WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Med Chem, Inc

Case No. D2013-1286

1. The Parties

The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.

The Respondent is Med Chem, Inc of Fountain Inn, South Carolina, United States of America, internally represented.

2. The Domain Name and Registrar

The disputed domain names <bayerdca2000.com>, <bayermultistix.com> and <bayer2161.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2013. On July 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 17, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2013. The Response was filed with the Center on July 31, 2013.

On August 1, 2013, the Center received Supplemental Filings from both of the Parties.

The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on August 7, 2013. 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 corporation incorporated under the laws of Germany and is a global enterprise with core competencies in the fields of health care, nutrition and high-tech materials. The Complainant’s Bayer company name dates back to 1863 and it and its predecessors have manufactured and marketed pharmaceutical products under that name since 1888. The Complainant does business on five continents and has more than 111,000 employees worldwide.

The Complainant is the owner of multiple registered trademarks for the word mark BAYER including, for example, United States of America (“USA”) registered trademark number 0155612 registered on June 6, 1922 in international class 5.

In 1992, the Complainant introduced a product named “DCA 2000” which was the first system for easy and rapid long-term blood sugar measurement for medical practices. The product was a product of the Complainant’s Diagnostics Division, which was sold to a company named Siemens Healthcare Diagnostics Inc. (“Siemens”) in 2006, together with the trademark rights in the Complainant’s DCA 2000 mark. Siemens is the current holder of the rights in various registered trademarks for the word mark DCA 2000 including, for example, USA registered trademark number 1776927 registered on June 15, 1993 in international classes 5 and 10. On June 14, 2013, Siemens granted a Power of Attorney in favor of the Complainant allowing the Complainant to act on Siemens’ behalf in the present proceedings and approving the transfer of <bayerdca2000.com> to the Complainant.

In 2006, the Complainant divested a product named Multistix, a reagent strip used as a frontline test for detection of a broad range of medical conditions, to Siemens and granted a license to Siemens to use various registered trademarks for the word mark MULTISTIX. The Complainant’s subsidiary, Bayer HealthCare LLC, remains the owner of the said registered trademarks, including Swiss registered trademark number P-402321 registered on June 16, 1993 in international class 1. On July 3, 2013, Bayer HealthCare LLC granted a Power of Attorney in favor of the Complainant allowing the Complainant to act on Bayer HealthCare LLC’s behalf in the present proceedings and approving the transfer of <bayermultistix.com> to the Complainant. The stock keeping unit of the Multistix product is “2161” and as such this number is customarily used in connection with the product.

The Respondent appears to be a corporation based in the USA, with an address in Fountain Inn, South Carolina, which deals in medical supplies. The disputed domain names were created on March 7, 2008 (<bayerdca2000.com> and <bayermultistix.com>) and November 22, 2010 (<bayer2161.com>). The disputed domain name <bayer2161.com> is not actively used by the Respondent. The disputed domain names <bayerdca2000.com> and <bayermultistix.com> forward to websites referring to the Complainant’s “DCA 2000” and “Multistix” products respectively and which in turn link to a website at “www.expressmedicalsupplies.com”, a discount medical supplies and equipment store which sells products manufactured by the Complainant and its competitors. In addition to the said links, the website available at “www.bayermultistix.com” directly offers the Complainant’s competitors’ products for sale. There are no disclaimers of any kind on the websites associated with the <bayerdca2000.com> and <bayermultistix.com> disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to trademarks in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

The Complainant asserts that its BAYER marks have acquired significant goodwill and are widely known, under reference to multiple decided cases under the Policy. The Complainant submits that the disputed domain name <bayerdca2000.com> is identical to the BAYER and DCA 2000 trademarks. The Complainant asserts that the disputed domain name <bayermultistix.com> is identical to the BAYER and MULTISTIX trademarks. The Complainant contends that it has rights in all of the said trademarks for the purpose of the present proceeding. The Complainant also notes that all of the disputed domain names fully incorporate the Complainant’s BAYER trademark and submits that they are confusingly similar thereto. The Complainant submits that the incorporation of the DCA 2000 and MULTISTIX trademarks in the relative disputed domain names does not eliminate the similarity between such disputed domain names and the BAYER trademark and, on the contrary, strengthens the likelihood of confusion. The Complainant states that the additional number “2161” included in the disputed domain name <bayer2161.com> is not qualified to dispel the confusing similarity with the Complainant’s BAYER trademark because the combination of such mark with the stock keeping unit of the “Multistix” product strengthens the likelihood of confusion.

The Complainant contends that the strings “bayer”, “dca 2000” and “multistix” are highly distinctive and obviously connected with the Complainant and its products and are not strings a trader would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complainant asserts that neither the Complainant nor the owners of the DCA 2000 and MULTISTIX trademarks have licensed or otherwise permitted the Respondent to use any of their trademarks and have not permitted the Respondent to apply for or use any domain name incorporating their trademarks. The Complainant submits that these circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the disputed domain names on the part of the Respondent.

