would be to a mistake because Telstra Corporation Limited v. Nuclear Marshmallows (supra), made clear at paragraph 7.11 that each case is to be decided on its own facts:
“The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
A good starting point is to consider what is meant by “bad faith”, Paragraph 3.1 of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. This Panel finds the definition of bad faith that was offered by Mr. Justice Lindsay in Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 to be very useful. He said that bad faith includes not only dishonesty but also “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined.” That dicta has been approved by courts and tribunals at all levels in England and Wales and would clearly cover all the circumstances set out in paragraph 4(b) of the Policy.
An act that would certainly fall below the standards of acceptable commercial behaviour if not amounting to outright dishonesty would be to make a representation or give a warranty without any intention of honouring it.
Paragraph 2 of the Policy requires the Respondent to make the following representations and give the following warranties:
“(a) […] (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
The disputed domain names were registered on the very day that the world’s press announced the Complainant’s agreement to merge with Monsanto. It would be straining credulity well beyond its limits to suppose that the registrations were coincidental, that the Respondent had never heard of two of the world’s largest chemicals and life science companies or that he thought that he might be entitled to register domain names that incorporated the corporate names and trade marks of those companies. The Respondent must have known that the registration of the disputed domain names would violate the rights of the Complainant and Monsanto, that the registration would be for an unlawful purpose and that it would violate trade mark law and the law of passing off. The likelihood is that he saw an opportunity to make money at minimal risk to himself and grabbed it regardless of the representations that he had just made and the warranties that he had just given. That cannot possibly be regarded as registration in good faith.
As for use in bad faith, the Court of Appeal of England and Wales said in British Telecommunications Plc and Others v One In A Million Ltd and Others [1998] EWCA Civ 1272, [1999] ETMR 61, [1999] WLR 903, [1998] Masons CLR 165, [1997-98] Info TLR 423, [1998] 4 All ER 476, [1999] 1 ETMR 61, [2001] EBLR 2, [1999] FSR 1, [1999] 1 WLR 903, [1998] ITCLR 146:
“The placing on a register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of One In A Million Limited and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered.”
The Panel respectfully adopts and endorses their Lordships’ reasoning and adds that such a misrepresentation also implies a threat. Such threat may not be spelt out but at least some trade mark proprietors will surmise that such domain names have been registered for a reason, that a lot of damage can be done in the time it takes to recover a domain name even under the UDRP.
The Panel finds that the disputed domain names were registered and used in bad faith as set out in paragraph 4(a)(iii) of the UDRP. 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 names and be transferred to the Complainant.
Jane Lambert
Sole Panelist
December 21, 2017
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