The Complainant is Bayer AG of Leverkusen, Germany, represented by BPM Legal, Germany.
The Respondent is JInsoo Yoon of Daegu, Republic of Korea, self-represented.
The disputed domain name <gerbayer.com> is registered with NameBright.com Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018. On November 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2018, 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, and confirming that English is the language of the registration agreement used to register the disputed domain name.
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 November 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2018. The Center received an informal email communication from the Respondent on December 20, 2018.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 7, 2019. 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.
The following factual information is derived from the Complaint and supporting materials submitted by the Complainant:
The Complainant is a global enterprise with core competencies in the fields of healthcare, nutrition and plant protection. Global headquarters are in Leverkusen, Germany. 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 Complainant is regularly listed as one of the world’s leading companies in various categories.
The Complainant is the owner of about 700 registrations and pending applications of the word mark BAYER alone, including registrations in the Republic of Korea, where the Respondent is located. The Complainant’s registrations cover an extensive range of goods and services. The Complainant and its subsidiaries own hundreds of domain name registrations containing the BAYER Mark, including <bayer.com> and <bayer.co.kr>.
The Respondent is known for registering infringing domain names. Previously, he has been involved in three UDRP proceedings as a respondent.
The disputed domain name <gerbayer.com> was registered on September 15, 2018, and resolves to a website offering the disputed domain name for sale.
The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because i) 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 Marks; ii) there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; iii) there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “gerbayer”.
Lastly, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because i) based on the Complainant’s high profile worldwide, it is inconceivable that the Respondent registered the disputed domain name being unaware of the Complainant and its rights in its highly distinctive and well-known BAYER Marks; ii) the Respondent registered the disputed domain name primarily for the purpose of selling it as set out under paragarph 4(b)(i) of the Policy; iii) the registration of the disputed domain name by the Respondent constitutes an abusive threat hanging over the head of the Complainant; and iv) the Respondent’s registration of the disputed domain name clearly prevents the Complainant from reflecting its trademarks in a corresponding domain name and the Respondent has engaged in a pattern of such conduct, as set out in paragraph 4(b)(ii) of the Policy.
The Respondent did not reply to the Complainant’s contentions, however, after the due date for response the Respondent sent an email communication to the Center requesting Korean as the language of the proceeding.
The Respondent neither replied to the Complaint nor responded to the Center’s communication before the due date for Response on December 19, 2018, and the Center found the Respondent in default. The consensus view of UDRP panels in case of default is that “the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP”. Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942. The Respondent sent an email communication on December 20, 2018, demanding that Korean be the language of the proceeding as it is the choice of the Respondent, however, it did not substantively respond to the Complaint.
Paragraph 14 of the Rules provides in the event of default that a panel may draw such inferences therefrom as it considers appropriate. Paragraph 15(a) of the Rules instructs that “[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 or principles of law that it deems applicable”. “Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts.” Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; see also Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004.
The Registrar confirmed that English was the language of the registration agreement. The Respondent has requested that Korean be the language of the proceeding. Paragraph 11 of the Rules provides that unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the registration agreement subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Panel notes that the website at the disputed domain name is in English. In these circumstances the Panel determines that English will be the language of the proceeding.
The disputed domain name incorporates the Complainant’s trademark BAYER in its entirety. In cases where a domain name incorporates the entirety of a trademark, it is the view of UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0); see also, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, “When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy.” Moreover, the generic Top-Level Domain, such as “.com”, is normally disregarded during the first element confusing similarity test. See section 1.11 of WIPO Overview 3.0. Therefore, the confusing similarity is given where a trademark is recognizable as such within the domain name.
In this case, in the disputed domain name, “ger” is attached to the Complainant’s trademark BAYER. However, given that the term “ger” is the IOC country code for Germany and it is descriptive, it does not eliminate the similarity between the Complainant’s trademark and the disputed domain name. It is highly likely that the Internet user will clearly recognize the BAYER marks and come to the conclusion that the Respondent’s website is connected with the Complainant. See section 1.8 of WIPO Overview 3.0; see also, “the mere addition of the descriptive terms to the Complainant's EASTPAK registered trademark does not eliminate the confusing similarity between the Complainant's registered trademark EASTPAK and the disputed domain names” JanSport Apparel Corp v. Feng Qi, WIPO Case No. D2017-1486.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
Section 2.1 of WIPO Overview 3.0 provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
After reviewing the assertions made in the Complaint and the supporting materials thereto, it appears that the Complainant never gave the right to use its trademark to the Respondent. 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 Marks. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates the Complainant’s mark. F. Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246.
Furthermore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name other than using it for offering the disputed domain name for sale. The Panel agrees that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is there evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “gerbayer”.
Thus, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
By failing to respond to the Complainant’s position, the Respondent failed to prove any of the circumstances provided in paragraph 4(c) of the Policy.
In light of the above analysis, along with the inferences available to be made in case of the absence of a timely response by the Respondent, the Panel finds that the Respondent lacks any rights or legitimate interests in the disputed domain name.
Paragraph 4(b)(i) of the Policy provides that bad faith is found when there are circumstances indicating that the respondent has registered or acquired a 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 for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. The disputed domain name is currently used to forward Internet users to the following website at “bgroup.com/?domain=gerbayer.com”, informing Internet users that the disputed domain name is for sale. In the absence of any meaningful response to the Complaint, it is most plausible that the Respondent registered the disputed domain name primarily for the purpose of selling as set out in paragraph 4(b)(i) of the Policy.
As one of the criteria which indicates bad faith, paragraph 4(b)(ii) of the Policy provides that “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.” It appears that the Respondent engaged in a pattern of such conduct since it has been involved in three previous UDRP proceedings with regards to its service alerting Internet users about the disputed domain names for sale, two of which resulted in the transfer of the disputed domain name to the respective complainants.
The Panel agrees that the registration of the disputed domain name by the Respondent also constitutes an abusive threat hanging over the head of the Complainant, which also supports a finding of bad faith. See Digital Platform Iletisim Hizmetler A.S. v. Digiturk Co., WIPO Case No. D2008-0111, “[…] it is fair to assume that the Respondent’s intentions are predatory and represent an unfair, abusive threat hanging over the head of the Complainant.”.
Moreover, the Complainant’s assertion that the Respondent registered the disputed domain name, which includes a trademark that is obviously connected with the Complainant and its products, supports the finding of bad faith as the very use of such domain name by someone with no connection with the products suggests opportunistic bad faith is accepted. See General Motors LLC v. desgate, WIPO Case No. D2012-0451, “As to bad faith use, the Panel finds that the Respondent acted in opportunistic bad faith when registering the disputed domain name, as the disputed domain name is so obviously connected with the Complainant and its products that already its very use by the Respondent, which has no connection with the Complainant, clearly suggests the disputed domain name has been selected with a deliberate intent to create an impression of an association with the Complainant.”.
Thus, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
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 <gerbayer.com> be transferred to the Complainant.
Thomas P. Pinansky
Sole Panelist
Date: January 21, 2019