WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Registration Private, Domains By Proxy, LLC / Mark Miller

Case No. D2017-2540

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Mark Miller of Park City, Utah, United States, self-represented.

2. The Domain Names and Registrar

The disputed domain names <bayercannabis.com>, <bayerhemp.com>, <bayermarijuana.org>, <bayerpot.com>, <bayermarijuana.com>, and <bayerweed.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint (with regard to the disputed domain name <bayermarijuana.org>) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2017. On December 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 22, 2017, 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 the Complainant on December 27, 2017 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint December 28, 2017 requesting addition of the domain names <bayerpot.com>, <bayercannabis.com>, <bayerweed.com>, and <bayerhemp.com>. On January 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names <bayerpot.com>, <bayercannabis.com>, <bayerweed.com>, and <bayerhemp.com>. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the registrant and contact information for the domain names <bayerpot.com>, <bayercannabis.com>, <bayerweed.com>, and <bayerhemp.com> were the ones indicated in the Amended Complaint.

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 the Respondent of the Complaint, and the proceedings commenced on January 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2018. The Respondent sent an informal communication to the Center on January 14, 2018 and filed its Response with the Center on January 29, 2018.

In its Response, the Respondent mentioned to be the operator of the website “www.bayessentialremediesmarijuana.com”, whose corresponding domain name <bayessentialremediesmarijuana.com> is registered in the name of the Respondent.

On January 29, 2018, the Complainant filed a Supplemental Filing requesting the addition of the domain name <bayermarijuana.com> to this proceeding since:

i) The domain name <bayermarijuana.com> was registered on the very same day the Respondent registered the disputed domain name <bayermarijuana.org>, which was already part of the proceeding;

ii) Like all the disputed domain names, the domain name <bayermarijuana.com> was registered with the registrar GoDaddy;

iii) The domain name is pointed to a website showing similar contents as the ones displayed on the website at the domain name <bayessentialremediesmarijuana.com>, which the Respondent mentioned to be operating in its Response.

The Center appointed Luca Barbero as the sole panelist in this matter on February 2, 2018. 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 February 7, 2018, the Panel issued the Administrative Panel Procedural Order No. 1 (“Panel Order No. 1”) stating that, in view of the circumstances of the case, it found fair and practicable to consider the additional domain name <bayermarijuana.com>, and that such addition would not be prejudicial to the Respondent, subject to confirmation by the relevant Registrar that this domain name – registered, according to the public WhoIs records at that time, in the name of the privacy service Domains By Proxy, LLC – was actually registered by the Respondent. The Panel thus requested that the Center transmit to the Registrar a query for registrar verification in connection with the domain name <bayermarijuana.com> and forward to the Panel by email its verification response disclosing the full underlying registrant and contact information for this domain name.

On February 13, 2018, the Center forwarded to the Panel the Registrar’s verification response, confirming that the Respondent was listed as the registrant of the domain name <bayermarijuana.com> as well.

On February 16, 2018, the Panel issued the Administrative Panel Procedural Order No. 2 (“Panel Order No. 2”), in which it stated that, in light of the outcome of the Registrar’s verification, and exercising its powers, according to paragraphs 10 and 12 of the Rules, it deemed it appropriate to accept the Complainant’s request to include also the domain name <bayermarijuana.com> in this proceeding. Since the Complainant had already submitted, on January 29, 2018, its supplemental arguments addressing the three substantive requirements according to paragraph 4(a) of the Policy with respect to the domain name <bayermarijuana.com>, and had already provided for the payment of the supplemental fees to the Center as prescribed by the Rules, the Panel requested that the Center notify the Complainant’s Supplemental Filing to the Respondent, providing it a term of 10 days to submit any reply to the Complainant’s statements regarding the registration and use of the domain name <bayermarijuana.com>. Upon receipt of the Respondent’ Supplemental Filing or at the expiry of the 10 days period, the Panel would then proceed to render its decision. No supplemental response was filed by the Respondent within the due date indicated in the Panel Order.

4. Factual Background

The Complainant is a German company active in the fields of health care, nutrition and plant protection.

The Complainant’s stock is included in nearly all the major share indices, traded on all German stock exchanges and included in the DAX 30, a Blue Chip stock market index consisting of the 30 major German companies trading on the Frankfurt Stock Exchange.

