ADR Center for .eu attached to the Arbitration Court attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic (Czech Arbitration Court)

Panel Decision

§ B12 of the .eu Dispute Resolution Rules (ADR Rules)

Case No.: 06110
Time of Filing: 2011-09-02 09:56:13
Administrative Contact: Tereza Bartošková
 
Complainant
Name: Bayer AG
 
Complainant's Authorized Representative
Name: Siebeke Lange Wilbert, Micaela Schork, LL.M.
 
Respondent
Name: Domains Solutions Corporation
 
Respondent's Authorized Representative
Name:
 
Domain Name(s): BAYERHEALTHCARE
 
Other Legal Proceedings
Not applicable
 
English summary of the decision: English summary of this Decision is hereby attached as Annex 1
 
Factual Background
The Complainant is a globally well-known pharmaceutical company with core competencies in the fields of health care, nutrition and high-tech materials. It has its principal seat of business in Germany.


Each of Complainant´s subgroups is available in the Internet under the domain name consisting of its trade name. Each country-related site is configured in the respective national language, establishing a close relationship between the company and the respective country.

The subgroup Bayer HealthCare operates the business in the Internet under all
important gTLD and several ccTLD, such as
- “bayerhealthcare.com”,
- “bayerhealthcare.net”,
- “bayerhealthcare.biz”,
- “bayerhealthcare.org”,
- “bayerhealthcare.de”,
- “bayerhealthcare.fr”,
- “bayerhealthcare.es”,
- “bayerhealthcare.it”,
- “bayerhealthcare.nl”,
all domain names registered between 2001 and 2007.

The Complainant does not appear to have registered the name bayerhealthcare.eu but on March 1, 2011 the Complainant was contacted by e-mail of Mr. Jack Sun, indicating that
“We have bayerhealthcare.eu and found that the domain is pretty useful for you.
We can really consider selling it out if you are interested in it. Please get back to
us with your kind offer.”

On June 15, 2011, the Complainant responded to Mr. Sun that the Complainant is holder of registered and unregistered rights to the name “Bayer” and that the disputed domain name would interfere with Complainant´s rights, wherefore the Complainant would not consider buying the domain name but initiate legal actions. At the same time, the Complainant offered to settle the matter amicably by transferring the domain name to the Complainant. In this case Complainant would refrain from legal action. A term was set for the Respondent to react upon the suggestion.

On June 20, Mr. Sun responded that they would transfer the domain name for € 2000,00 and the transfer would take place via the escrow services provided by Sedo.

Whereupon the exchanges between the Complainant and Respondent appear to have ceased and the case referred to this Panel.
 
Parties’ Contentions
  1. Complainant
    The Complainant sets out its case extensively on a number of counts maintaining that:
    

    a. The Complainant is owner of over 1000 trademark and service mark registrations and pending applications for registration of the BAYER trademark worldwide. This includes word marks as well as word/device marks, such as the famous “Bayer cross” (below cited as “Bayer Bayer”), which shows the word “BAYER” placed both horizontally and vertically in form of a cross, each sharing the letter “Y”. The Bayer cross became operational on February 20, 1933 and has since then been in intensive and uninterrupted use. It is e.g. placed on the right hand side of Complainant´s website.