The Complainant contends that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services. The Complainant states that as the disputed domain name <bayer2161.com> is registered but not actively used, the Respondent cannot rely on any use of the said disputed domain name in connection with a bona fide offering of goods and services. The Complainant asserts that the use of the disputed domain names <bayerdca2000.com> and <bayermultistix.com> in connection with websites offering the Complainant’s and third parties’ products does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.

The Complainant cites the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 as authority for the proposition that the use of a trademark as a domain name by a third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if certain conditions are satisfied. The Complainant contends that in the present case the Respondent’s use of the disputed domain names <bayerdca2000.com> and <bayermultistix.com> does not meet the Oki Data criteria on the grounds that the Respondent uses the said disputed domain names to offer a broad range of products, including products of the Complainant’s direct competitors, and that the Respondent’s websites do not accurately disclose its relationship with the Complainant or the owners of the DCA 2000 and MULTISTIX trademarks and do not contain any kind of disclaimer. The Complainant adds that by incorporating the SIEMENS trademark in the header section of the website available at <bayermultistix.com>, the Respondent falsely suggests that it is the trademark owner or that the website is the trademark owner’s official site, and that the unauthorized use of a trademark owner’s logo by a respondent on its website has been considered as an indication of bad faith by previous UDRP panels and prevents a finding of bona fide offering of goods or services.

The Complainant states that the Respondent trades under the name “Med Chem, Inc.” and that there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, or is commonly known by the said disputed domain names or trades under the disputed domain names or the names “Bayerdca2000”, “Bayermultistix” and/or “Bayer2161”.

The Complainant asserts that as the Respondent itself offers the products “DCA 2000” and “multistix” for sale and that the BAYER trademarks are well-known worldwide and solely connected with the Complainant and its products, it is inconceivable that the Respondent registered the disputed domain names unaware of the Complainant and the trademarks BAYER, DCA 2000 and MULTISTIX. The Complainant contends that the Respondent’s use of the disputed domain names will disrupt the Complainant’s business in that it is capable of reducing the number of visitors to the Complainant's website and may adversely affect the Complainant's business.

The Complainant notes that the disputed domain name <bayer2161.com> is not actively used and is passively held but submits that this does not obstruct a finding of bad faith if such passive holding is equal to active use. The Complainant asserts that the circumstances in the case of <bayer2161.com> justify the equation of passive holding and active use, because the Complainant’s BAYER trademarks are well-known worldwide, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use and there is no conceivable or plausible actual or contemplated active use of the disputed domain name <bayer2161.com> that would not be illegitimate.

The Complainant submits that the Respondent’s bad faith use of the disputed domain names <bayerdca2000.com> and <bayermultistix.com> is further evidenced by the use of such disputed domain names to directly offer the Complainant’s competitors’ products for sale, or direction of traffic intended for the Complainant and the products “DCA 2000” and “Multistix” to the Respondent’s website at “www.expressmedicalsupplies.com”. The Complainant asserts that the Respondent is, in all likelihood, trying to divert traffic intended for the Complainant and is using the disputed domain names to mislead Internet users and consumers into believing that it is connected to, sponsored by or affiliated with the Complainant and its business or that its activities are approved or endorsed by the Complainant.

B. Respondent

The Respondent’s submissions are extremely limited and may be quoted verbatim: “We sell Bayer items as a medical supplies distributor and therefore have purchased these web URL domains to sell Bayer items.”

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Preliminary issue: Complainant’s Supplemental Filing

Paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides the following consensus view on the topic of Supplemental Filings:

“[…] Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order”.

In the present case, the Complainant filed a document entitled “Reply to Response”, to which the Respondent filed an answer by email, neither of which were requested by the Panel. There is no automatic right of reply to a response under the Policy and given that the proceedings are intended to be relatively swift, summary in nature and not prolonged by lengthy reply and counter-reply procedures unless there is good cause to do so, the Panel declines to accept the Parties’ Supplemental Filings in this particular case.

B. Identical or Confusingly Similar

As there are different rights and different arguments put forward by the Complainant with regard to the three disputed domain names, the Panel will consider each of these in turn.

With regard to the disputed domain name <bayerdca2000.com>, the Panel finds that the Complainant has demonstrated that it has rights in its BAYER registered trademark held in its own name, and rights in the registered trademark for DCA 2000 as derived through the Power of Attorney granted by Siemens Healthcare Diagnostics Inc. in the Complainant’s favor. Disregarding the top level domain “.com” as is customary in cases under the Policy, the Panel finds that the disputed domain name <bayerdca2000.com> is identical to the said trademarks.

With regard to the disputed domain name <bayermultistix.com>, the Panel finds that the Complainant has demonstrated that it has rights in its BAYER registered trademark held in its own name, and rights in the registered trademark for MULTISTIX as derived through the Power of Attorney granted by Bayer HealthCare LLC in the Complainant’s favor. Disregarding the top level domain “.com” as is customary in cases under the Policy, the Panel finds that the disputed domain name <bayermultistix.com> is identical to the said trademarks.