The company name Bayer dates back to 1863, when the firm of “Friedrich Bayer & Co.” was established in the town of Elberfeld, now part of the city of Wuppertal, in Germany. In 1881, the name was transferred to a stock corporation called “Farbenfabriken vorm. Friedrich Bayer & Co.”. This company began manufacturing

and marketing pharmaceutical products in 1888 and has sold such products under the BAYER trademark ever since that time.

The Complainant is represented by over 250 affiliates and has more than 100,000 employees worldwide.

The Complainant, itself or through the subgroups like HealthCare and CropScience, operates in all five continents, manufacturing and selling numerous of products, including human pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals.

The Complainant is also operating in the United States, where the Respondent is located, through its local subsidiary Bayer Corporation.

The Complainant is the owner of about 700 registrations and pending applications for the word mark BAYER, including the United States trademark registration Nos. 1482868, registered on April 5, 1988, in International classes 1 and 5; 1484862, registered on April 19, 1988, in International class 1; 2213149, registered on December 22, 1998, in International classes 5 and 10; 3222255, registered on March 27, 2007, in International classes 1, 5 and 31; 4651390, registered on December 9, 2014, in International class 5; and 4860203, registered on November 24, 2015, in International classes 9, 10 and 37.

The Complainant is also the owner, amongst others, of the domain name <bayer.com>, registered on January 25, 1996.

The disputed domain names <bayercannabis.com>, <bayerhemp.com>, <bayerpot.com> and <bayerweed.com> were registered on November 8, 2016, while the disputed domain names <bayermarijuana.org> and <bayermarijuana.com> were registered on February 23, 2017.

At the time of the drafting of the Decision, the disputed domain names are pointed to web pages indicating that a website will be available soon. According to the screenshots submitted by the Complainant and not contested by the Respondent, the disputed domain name <bayermarijuana.com> was pointed in the past to a website substantially identical to the one currently available at “www.bayessentialremediesmarijuana.com”, promoting purported treatments involving the use of marijuana and essential oils and aromatherapy supplies offered for sale on a third-party website.

5. Parties’ Contentions

A. Complainant

The Complainant states that, due to the Complainant’s global online use of its BAYER mark, such mark is obviously and solely connected with the Complainant, and a search for “bayer” on the website “www.google.com” shows that nearly all of the search results refer to the Complainant or its subsidiaries.

The Complainant also highlights that, as a result of the exclusive and extensive use, the Complainant’s BAYER mark has acquired a significant goodwill and is well-known, as found in many previous decisions rendered according to the Policy.

The Complainant contends that the disputed domain names are confusingly similar to the registered and well-known trademark BAYER, since the addition of generic terms does not eliminate the similarity between the Complainant’s trademark and the disputed domain names.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names because:

i) The BAYER mark is well-known and obviously connected with the Complainant and its products; therefore, “Bayer” is not a word any market participant or other registrants would legitimately choose unless seeking to create an impression of an association with the Complainant;

ii) 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 incorporating the BAYER mark;

iii) There is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services;

iv) There is no evidence which suggests that the Respondent trades or is commonly known by the disputed domain names or the respective names that are incorporated in the disputed domain names.

The Complainant submits that the Respondent registered the disputed domain name in bad faith since, based on the Complainant’s high profile worldwide, it is inconceivable that the Respondent registered the disputed domain names being unaware of the Complainant and its rights in the highly distinctive and well-known BAYER mark. In addition, the combination of the words “bayer” and “marijuana” only refers to the Complainant, as evidenced by the search results from a corresponding search at “www.google.com” provided as Annex 10 to the Complaint. Therefore, the Complainant concludes that the registration of the disputed domain name deliberately targets the Complainant and was done in bad faith.

The Complainant also states that the fact that the disputed domain names are not actively used but are merely passively held does not prevent a finding of bad faith use under the Policy, since such passive holding of the disputed domain names is tantamount to active use for the following reasons:

i) The Complainant’s BAYER mark is well-known;

ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use; and

iii) 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 further points out that the Respondent’s registration of the disputed domain names prevents the Complainant from reflecting its trademark in corresponding domain names, and that the Respondent has engaged in a pattern of such conduct, as set out in paragraph 4(b)(ii) of the Policy.

In addition, the Complainant contends that the fact that the Respondent registered the disputed domain names which include a trademark that is obviously connected with the Complainant and its products also supports the finding of bad faith as the very use of such disputed domain names by someone with no connection with the products suggests opportunistic bad faith.