    Aforementioned trademarks are registered in all member states of the European
    Union, either in form of national marks, e.g. in Germany, France, Italy and in all eastern European countries, such as e.g. in Bulgaria, Estonia, the Czech Republic, Hungary, Latvia etc., or in form of International Registrations, the latter designating the majority of the member states of the European Union, and each existing of or containing the component “Bayer”, such as:
    - DE - 44115 “Bayer”, filed on April 6, 1900, registered on June 2, 1900 for classes
    2 and 5;
    - DE - 208820 “Bayer.”, filed on January 17, 1916, registered on February 26,
    1916 for classes 1-5, 9, 10;
    - DE - 404341 “BAYER BAYER”, filed on March 21, 1929, registered on June 17,
    1929 for classes 1 and 5;
    - DE - 519048 “BAYER BAYER”, filed on April 28, 1939, registered on February 2,
    1940 for classes 2, 3, 5, 9, 10, 31;
    - DE - 521329 “BAYER BAYER”, filed on August 11, 1939, registered on May 21,
    1940 for classes 1 - 3, 5, 6, 9, 10, 17, 19, 31;
    - DE - 657189 “BAYER BAYER”, filed on February 1, 1952, registered on May 5,
    1954 for classes 1, 3 -34;
    - DE - 662251 “Bayer”, filed on July 25, 1953, registered on September 6, 1954
    for classes 1-28, 30-32, 34;
    - DE - DD620123 “BAYER BAYER”, filed on September 24, 1956, registered on
    April 2, 1957 for classes 1-34;
    - DE - 1018899 “BAYER BAYER”, filed on July 19, 1979, registered on June 9,
    1981 for class 41;
    - DE - 1026407 “BAYER”, filed on July 19, 1979, registered on December 7, 1981
    for classes 9 and 41;
    - DE - 39938272 “BAYER”, filed on July 1, 1999, registered on August 2, 1999 for
    classes 36 and 44;
    - DE - 39938273 “BAYER BAYER”, filed on July 1. 1999, registered on February
    8, 2000 for classes 36 and 44;
    - DE - 30172789 “BAYER”, filed on December 20, 2001, registered on February
    25, 2002 for classes 35, 36, 37;
    - DE – 302 41 977 “BAYER”, filed on August 21, 2002, registered on December
    05, 2002 for classes 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45;
    - DE - 30744006 “BAYER BAYER”, filed on July 5, 2007, registered on August 30,
    2007 for classes 1, 5, 31;
    - DE – 302010068022 “BAYER”, filed on November 16, 2010, registered on
    December 20, 2010, for classes 6, 9, 12;
    - IR – 320359 “BAYER”, filed on December 12, 1926, registered on September 12,
    1966 for classes 2, 5;
    - IR - 182970 “Bayer”, registered on February, 25, 1955 for classes 1 to 34;
    - BG – 241 “BAYER”, filed on September 26, 1935, registered on July 17, 1953 for
    classes 2, 5;
    - BG – 242 “BAYER”, filed on July 17, 1953, registered on July 20, 1953 for
    classes 1, 2, 5, 16;class 3;
    - CY - 9515 “BAYER”, filed on October 13, 1965, registered on October 31, 1965
    for class 5;
    - DK – 918/35 “BAYER”, filed on September 21, 1935, registered on October 05,
    1935 for classes 2, 5;
    - DK – 11208/66 “BAYER”, filed on March 15, 1965, registered on April 30, 1966
    for classes 1, 2, 3, 4, 5, 17, 21, 22, 23, 24, 25, 27;
    - EE – 12095 “BAYER”, filed on March 05, 1993, registered on August 09, 1994
    for classes 1, 2, 3, 4, 5, 17, 21, 22, 24, 25, 27;
    - FI – 15028 “BAYER”, filed on September 24, 1935, registered on November 01,
    1935 for class 5;
    - FI – 47460 “BAYER”, filed on March 9, 1965, registered on June 06, 1966 for
    classes 1, 2, 3, 4, 5, 17, 21, 22, 23, 24, 25, 27;
    - GR – 10188 “BAYER”, filed on September 24, 1935, registered on November 06,
    1935 for classes 2, 5;
    - GR – 33111 “BAYER”, filed on March 09, 1965, registered on February 17, 1966
    for classes 1, 2, 3, 4, 5, 17, 21, 22, 23, 24, 25, 27;
    - IE – 81171 “BAYER”, filed on October 14, 1968, registered on October 14, 1968
    for classes 1, 2, 3, 17, 22, 23;
    - IE – 81177 “BAYER”, filed on December 12, 1974, registered on December 12,
    1974 for class 5;
    - LV – M 12 227 “BAYER”, filed on December 30, 1992, registered on January 17,
    1994 for classes 1, 2, 3, 4, 5, 17, 21, 22, 23, 24, 25, 27;
    - LT – 10569 “BAYER”, filed on June 23, 1993, registered on April 19, 1994 for
    classes 1, 2, 3, 4, 5, 17, 21, 22, 23, 24, 25, 27;
    - MT – 8632 “BAYER”, filed on May 09, 1966, registered on May 09, 1966 for class
    5;
    - PL – R-40432 “BAYER”, filed on January 18, 1958, registered on April 25, 1958
    for classes 1, 2, 3, 4, 5, 9, 10, 12, 17, 18, 19, 20, 22, 23, 24, 25, 26, 27, 28;
    - ES – 38278 “BAYER”, filed on April 06, 1920, registered on October 21, 1921 for
    classes 1, 5;
    - ES – 107544/6 “BAYER”, filed on April 06, 1920, registered on February 05,
    1936 for classes 1, 5;
    - ES – 302036-3 “BAYER”, filed on January 1, 1956 for classes 2, 19;
    - ES – 302034/7 “BAYER”, registered on January 07, 1956, registered on May 07,
    1957 for classes 3, 4;
    - ES – 302033-9 “BAYER”, registered on January 07, 1956 for classes 1, 5, 18,
    29, 30
    - ES – 3020374-1 “BAYER”, filed on January 07, 1956, registered on January 07,
    1956 for class 2;
    - ES – 302044/4 “BAYER”, filed on January 07, 1956, registered on January 25,
    1969 for classes 5, 10;
    - ES – 302045/2 “BAYER”, filed on January 07, 1956, registered on October 17,
    1962 for classes 2, 17, 19;
    ES – 302035/5 “BAYER”, filed on January 07, 1956, registered on May 07, 1957
    for class 3;
    - ES – 302039 “BAYER”, filed on January 07, 1956, registered on March 21, 1960
    for classes 1, 3, 18;
    - ES – 343203 “BAYER”, registered on April 29, 1959 for classes 1, 6;
    - ES – 343279 “BAYER”, registered May 05, 1959 for class 19;
    - ES – 343287 “BAYER”, registered on May 05, 1959 for class 10;
    - ES – 343265 “BAYER”, registered on May 12, 1959 for class 19;
    - ES – 343193 “BAYER”, registered on May 18, 1959 for class 31;
    - ES – 343220 “BAYER”, registered on May 18, 1959 for class 4;
    - ES – 343256 “BAYER”, registered on June 02, 1959 for class 9;
    - ES – 362226 “BAYER”, filed on March 12, 1960, registered on March 29, 1972
    for classes 29, 30, 31;
    - SE – 45576 “BAYER”, filed on September 21, 1935, registered on April 12, 1957,
    for class 5;
    - SE – 69831 “BAYER”, filed on July 06, 1949, registered on April 27, 1951 for
    classes 2, 5;
    - SE – 116982 “BAYER”, filed on March 09, 1965, registered on July 15, 1966 for
    classes 1, 2, 5, 22, 23;
    - UK – 1005868 “BAYER”, filed on February 02, 1973, registered on February 02,
    1973 for classes 1, 2, 3, 4, 5, 17, 21, 22, 23, 28.

