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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer Intellectual Property GmbH v. DOMAIN MAYBE FOR SALE c/o Dynadot

Case No. D2019-1381

1. The Parties

The Complainant is Bayer Intellectual Property GmbH, Germany, represented by BPM Legal, Germany.

The Respondent is DOMAIN MAYBE FOR SALE c/o Dynadot, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <ginecaneschat.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2019. On June 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2019, 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 June 20, 2019, 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 on June 25, 2019.

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 July 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2019.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 6, 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.

4. Factual Background

The Complainant is part of the Bayer group of companies that operates in the health care, nutrition, and plant protection businesses on five continents, manufacturing and selling, inter alia, pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals.

The Complainant is the owner of the following, amongst other, trademarks:

- European Union trade mark registration No. 018010662, for GINECANESHAT, filed on January 17, 2019, and registered on May 16, 2019, in classes 9, 16, 41, and 44 (Annex 4 to the Complaint);

- Spanish trademark registration No. M3072122, for GINECANESGEL, dated August 16, 2013, in classes 3 and 5.

The disputed domain name is <ginecaneschat.com> and was registered on January 17, 2019. The disputed domain name resolves to a parked webpage advertising it for sale for USD 3,850. The Respondent has already been named as a respondent in at least two past UDRP cases (Robertet SA v. Domain Maybe For Sale c/o Dynadot / Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2019-0426; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980).

5. Parties’ Contentions

A. Complainant

The Complainant claims to offer a series of products in Spain, all of which include the element “ginecanes”, namely “gine‑canesten”, “ginecanes‑balance”, “ginecanesflor” and “ginecanesgel”, as can be seen at the “www.ginecanes.es” website. The Complainant asserts to hold Spanish trademark registrations for such trademarks (Annex 7 to the Complaint) and to have decided to use the trademark GINECANESCHAT in connection with a free app, where women can communicate with gynecologists in real time.

According to the Complainant, the registration of the disputed domain name, made on January 17, 2019, the very same day in which it applied for the registration of the GINECANESCHAT before the European Union Intellectual Property Office (“EUIPO”), indicates that this was not a coincidence but a clear evidence that the registration of the disputed domain name targeted the Complainant’s trademark in an effort to subsequently sell it to the Complainant, what is further corroborated by the webpage that presently resolves from the disputed domain name, advertising it for sale for USD 3,850 (Annex 5 to the Complaint).

The Complainant thus contends that the disputed domain name fully incorporates the GINECANESCHAT trademark and is therefore identical to it.

Also according to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:

(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 GINECANESCHAT trademark;

(ii) there is no evidence that 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 or has been commonly known by the disputed domain name.

The Complainant contends that the registration of the disputed domain name was done clearly in bad faith given that the GINECANESCHAT trademark is a highly distinctive trademark solely connected with the Complainant and would not be an expression that a trader would legitimately choose unless seeking to create an undue association with the Complainant’s trademark. Furthermore, the Complainant contents that the Respondent was probably monitoring the EUIPO’s new filings website and registered the disputed domain name in an effort to subsequently sell it to the Complainant, being it well established that in certain situations, when the Respondent is clearly aware of the Complainant and that the aim of the registration is to take advantage of the confusion that bad faith can be found even though the registration of the trademark had not yet taken place, such as in the present case.

As to the use of the disputed domain name in bad faith, the Complainant states that the public offer for sale of the disputed domain name for the amount of USD 3,850 indicates the primary intention of selling it to the Complainant or to one of the Complainant’s competitors, and also is preventing the Complainant from reflecting its trademark in a corresponding domain name. Lastly, the Complainant argues that the Respondent engaged in a pattern of bad faith conduct, having been named in at least two past UDRP panels (Annex 8 to the Complaint) and appears to be the owner of other domain names which relate to or reproduce famous marks such as <sanodesk.com>, <giordanigoldessenza.com>, <dolcerini.com>, <blunkblume.com> <ard1plus.com>, <amazonunprocessedvirginhair.com>, <alfordandlynch.com> and <aldianaclubresorts.com> (Annex 9 to the Complaint).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

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

(ii) the 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.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.

A. Identical or Confusingly Similar

The Complainant has established rights in various trademarks encompassing the GINECANES expression (Annex 7 to the Complaint) as well as in the GINECANESCHAT trademark (Annex 4 to the Complaint), which is fully reproduced in the disputed domain name.

The Complainant’s GINECANESCHAT trademark registration was in existence at the time the Complainant was filed what, in accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.1.3 is sufficient for the panel’s finding of identity or confusing similarity under the first element.

The question of whether there is bad faith in the registration of the disputed domain name will be discussed in item C below.

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights or legitimate interests in a disputed domain name. These circumstances are:

(i) before any notice of the dispute, 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; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that it 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 GINECANESCHAT trademark.

In addition to that, the use being made of the disputed domain name, merely advertising it for sale for an amount in excess of the out-of-pocket costs for registering it does not characterize an 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.

Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.

Two other elements to be considered in this case are the indication that the Respondent has engaged in a pattern or registering domain names that relate to third parties and is also advertising them for sale, as can be seen in the webpages that resolve from the domain names <sanodesk.com>, <giordanigoldessenza.com>, <dolcerini.com>, <blunkblume.com>, <ard1plus.com>, <amazonunprocessedvirginhair.com>, <alfordandlynch.com> and <aldianaclubresorts.com> which this Panel has visited on August 16, 2019. Such use does not characterize bona fide offering of goods or services under the Policy.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring them to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the complainant; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The registration and use of the disputed domain name can be found in the present case in view of the following circumstances:

(i) the Complainant holds a family of trademarks that incorporate the GINECANES expression (Annex 7 to the Complaint), selling the respective products “gine‑canesten”, “ginecanes‑balance”, “ginecanesflor” and “ginecanesgel”, as can be seen at the “www.ginecanes.es” website, being it hard to conceive that the registration of the disputed domain name at the same date in which the Complainant applied for the GINECANESCHAT trademark was a mere coincidence, rather than a clear targeting of the Complainant;

(ii) the Respondent is offering the disputed domain name for sale for the amount of USD 3,850,00 which is clearly an amount in excess of out-of-pocket costs incurred in the registration of the disputed domain name;

(iii) the Respondent appears to have engaged in a pattern of bad faith conduct, having registered other domain names which relate to or reproduce famous marks such as <sanodesk.com>, <giordanigoldessenza.com>, <dolcerini.com>, <blunkblume.com>, <ard1plus.com>, <amazonunprocessedvirginhair.com>, <alfordandlynch.com> and <aldianaclubresorts.com>, which it is also offering for sale, in addition to having been found in bad faith in at least two past UDRP decisions (Annex 8 to the Complaint); and,

(iv) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name.

For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name.

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 <ginecaneschat.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: August 16, 2019

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