WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayer AG v. Tan Sheng

Case No. D2020-0270

1. The Parties

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

The Respondent is Tan Sheng, China.

2. The Domain Name and Registrar

The disputed domain name <bayertt.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2020. On February 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differ from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2020, 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 February 16, 2020.

On February 14, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 16, 2020. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on February 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2020.

The Center appointed Joseph Simone as the sole panelist in this matter on April 2, 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

The Complainant, Bayer AG, is a global enterprise with its core operations in the fields of healthcare, nutrition and plant protection. It is headquartered in Germany and is 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’s predecessor company began manufacturing and marketing pharmaceutical products in 1888 and has been selling products under the BAYER trademark ever since.

The Complainant is represented by over 250 affiliates and has more than 100,000 employees worldwide. The Complainant, both directly and through subsidiaries, manufactures and sells products globally, including human pharmaceutical and medical care products, veterinary products, diagnostic products, and agricultural chemicals.

In China, where the Respondent is located, the Complainant conducts business through its local subsidiary BAYER Corporation under the name “Bayer (China) Limited” and operates a website at “www.bayer.com.cn”.

The Complainant is the owner of approximately 700 trademark registrations and pending applications for the word mark BAYER, including the following International Registrations, which are extended to China.

The Complainant and its subsidiaries also own hundreds of domain name registrations containing the BAYER mark, including <bayer.com> and <bayer.com.cn>.

The disputed domain name <bayertt.com> was registered on November 14, 2019. It does not currently resolve to an active website, but the Complainant provided evidence that the disputed domain name previously redirected to the website “www.zilongav.com” which featured pornographic content.

5. Parties’ Contentions

A. Complainant

The Complainant’s main arguments are as follows:

1. The disputed domain name is identical or confusingly similar to its trademark BAYER.

The disputed domain name consists of the Complainant’s well-known mark BAYER and additional letters “tt”, which is the ISO-366 Alpha-2 country code and the country code Top-Level Domain (“ccTLD”) of Trinidad and Tobago. The descriptive element “tt” does not preclude a finding of confusing similarity under the first element.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The BAYER marks are well known and obviously connected with the Complainant and its products. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or apply for domain names containing the BAYER mark. This establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, after which the burden of proof shifts to the Respondent.

The Respondent had used the disputed domain name to direct Internet users to a website featuring pornographic content and providing links to third parties’ websites, thereby capitalizing on the Complainant’s trademark. This neither constitutes use of the disputed domain name in connection with a bona fide offering of goods or services, nor legitimate noncommercial or fair use within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy, respectively.

3. The disputed domain name was registered and is being used in bad faith.

Given 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 mark.

The Respondent’s use of the disputed domain name to redirect Internet users to pornographic content constitutes bad faith use, as it exploits the reputation of the Complainant’s mark to divert traffic to a
third-party site, from which it likely generated profit. The continued existence of the disputed domain name disrupts the Complainant’s business and constitutes an abusive threat to the Complainant and its business.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

In accordance with paragraph 11 of the Rules:

“[…] 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.”

Therefore, the default language of the proceeding shall be Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding. The Complainant submits that the Respondent registered the disputed domain name in ASCII characters, and is therefore likely able to speak English. Given that the Complainant cannot communicate in Chinese, requiring the Complainant to submit documents in Chinese would cause undue delay and additional expense.

The Panel cannot conclude with certainty that the Respondent sufficiently understands English or the Complaint. However, the Respondent was notified of each step of the proceedings in both Chinese and English and did not respond regarding the choice of language. Nor did the Respondent submit a formal response, which suggests its lack of interest in the proceedings. Therefore, taking into account all relevant circumstances, there is no strong reason to require the Complainant to re-submit the Complaint in Chinese.

Accordingly, the Panel has decided to conduct the proceeding in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant has demonstrated that it owns trademark registrations for BAYER, and therefore, it possesses rights to the mark.

The disputed domain name is composed of the Complainant’s trademark at the front, followed by the letters “tt”. Where the trademark is recognizable in the disputed domain name, it is well established that the addition of descriptive, generic or meaningless terms does not prevent a finding of confusing similarity (see e.g., Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).

Paragraph 4(c) sets out a non-exhaustive list of circumstances, which are sufficient to demonstrate rights or legitimate interests. In brief, they include (1) use of the domain name in connection with a bona fide offering of goods or services, (2) use of the domain name which is legitimate or noncommercial, without intent to mislead consumers or tarnish the trademark at issue, and (3) where the respondent is commonly known by the domain name.

The Complainant submits that it has never authorized the Respondent to use its trademark or register the disputed domain name. There is also no evidence that the Respondent is commonly known by the disputed domain name.

According to the Complainant’s evidence, the Respondent used the disputed domain name to redirect Internet users to a pornographic website, from which it presumably earned revenue. There is no apparent reason for the inclusion of the term “bayer” in the disputed domain name other than to ride on the reputation of the Complainant. In any case, it would be difficult to demonstrate any use of the term “bayer” that would be legitimate, given the term’s global renown as the Complainant’s trademark.

The Respondent has not presented any evidence to the contrary.

Accordingly, none of the circumstances set out in paragraph 4(c) of the Policy are established and the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under the final element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

A strong inference for bad faith arises where the Respondent knew or should have known of the Complainant’s trademark rights, particularly where the trademark is “so obviously connected with such a well-known name and products” (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

The Complainant is one of the largest pharmaceutical companies in the world, and the trademark BAYER is its house mark. As demonstrated by online searches, and affirmed by previous UDRP cases, the trademark BAYER is well known globally, including in China. Therefore, it is highly unlikely that the Respondent was unaware of the Complainant’s trademark and its rights when it registered the disputed domain name. The Panel concludes that the Respondent deliberately targeted the Complainant in bad faith.

The Respondent used the disputed domain name to redirect Internet users to a pornographic website, presumably for commercial gain. It is likely that consumers will assume – at least initially – that the disputed domain name is affiliated with the Complainant. By the time that consumers arrive at the destination website, the Respondent’s purpose of diverting consumers is fulfilled.

This constitutes evidence of a respondent’s registration and use of a domain name in bad faith as specified in paragraph 4(b)(iv) of the Policy:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

Whether the Respondent actually profits from the dispute domain name is irrelevant and the mere intention to do so constitutes bad faith.

Furthermore, even if the disputed domain name does not now resolve to an active website, in the absence of any conceivable good faith use, the continued existence of the disputed domain name represents an ongoing menace to the Complainant.

Therefore, the Panel concludes that the disputed domain name was registered and is used 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 name <bayertt.com> be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: April 16, 2020