    The trademarks cover an extensive range of goods and services in the fields of
    health care, nutrition and high-tech materials, including pharmaceutical preparations, chemicals, waste water treatment chemicals for industrial use, pigments, synthetic and artificial resins, coatings, plastics, greases, lubricants, rubber, synthetic rubber and rubber chemicals for use in the automotive, tire, adhesives, fibres, yarns, threads, agricultural chemicals, pesticides, insecticides, fungicides, herbicides and cleaning materials industry.

    All listed trademarks were filed and registered before Respondent registered the
    disputed domain name on September 26, 2010 (further information on disputed
    domain name and Respondent below).
    b. Further more, the designation “Bayer” is used as a trademark as well as a
    business identifier worldwide since almost 150 years.
    Already between 1881 and 1913, Complainant developed into a chemical
    company with European- and international operations under the trade name
    “Bayer”
    - BG – 4493 “BAYER”, filed on August 05, 1965, registered on July 25, 1993 for
    classes 1, 2, 4, 5, 17, 21 ,22, 23, 24, 25, 27, 28;
    - CY – 752 “BAYER”, filed on March 30, 1927, registered on July 23, 1927

    Since then, the name “BAYER” has been used - and still is in use – in Germany
    and the European Union as a trademark. This high recognition on the international level has already been confirmed in the course of previous UDRP-proceedings by several Panels outlining that the Complainant’s trademarks are well-known and have an outstanding reputation. The Complainant then cites several such cases. It then goes on to outline further the legal basis for its claims including one where the Administrative Panel emphasized that it
    “has not doubt that the BAYER trademark is connected with the Complainant and
    has reached a well-known status worldwide”,
    (see: Bayer AG v. WebContents, Inc., WIPO Case No. D2009-0484).