The Complainant also asserts that the Respondent’s use of the disputed domain names is qualified to disrupt the Complainant’s business, being capable of reducing the number of visitors to the Complainant’s website, and that the Respondent’s use of a privacy registration service suggests that the Respondent intended to hide his identity without any legitimate reason.

B. Respondent

The Respondent contends to be a small business man and to have registered the disputed domain name for use in connection with its “new up and coming business” based in Colorado, named “BayEssentialRemedyMarijuana” and consisting in the production of oils and sprays made from bay leaves and CBD marijuana oils. However, the Respondent states that it is not willing to exploit the disputed domain names commercially, as it is planning to use the disputed domain names to display, on the corresponding websites, only informative brochures on its essential oils, sprays and other products.

The Respondent also states that it “ha[s] registered and ha[s] been accepted by the state of Utah for these names as legitimate businesses”.

The Respondent asserts that it does not consider the Complainant to be a competitor since it does not operate in the pharmaceutical industry as shown on its website “www.bayessentialremediesmarijuana.com”.

Therefore, the Respondent denies having registered the disputed domain names in bad faith and states to be making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain or to misleadingly divert consumers or to tarnish the Complainant’s trademark.

C. Complainant’s Supplemental Filing

The Complainant’s Supplemental Filing is related only to the disputed domain name <bayermarjiuana.com>.

Besides recalling the arguments already raised in the Complaint filed in connection with the other disputed domain names and challenging some of the Respondent’s statements contained in the Response, the Complainant submits that the Respondent has used the disputed domain name <bayermarijuana.com> in bad faith as its use provides Internet users access to links to third-party websites, thus trying to gain commercial benefit.

The Complainant concludes that the Respondent’s use of the disputed domain name <bayermarijuana.com> to attract users for commercial gain by creating a likelihood of confusion with the BAYER mark amounts to bad faith under paragraph 4(b)(iv) of the Policy.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

A. Preliminary procedural issue

As mentioned in section 3, the Complaint was initially filed with regard to the disputed domain names <bayercannabis.com>, <bayerhemp.com>, <bayermarijuana.org>, <bayerpot.com> and <bayerweed.com> and, only after the notification of the Complaint and the filing of the Response, the Complainant sent an email to the Center submitting a “Supplemental Complaint” concerning <bayermarijuana.com> and requesting to add it to this proceeding.

Pursuant to paragraph 3(c) of the Rules and in accordance with paragraph 10(e) of the Rules, consolidation of multiple domain name disputes is appropriate where the disputed domain names are registered by the same domain-name holder, or there are indicia of common control of the disputed domain names, and if consolidation would be equitable and procedurally efficient. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.

With regard to the addition of domain names to a case following complaint notification, the WIPO Overview 3.0, section 4.12.2, states the following: “Requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced would be addressed by the panel on appointment. Except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent’s registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition). Moreover, a panel declining such request would not prevent the filing of a separate complaint where such additional domain names may be addressed. In those cases where panels would grant such a request, the complainant would need to hold relevant trademark rights and the proposed additional domain names would need to be prima facie registered by the same or related respondent. Moreover, in the event a panel would grant such a request, it may also order partial or full re-notification of the proceeding (which may impact case timelines)”.

In view of the circumstances of the case, the Panel decided to accept the Complainant’s request for addition of the disputed domain name <bayermarijuana.com> in this proceeding for the following reasons:

i) The Respondent disclosed in its Response to be operating the website “www.bayessentialremediesmarijuana.com”, whose contents are very similar to the ones displayed on the website to which the disputed domain name <bayermarijuana.com> resolved;

ii) The disputed domain name <bayermarijuana.com> was originally registered through a privacy service and, therefore, the Complainant could not have been aware, based on the public WhoIs records, that the Respondent had registered it;

iii) There appeared to be indicia of common control of the disputed domain names based on the use of <bayermarijuana.com> described above and the fact that the disputed domain name <bayermarijuana.com> was registered on the same day the Respondent registered the disputed domain name <bayermarijuana.org> and via the same Registrar;

iv) The Panel found that it would have been fair and practicable to consider the additional registration and that the addition would not have been prejudicial to the Respondent, subject to confirmation by the relevant Registrar that it was actually registered by the Respondent.

