The Complainant is Bayer AG, Germany, represented by BPM Legal, Germany.
The Respondent is Whoisprotection.cc, Malaysia / Drago Price, Bayer, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 14, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 20, 2020. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 13, 2020. The Center appointed Sandra A. Sellers as the sole panelist in this matter on February 20, 2020. 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 Complainant and its predecessors have been in existence and operating under the Bayer name since 1863. In 1888, Complainant began manufacturing and marketing pharmaceutical products and has sold them under the BAYER trademark since that time. Complainant has over 300 affiliates and over 100,000 employees worldwide. Complainant manufactures and sells numerous products, including human pharmaceuticals and medical care products, veterinary products, diagnostic products and agricultural chemicals. Complainant’s subsidiary does business in Canada, and has offices at 2920 Matheson Boulevard East, Mississauga, Ontario L4W5R6, which also is the address used by Respondent in WhoIs, but there is no person named Drago Price working for Complainant or any of its subsidiaries. Complainant owns about 700 trademark registrations and pending applications for the word mark BAYER alone, including six Canadian registrations covering many goods and services, among which trademark registration No. TMDA24895, registered on August 8, 1919. Given Complainant’s extensive use, the BAYER mark has acquired significant goodwill and is widely known. See, e.g., Bayer Aktiengesellschaft v. K Dangos,WIPO Case No. D2002-0138; Bayer AG v Med Chem, Inc., WIPO Case No. D2013-1286, and other cases cited by Complainant. Respondent registered the disputed domain name on January 4, 2020. The disputed domain name is used in connection with a website featuring Complainant’s BAYER mark and “BAYER cross” symbol, as well as photos and videos from Complainant’s website. It also contains information on anabolic steroids using photos showing product repackaging on which the BAYER Cross has been applied. These products do not originate from Complainant. 5. Parties’ Contentions A. Complainant Complainant asserts that it has rights in the BAYER trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s BAYER mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the geographic indicator “canada”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) 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 To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The disputed domain name is confusingly similar to Complainant’s BAYER mark as it contains Complainant’s BAYER mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the geographic indicator “canada”. Numerous previous UDRP decisions have held that the addition of a geographical term does not distinguish the disputed domain name from Complainant’s trademark. Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768, and cases cited therein. In addition, the Panel also concurs with the finding of previous UDRP panels that the use of a famous mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the famous mark. See e.g., Playboy Enterprises International Inc. v. Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388. Accordingly, the Panel finds that Complainant has rights in the BAYER mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response. Complainant has exclusive rights in the BAYER mark and has not authorized Respondent to register or use the disputed domain name The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent is in default, and has not provided any evidence in its own favor. The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that for the purposes of paragraph 4(a)(iii), evidence of the registration and use of a domain name constitutes bad faith if “(iv) by using the domain name, [Respondent] [has] intentionally attempted to attract, for commercial gain, Internet users to [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 [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.” This list is not exclusive. It appears that Respondent did know of Complainant’s mark and products when Respondent registered the disputed domain name. The BAYER products are protected by various international trademark registrations. The BAYER mark is well-known and has been in use for over 100 years. In particular, Respondent used Complainant’s address for its WhoIs contact information. Further, the disputed domain name reverts to web pages containing images of Complainant’s BAYER mark. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”. Furthermore, Respondent used a privacy registration service to register the disputed domain name. In Omya AG v Omya UK Ltd v DomainProtect LLC,WIPO Case No. D2012-0164, the Panel found that “although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can constitute a factor indicating bad faith”. As set forth above, the Respondent used Complainant’s address in the contact information in WhoIs, which is an obvious indication of intent to hide Respondent’s identity. It is clear to this Panel that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website, thus using the disputed domain name. This disputed domain name reverts to a website showing BAYER products, which appear to be counterfeits sold under and in competition with Complainant’s BAYER mark. Other panels have held that the sale of counterfeit products is an indication of bad faith under paragraph 4(b)(iii) of the Policy. See Guccio Gucci SpA v. Liuqing Wu, Feiji Lu,WIPO Case No. D2011-1506; Moncler Srl v. Linsaihui,WIPO Case No. D2010-1676; Prada S.A. v. Domains for Life,WIPO Case No. D2004-1019. This content appears designed to reinforce the Internet user’s impressions that the disputed domain name is affiliated with or approved by Complainant. The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelery, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao,WIPO Case No. D2001-0642. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and thus Complainant meets the third element of paragraph 4(a) of the Policy. 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 Sandra A. Sellers
Sole Panelist
Date: March 5, 2020
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