    The subgroup “Bayer HealthCare” was incorporated in October 2003 in the course of reorganization of Complainant´s group and is organised as a stock company as outlined in the historical abridgement on Complainant´s website provided as Annex 11. The subgroup was – and still is - recorded in the commercial register of the Local Court of Cologne, the company´s active status being confirmed by Notarial Certificate issued as Annex 12.

    The name “Bayer HealthCare AG” is protected as a company name due to Section 5 Trademark Act in Germany, but also internationally as a trade name based on Article 8 of the Paris Convention for the Protection of Industrial Property of 20 March 1883, last revised at Stockholm on 14 July 1967 (United Nations Treaty Series, Vol. 828, No 11847, p. 108).


    Article 21(1) of Regulation (EC) 874/2004 stipulates that a registered domain name may be subject to revocation where that name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law, such as the rights mentioned in Article 10(1) of Regulation 874/2004, and where it:
    (a) has been registered by its holder without rights or legitimate interest in the
    name; or
    (b) has been registered or is being used in bad faith.
    1. The disputed domain name is identical – at least confusingly similar – to
    trademarks in which the Complainant has rights
    (Art. 21 Para. 1 Regulation (EC) 874/2004)
    a. Prior rights (Para. B 1 (b) (9) ADR-Rules)
    As demonstrated and listed above, the Complainant has numerous prior registered national trademarks and International Registrations as well as an unregistered right in the name “Bayer”, the latter being protected under national law in Germany as an unregistered trademark, trade name, business identifier and the company name. The latter is also registered with the commercial registry. Further more, Complainant´s subgroup´s business in the field of pharmaceuticals, consumer, medical care and animal health products under the name “Bayer HealthCare” has evolved into a recognized business identifier and company name protected under German law, the latter also being registered with the commercial registry. These rights are established under German law and therefore recognized to be claimed as prior rights in the sense of Article 10 Regulation (EC) 874/2004.
    b. Identity between domain name and prior rights
    (Para. B 1 (b) (10) (i) A. ADR-Rules)
    The disputed domain name “bayerhealthcare.eu” is highly similar with the prior rights for “Bayer” and even identical with Complainant´s business unit under the name “Bayer HealthCare”. The top level domain <eu> must be left out of the comparison, as this part is technically required.
    (1) The domain name is highly similar with Complainant´s numerous registered and highly well-known trademarks as well as company and trade name “Bayer”.
    The domain name´s first and distinctive element – “bayer” is identical with Complainant´s rights for “Bayer”. The further word elements -“Health Care” - can be identified as a descriptive addition to the sole distinctive component “Bayer”. By simply adding these descriptive terms to the distinctive and famous trademark
    “Bayer”, the domain name is to be considered as confusingly similar (see: Metro-
    Goldwyn-Mayer Studios Inc. v. Parrothouse, Ware, P, CAC Case No. 05757). This
    does particularly apply when the generic term appended to the well-known trademark obviously refers to a business unit of the Complainant, here its subgroup “Bayer HealthCare” (see: Bayer Aktiengesellschaft v. TMP, WIPO Case No. D2002-0132).
    In combination with Complainant´s trademark and trade name “Bayer”, the internet user will – when accessing the website corresponding to the disputed domain name – expect and assume to find information, products and services related to and provided by the Complainant. Instead the user is confronted with a sale offer regarding the domain name. Whether or not the Consumer, finding no content appearing at the site about the Complainant, conducts a WHOIS search to clarify the ownership and to find that the Respondent owns the domain name, it will lead the consumer to erroneously conclude that the Complainant is in some way affiliated with the Respondent. Thus, the Respondent will be able to tarnish the BAYER mark and cause confusion. As long as the Respondent owns the disputed domain name, the Complainant will be injured and it will be beyond its control to prevent such use of the domain name.

    (2) For the rest, the disputed domain name “bayerhealthcare” is obviously
    identical with Complainant´s business unit under the company and trade name
    “Bayer HealthCare” and with the numerous “bayerhealthcare”-domain names
    held by the Complainant.