Therefore, upon the Registrar’s confirmation that the underlying registrant of <bayermarijuana.com> was actually the same individual identified as the Respondent in the initial Complaint, the Panel, exercising its powers, according to paragraphs 10 and 12 of the Rules, deemed appropriate to accept the Complainant’s request to include also this domain name in this proceeding, and invited the Respondent to submit possible further comments in reply to the Complainant’s arguments with respect to the disputed domain name <bayermarijuana.com>. As highlighted above, however, the Respondent did not file any supplemental submission.

B. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of several United States trademark registrations for the word mark BAYER.

The Panel notes that all the disputed domain names encompass the Complainant’s registered trademark in its entirety with the addition of dictionary words (“marijuana”, “pot”, “weed”, “hemp” and “cannabis”), which are not sufficient to exclude confusingly similarity.

Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.

The Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the records, there is no evidence of an authorization granted by the Complainant to the Respondent to use the trademark BAYER and/or to register and use the disputed domain names.

The Respondent asserted to have registered the disputed domain names for use in connection with its new up and coming business based in Colorado named “BayEssentialRemedyMarijuana”, focusing on the production of oils and sprays made from bay leaves and CBD marijuana oils. It also stated to have “registered and (…) been accepted by the state of Utah for these names as legitimate businesses”.

The Panel notes that the Respondent has not submitted any documents to substantiate its allegations and has merely cited its website under “www.bayessentialremediesmarijuana.com”, displaying the heading “Bay Essential Remedy Marijuana” and providing as contact details a PO box located in the State of Utah, without mentioning any additional information about the Respondent’s business and alleged registrations.

In view of the above, the Panel finds that there is no element from which the Panel could infer the Respondent’s rights over the disputed domain names, or that the Respondent might be commonly known by the disputed domain names or by a name corresponding to them.

Moreover, the Panel notes that the Respondent’s selected name “BayEssentialRemedyMarijuana” is not recognizable in the disputed domain names; to the contrary, the core of the disputed domain names is clearly constituted by the Complainant’s registered and well-known trademark BAYER. The Panel also finds that BAYER is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant.

Furthermore, despite the Respondent’s assertion that its purported use of the disputed domain names would be noncommercial, the Respondent’s intention to use the disputed domain names for commercial gain is clearly highlighted by the Respondent’s further indication that its use would be focused on the provision of information about its products and by the use of the disputed domain name <bayermarijuana.com> shown by the screenshots submitted by the Complainant, highlighting the pointing of the disputed domain name to a web page promoting essential oils sold on a third-party website.

In view of the above, based on the records before it, the Panel finds that the Respondent has not used the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

In view of the prior registration and use of the trademark BAYER by the Complainant and of the well-known character of the trademark recognized also in prior UDRP decisions (see, amongst others, Bayer AG v. Private Registration / Mark Nowak, WIPO Case No. D2017-1706,Bayer AG v. Ruud van der Linden, WIPO Case No. D2017-0328 and Bayer AG v. Wuxi Yilian LLC, WIPO Case No. D2017-0269), the Panel finds that the Respondent’s registration of the disputed domain names, confusingly similar to the Complainant’s prior trademark, does not amount to a mere coincidence and that, in all likelihood, the Respondent registered the disputed domain names with the Complainant’s trademark in mind.

As to the current use of the disputed domain names, they are passively held at the time of this Decision, as they resolve to mere landing pages. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, inter alia, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In the case at hand, in view of the Respondent’s registration of the disputed domain names that are confusingly similar to the Complainant’s well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain names, the Respondent’s use of a privacy service and the implausibility of any use of the disputed domain names which would not cause confusion with the Complainant and its trademark, the Panel finds that the Respondent’s lack of use of the disputed domain names also amounts to bad faith.

Moreover, the Panel also finds that, in view of the Respondent’s prior use of the disputed domain name <bayermarjuana.com> described above, to promote the sale of essential oils and treatments involving also the use of marijuana, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv).

Furthermore, the Panel finds that the Respondent has registered the disputed domain names to prevent the Complainant from reflecting its trademark in corresponding domain names and has engaged in a pattern of conduct according to paragraph 4(b)(ii), since it has registered six domain names confusingly similar to the Complainant’s well-known trademark.

In light of the above, the Panel finds that the Complainant has proven that the Respondent registered and is using the disputed domain names in bad faith.

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, <bayercannabis.com>, <bayerhemp.com>, <bayermarijuana.org>, <bayerpot.com>, <bayermarijuana.com> and <bayerweed.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: March 19, 2018