The Complainant is BASF SE, Germany, represented by IP Twins S.A.S., France.
The Respondent is xiaoyun ma, Philippines.
The disputed domain name <basf-nyfw.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2020, 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.
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 June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on July 16, 2020.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 22, 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.
The Complainant, a German company, engages in the manufacture and sale of chemicals worldwide. It does business under the BASF trademark, which is registered with many trademark authorities, including the German Patent and Trademark Office (“DPMA”) (e.g., Registration No. 521841; registered on January 16, 1988).
The disputed domain name, <basf-nyfw.com>, was registered on April 10, 2020. The disputed domain name is used to host a website that offers only pornographic materials.
- The Complainant is a German company and the largest chemical company in the world, employing more than 112,000 people and operating in over 200 countries. The Complainant operates under its famous BASF trademark, which it has registered with many trademark jurisdictions worldwide. Also, in connection with its business, the Complainant owns the domain name <basf.com> along with many other domain names that incorporate its BASF mark.
- The disputed domain name is confusingly similar to the Complainant’s BASF trademark. That mark is contained completely in the disputed domain name, and the addition of the term “nyfw” does nothing to diminish the confusion between the mark and the disputed domain name. The additional term probably stands for New York Fashion Week; and may relate to the Complainant’s involvement in a New York fashion show that occurred in 2019. The Panel should also ignore the generic Top-Level Domain (“gTLD”) “.com” for comparison purposes, as Policy panels typically do.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has acquired no trademark or service mark related to the disputed domain name, and has not received a license or authorization from the Complainant to use its trademark. Moreover, the website attached to the disputed domain name is used solely for pornographic content, which is not a bona fide offering of goods or services or any other legitimate usage.
- The disputed domain name was registered and is being used in bad faith. The Complainant’s BASF trademark is widely known worldwide and hence the Respondent cannot claim ignorance of the Complainant’s rights in that mark. The Respondent’s use of the disputed domain name to run a pornographic website demonstrates that he sought profit from the confusion between the disputed domain name and the Complainant’s mark. At the same time, such usage is detrimental to the Complainant’s business and prevents it from using the disputed domain name itself. Finally, the Respondent employed erroneous contact information to avoid these proceedings, a further indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under UDRP paragraphs 4(a)(i) - (iii), the Panel may decide for the Complainant and grant it a transfer of the disputed domain name if the Complainant proves that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has sufficient rights in the BASF trademark for the purposes of these proceedings because the Complainant has supplied the Panel with clear evidence of its valid registration for the mark with the DPMA. See, Bremer Toto und Lotto GmbH v. Birrell Nigel, Cavour Ltd., WIPO Case No. D2019-2391 (“Each of those Trademarks is registered with the German Patent and Trade Mark Office [...]That is a ‘right’ within the meaning of paragraph 4(a)(i) of the Policy.”); and BASF SE v. kou xiansheng, bashifurunhuayouwuxiyouxiangongsi, WIPO Case No. D2015-2245 (“The Panel is satisfied that the Complainant has established that it has rights to the trade mark BASF...”).
The Panel can see plainly that the disputed domain name is confusingly similar to the Complainant’s BASF trademark, as the Complainant’s trademark is wholly incorporated in the disputed domain name with a hyphen and the additional lettering “nyfw”. In the Panel’s view the trademark does stand out in the disputed domain name. The additional hyphen does not prevent a finding of confusing similarity between the disputed domain name and the mark. The Complainant contends that the lettering “nyfw” represents New York Fashion Week. Whether that is correct or not, the Panel concludes that the addition of those four letters fails to distinguish the disputed domain name from the Complainant’s trademark sufficiently to avoid finding confusing similarity between them. Lastly, the inclusion of the gTLD, “.com”, is irrelevant with respect to a confusing similarity analysis under the Policy. For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the BASF trademark. See, Conféderation Nationale du Crédit Mutuel v. Contact Privacy Inc. Customer 1245893653 / Zack Levy, WIPO Case No. D2020-0108 (finding <creditmutuel-cyb.com> to be confusingly similar to the CREDIT MUTUEL mark, while stating, “.. where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or meaningless, would not prevent a finding of confusing similarity.”); AGFA-Gevaert N.V. v. long hang, WIPO Case No. D2018-0721 (finding <agfaphoto-idv.com> to be confusingly similar to the AGFAPHOTO mark); and BHP Billiton Innovation v. BHP / PrivacyProtect.org, WIPO Case No. D2011-0465 (“...the additional hyphen and gTLD ‘.com’ found in the disputed domain name furnish no relevant basis for distinction.”).
Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Prior UDRP panels have found that a complainant need merely present a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name, whereupon the respondent must come forward with clear evidence that it does possess those rights or interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”).
In this case, the Panel has determined above that the disputed domain name is confusingly similar to the Complainant’s mark. Moreover, the Complainant has contended that the Respondent has no license, authorization or permission from the Complainant to use its trademark within a domain name. Given these circumstances, the Panel believes that the Complainant has put forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has declined to file a Response, but the Panel will nonetheless assess whether the Respondent has a reasonable claim to rights or legitimate interests in the disputed domain name based upon the record of this proceeding. In doing so, the Panel will accept the reasonable contentions included in the Complaint as true. See, The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931 (“The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true.”).
The Complainant contends, with ample supporting evidence, that the disputed domain name resolves to a website that features only pornographic content. In keeping with prior UDRP decisions, the Panel finds that the Respondent’s use of the disputed domain name in this manner fails to constitute a bona fide offering of goods or services under Policy paragraph 4(c)(i). See, Tencent Holdings Limited v. Thinh Phu, WIPO Case No. D2014-0217 (“Numerous previous UDRP panels have found that a disputed domain name containing a well-established trademark which simply resolves to a pornographic website fails to constitute a bona fide offering of goods or services per paragraph 4(c)(i) of the Policy...”); and Guccio Gucci S.p.A v. Roberto Baggio, WIPO Case No. D2009-1196 (“The use of a [disputed] domain name that is confusingly similar to the Complainant's well-known registered mark in order to lure Internet users to a website offering content that many are likely to find offensive does not, in the Panel’s view, constitute a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy...”).
The Panel believes that there is nothing in the record to suggest that the Respondent is or has ever been commonly known as the disputed domain name as there is no resemblance between the two whatsoever. Therefore, the Panel finds that Policy paragraph 4(c)(ii) has no applicability to this case.
Because resolution of the disputed domain name to a pornographic website confers no possible legitimate noncommercial or fair use rationale with respect to the Respondent’s creation and implementation of the disputed domain name, the Panel also excludes Policy paragraph 4(c)(iii) from consideration in these proceedings. See, Volvo Trademark Holding AB v. Jinjin Zhang, WIPO Case No. D2010-1930 (“[...] the use of the website for the provision of pornographic material can in no way constitute a legitimate non-commercial or fair use of the [disputed] domain name.”).
Having found in the record no support for any claim by the Respondent to rights or legitimate interests in the disputed domain name, the Panel finds there is no effective rebuttal to the Complainant’s prima facie case.
Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name.
In order to find bad faith registration and use of the disputed domain name, the Panel need look no further than the linkage of the disputed domain name to a website offering exclusively pornographic content. The Complainant’s BASF trademark is well-known worldwide and involves the offering of reputable goods and services. The Respondent’s registration and use of the disputed domain name in connection with pornographic material can only tarnish the Complainant and its trademark, which is sufficient reason alone to sustain a determination of bad faith. See, WIPO Overview 3.0, section 3.12 (“...using a domain name to tarnish a complainant’s mark [...] may constitute evidence of a respondent’s bad faith.”); and Caesars World, Inc v. Alaiksei Yahorau, WIPO Case No. D2004-0513 (“The pornographic content of the Respondent’s website [...] constitutes significant indicia of bad faith. Prior decisions have consistently articulated support for this position, based on the concept of tarnishment...”). Moreover, such a finding by the Panel is in line with a consensus of prior Policy decisions when confronted by the sort of cybersquatting activity as conducted by the Respondent. See, VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631 (“Numerous panels deciding cases under the Policy have held that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith, irrespective of the respondent’s motivation.”).
Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used 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, <basf-nyfw.com>, be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: August 5, 2020