    2. The Respondent has no rights or legitimate interests in respect of the domain
    name (Art. 21 (1) (a) Regulation (EC) 874/2004; Para. B 1 (b) (10) (i) B.
    ADR-Rules)
  2. Respondent
    The respondent did not file a response to the complaint
 
Discussion and Findings
The Panel accepts the evidence cited above as presented by the Complainant establishing a strong link between its established rights and those of the disputed domain name. It specifically accepts that, insofar as a. Prior rights (Para. B 1 (b) (9) ADR-Rules) the Complainant has numerous prior registered national trademarks and International Registrations as well as an unregistered right in the name “Bayer”, the latter being protected under national law in Germany as an unregistered trademark, trade name, business identifier and the company name. Moreover, it is undisputable that Complainant´s subgroup´s business in the field of pharmaceuticals, consumer, medical care and animal health products under the name “Bayer HealthCare” has evolved into a recognized business identifier and company name protected under German law, the latter also being registered with the commercial registry. These rights are established under German law and therefore recognized and can therefore be claimed as prior rights in the sense of Article 10 Regulation (EC) 874/2004.


Furthermore, insofar as Identity between domain name and prior rights (Para. B 1 (b) (10) (i) A. ADR-Rules) is concerned the disputed domain name “bayerhealthcare” is obviously identical with Complainant´s business unit under the company and trade name “Bayer HealthCare” and with the numerous “bayerhealthcare”-domain names held by the Complainant.


The Panel was not presented with any evidence that the Respondent has any rights or legitimate interests in respect of the domain name (Art. 21 (1) (a) Regulation (EC) 874/2004; Para. B 1 (b) (10) (i) B. ADR-Rules)

Furthermore, the Complainant's allegation that the domain name has been registered in bad faith (Art. 21 (1) (b) (3) Regulation (EC) 874/2004; Para. B 1 (b) (10) (i) C. ADR-Rules) would appear to be prima facie credible.

Amongst the evidence presented to the Panel by the Complainant also alleged that "According to the data provided by EURid´s WHOIS database, the excerpt of
which is enclosed as Annex 15, the Respondent has registered the domain name
“bayerhealthcare.eu” on September 26, 2010.
When opening the website http://bayerhealthcare.eu on March 7, 2011,
sponsored links appeared as demonstrated on the internet excerpt provided in
Annex 16.
These sponsored links do not appear, when entering the website again today. Instead, the website only displays the information that “This page provided to the domain owner free by Sedo's Domain Parking”, as demonstrated on the screenshot of the website - Annex 17. The latter is usually of interest for domain holders that do not use their websites for their own products or services, but are interested to nevertheless use it in order to achieve some commercial gain."

In addition to the evidence above, the Panelist checked current status of bayerhealthcare.eu for two weeks during December 2011 and at date of decision and confirmed that it remains for sale through Sedo as alleged by the Complainant. Thus it appears that the domain name has in point of fact been registered primarily for the purpose of selling and transferring the domain name to the Complainant as holder of rights that are recognized and established under national law, in the sense of Art. 21(3)(a) Regulation (EC) 874/2004 as proven by the correspondence cited in the factual background above.
 
Decision
For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that


the Complaint is accepted

the domain name BAYERHEALTHCARE.eu be transferred to the Complainant
 
Panelists
  • Professor Joseph André Cannataci, LLD FBCS CITP
Date: 2011-12-27
Annex 1
The Complainant successfully established that it had  prior rights (Para. B 1 (b) (9) ADR-Rules) through numerous prior registered national trademarks and International Registrations. Furthermore, insofar as Identity between domain name and prior rights (Para. B 1 (b) (10) (i) A. ADR-Rules) is concerned, the disputed domain name “bayerhealthcare” is obviously identical with Complainant´s business unit under the company and trade name “Bayer HealthCare” and with the numerous “bayerhealthcare”-domain names held by the Complainant. 


The Panel was not presented with any evidence that the Respondent has any rights or legitimate interests in respect of the domain name (Art. 21 (1) (a) Regulation (EC) 874/2004; Para. B 1 (b) (10) (i) B. ADR-Rules).

Moreover, the Complainant's allegation that the domain name has been registered in bad faith (Art. 21 (1) (b) (3) Regulation (EC) 874/2004; Para. B 1 (b) (10) (i) C. ADR-Rules) would appear to be prima facie credible.

The Respondent did not file any response to rebut the Complainants contentions and the Panel ordered that the Complaint be accepted and that the domain name BAYERHEALTHCARE.eu be transferred to the Complainant.