Bayer AG v. Pattaya Sangsuwan
Claim Number: FA1105001387995
Complainant is Bayer AG (“Complainant”), represented by Torsten Bettinger of Patent- und Rechtsanwalte Bettinger Schneider Schramm, Germany. Respondent is Pattaya Sangsuwan (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bayeraspirin.us>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2011; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2011.
On May 11, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bayeraspirin.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 17, 2011, a notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph as Panelist.
Respondent submitted correspondence which does not measure up to the requirements necessary for a Response. Notwithstanding, in the interests of justice, fairness and equity, the essence of the correspondence with be taken in into consideration in the analysis and determination of this decision.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy and Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bayeraspirin.us> domain name is confusingly similar to Complainant’s BAYER mark.
Respondent’s <bayeraspirin.us> domain name is confusingly similar to Complainant’s ASPIRIN mark.
2. Respondent does not have any rights or legitimate interests in the <bayeraspirin.us> domain name.
3. Respondent registered and used the <bayeraspirin.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bayer AG, began manufacturing and marketing pharmaceutical products in 1888. Complainant owns the BAYER mark and has sold products, including aspirin, under its mark since 1899. Complainant also owns the ASPIRIN mark. Complainant holds numerous trademark registrations for its BAYER mark and its ASPIRIN mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMDA24895 issued Aug. 8, 1919) and (e.g., Reg. No. NFLD761 issued May 20, 1919), respectively.
Respondent, Pattaya Sangsuwan, registered the <bayeraspirin.us> domain name on April 23, 2010. The disputed domain name resolves to a retail website offering analgesic products, including Complainant’s aspirin goods and goods of Complainant’s competitors in the pharmaceutical industry.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant asserts that it has rights in the BAYER and ASPIRIN marks. Previous panels have determined that a complainant can secure rights in a mark by registering with a trademark authority. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Here, Complainant holds numerous trademark registrations for its BAYER and ASPIRIN marks in Canada with the CIPO (e.g., Reg. No. TMDA24895 issued Aug. 8, 1919) and (e.g., Reg. No. NFLD761 issued May 20, 1919), respectively. Therefore, the Panel concludes that Complainant has established rights in its BAYER and ASPIRIN marks through trademark registration with a federal authority according to Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <bayeraspirin.us> domain name is confusingly similar to its BAYER and ASPIRIN marks. The domain name incorporates both marks entirely and changes them only by adding the generic country-code top-level domain (“ccTLD”) “.us.” Combining Complainant’s marks to form the disputed domain name does not remove the name from the realm of confusing similarity. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). The Panel also finds that adding a ccTLD does not adequately distinguish the disputed domain from Complainant’s mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). The Panel finds that Respondent’s <bayeraspirin.us> domain name is confusingly similar to Complainant’s BAYER and ASPIRIN marks under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent has no rights or legitimate interests in the <bayeraspirin.us> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel concluded “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].” Here, Complainant has presented a prima facie case in support of its claims. Respondent’s failure to submit a response to the Complaint may be interpreted as a waiver of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will first examine the record to clarify whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Looking at the record, there is no evidence that indicates Respondent owns any service marks or trademarks reflected in the <bayeraspirin.us> domain name. The Panel finds that Respondent does not have rights or legitimate interests according to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Pattaya Sangsuwan,” which is not similar to the disputed domain name. Complainant asserts that it has not licensed or otherwise permitted Respondent to use any of its BAYER ASPIRIN trademarks or permitted Respondent to apply for any domain name incorporating its trademarks. The Panel concludes that Respondent is not commonly known by the <bayeraspirin.us> domain name, according to Policy ¶ 4(c)(iii), as there is no evidence that indicates otherwise. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <bayeraspirin.us> domain name resolves to a retail website selling Complainant’s products and products in direct competition with Complainant’s pharmaceutical business. The Panel determines that Respondent’s use of the disputed domain name to redirect Internet users to its own website to resell Complainant’s goods and feature goods in competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent registered and uses the <bayeraspirin.us> domain name in order to disrupt Complainant’s business. Internet users intending to purchase Complainant’s aspirin or pharmaceutical products may find Respondent’s website and purchase Complainant’s products from Respondent or products of a competitor as a result. The Panel finds that such registration and use is disruptive to Complainant’s business and therefore, constitutes bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under [UDRP] ¶ 4(b)(iii).”)
Complainant contends that Respondent’s disputed domain name creates a likelihood of confusion as to Complainant’s sponsorship of, or association with, the resolving websites and products offered. Respondent’s domain name is confusingly similar to Complainant’s BAYER ASPIRIN mark and given the nature of the website, which sells pharmaceutical goods, including Complainant’s products, makes it probable that Internet users will be misled as to Complainant’s association. Respondent uses this confusion in order to profit from the sale of goods from its website. The Panel finds that registration and use for this purpose is indicative of bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bayeraspirin.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 8, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page