With regard to the disputed domain name <bayer2161.com>, the Panel finds that the Complainant has demonstrated that it has rights in its BAYER registered trademark held in its own name. The said trademark is incorporated into the disputed domain name <bayer2161.com> in its entirety along with the addition of a generic number. In the Panel’s view, the addition of a generic term is insufficient to dispel the confusion between the disputed domain name <bayer2161.com> and the Complainant’s said trademark. Furthermore, the Complainant has provided evidence that the number 2161 also corresponds to the stock keeping unit of the “Multistix” product which in the Panel’s view is likely to exacerbate such confusing similarity. As with the other two disputed domain names, the top level domain “.com” may be disregarded for the purposes of comparison as is customary in cases under the Policy

The Respondent did not take issue with any of the Complainant’s contentions on this topic. Accordingly, the Panel finds that the disputed domain names <bayerdca2000.com> and <bayermultistix.com> are identical to the trademarks in which the Complainant has rights. The Panel also finds that the disputed domain name <bayer2161.com> is confusingly similar to a trademark in which the Complainant has rights.

The Panel therefore finds that the Complainant has established the first element under the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name which is not rebutted by the Respondent. Once such prima facie case is made, the respondent carries the burden of production of evidence demonstrating such rights or legitimate interests.

In the present dispute, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names based upon its submissions that neither the Complainant nor the owners of the DCA 2000 and MULTISTIX trademarks have licensed or otherwise permitted the Respondent to use any of their trademarks and have not permitted the Respondent to apply for or use any domain name incorporating their trademarks. The burden of production therefore shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain names.

The Respondent’s case is simply that it is a reseller of the Complainant’s goods and registered the disputed domain names for use in connection with the resale of such goods. This circumstance has been addressed by paragraph 2.3 of the WIPO Overview 2.0 which provides inter alia as follows:

“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. […]”

The Panel respectfully adopts the consensus view. In the present case, there is no doubt that the disputed domain names <bayerdca2000.com> and <bayermultistix.com> are used by the Respondent in connection with the actual offering of the goods at issue and indeed this is the Respondent’s only contention in the Response. However, the website in each case links to the “www.expressmedicalsupplies.com” website which also offers a variety of other goods for sale. The Complainant states that some of these goods are competitive to the products referred to in the <bayerdca2000.com> and <bayermultistix.com> disputed domain names. The Respondent does not dispute that assertion. Consequently, the Respondent is not using these sites to sell only the trademarked goods. Neither such site contains any disclaimer with regard to the Respondent’s relationship with the relative trademark holders. The <bayerdca2000.com> and <bayermultistix.com> disputed domain names therefore do not fall within the Oki Data principles outlined above. With regard to the disputed domain name <bayer2161.com>, the Panel accepts the Complainant’s contention that as this is not actively used, the Respondent cannot claim use in connection with a bona fide offering of goods and services.

In all of these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and consequently that the second element under the Policy has been established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the 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 your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

In the present case, as the Respondent is on its own admission a reseller of the Complainant’s products, the Panel has no doubt that the Respondent registered and used the disputed domain names with the Complainant’s trademarks firmly in mind. With regard to <bayerdca2000.com> and <bayermultistix.com>, the Complainant notes that these disputed domain names have been used to offer the Complainant’s competitors’ products for sale and have also been used for direction of traffic to the Respondent’s website at “www.expressmedicalsupplies.com”. The Panel is satisfied that this constitutes registration and use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

With regard to <bayer2161.com>, the Panel considers that the Respondent’s passive holding of this disputed domain name is equivalent to active use in the particular circumstances of this case. The Panel accepts the Complainant’s contention that its BAYER trademark is well-known, as demonstrated by the findings of numerous prior UDRP panels in cases under the Policy. The use of this mark together with the stock keeping unit number of one of the Complainant’s products in a domain name is in the Panel’s opinion inherently likely to lead to confusion on the part of consumers. Furthermore, although this particular disputed domain name is passively held, there is evidence before the Panel as to the Respondent’s contemplated active use. The Respondent’s brief Response makes it clear that it registered all three of the disputed domain names for the same purpose. Had the Respondent used <bayer2161.com> in an identical manner to that of <bayerdca2000.com> and <bayermultistix.com> this would have led to a finding of registration and use in bad faith as outlined above. The Panel accepts the Complainant’s contention that there is no contemplated active use of the disputed domain name <bayer2161.com> that would not be illegitimate. The Panel is therefore satisfied that <bayer2161.com> was also registered and has been used in bad faith.

In all of these circumstances, the Panel finds that the disputed domain names have been registered and are being used in bad faith and consequently that the third element under the Policy has been established.

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 <bayerdca2000.com>, <bayermultistix.com> and <bayer2161.com> be transferred to the Complainant.

Andrew D.S. Lothian
Sole Panelist
Date: August 21, 2013