The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is jing liu/liujing of Zhengzhou, Hanan Province, China.
The disputed domain name <basfwa.com> is registered with Bizcn.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2014. On October 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2014, 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 Complainant submitted the signed Complaint on October 31, 2014.
On October 31, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the signed 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on November 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on December 10, 2014. 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 BASF SE is one of the largest chemical companies in the world and is listed on the Frankfurt Stock Exchange, London Stock Exchange, and Zurich Stock Exchange. The BASF Group comprises subsidiaries and joint ventures in more than 80 countries, and operates six integrated production sites and 390 other production sites in Europe, Asia, Australia, Americas and Africa. The Complainant has customers in over 200 countries and supplies products to a wide variety of industries, employing more than 112,000 people around the world. It is currently expanding its international activities with a particular focus on Asia. Between 1990 and 2005, the Complainant invested EUR 5.6 billions in Asia and has sites near Nanjing and Shanghai in China.
The Complainant owns more than 2000 BASF trademarks worldwide. Moreover, the Complainant is the owner of the international trademarks designating China in classes 01, 02, 03, 04, 05, 06, 07, 09, 10, 12, 16, 17, 18, 19, 22, 24, 25, 27, 28, 29, 30, 31, 32, 35, 36, 37, 39, 41, 42 and 44 and the trademarks are registered in as early as 1995 with the more recent ones in 2006. Registration of Chinese trademarks are years before the registration of the disputed domain name.
The disputed domain name was registered by the Respondent on January 7, 2013.
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its mark. The reasons are summarized as follows:
(1) Prior UDRP panels have found the Complainant’s BASF mark a famous trademark.
(2) Being very famous and well-known, “basf” is undoubtedly the main attractive element of the disputed domain name <basfwa.com>.
(3) A person reading the disputed domain name aloud would also certainly pronounce “b–a–s–f–wa”, the “wa” element being isolated. Thus, the sole addition of the two letter “wa” is not enough to differentiate the disputed domain name from prior BASF trademarks owned by the Complainant.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:
(1) The Respondent is not commonly known by the disputed domain name, and has acquired no trademark or service mark rights related to the “Basf” term.
(2) The Complainant has conducted trademark searches and found no BASF trademark or right owned by “jing liu” or “liujing” which is the owner of the disputed domain name.
(3) The disputed domain name is used to sell products that are similar to the goods and services protected by the Complainant’s trademarks.
(4) Using a Basf related domain name in order to link to competitor products does not constitute legitimate noncommercial or fair use nor a bona fide offering of goods or services.
(5) Thus, the commercial use of the disputed domain name reproducing the BASF trademark and brand cannot be considered a fair use of the disputed domain name, as it misleadingly diverts consumers searching for the Complainant’s products.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:
(1) The Respondent is using the disputed domain name to sell identical and similar products (paint) and therefore, it should be considered as being a competitor of the Complainant.
(2) Using the Complainant’s BASF trademark to display the website of a competitor is clearly an attempt to attract for commercial gain, Internet users to the Respondent’s website or other on-line 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.
(3) It is obvious that the Respondent had knowledge of the Complainant prior rights since it is unlawfully using the Complainant’s trademarks, brands and logos on some of the pages of its website. Such use of the Complainant’s trademarks along with a domain name reproducing the Complainant’s trademark is constitutive of counterfeiting and must be considered as a bad faith registration and use of the disputed domain name.
(4) Furthermore, the header of the website displays the following phrase: “Germany BASF WEI AI chaemical industry limited company, world quality global leader”. The Complainant is the world leader of chemical and industrial products sales, and is also located in Germany. It is clear that the Respondent tried to unlawfully benefit from the Complainant’s fame in order to attract consumers. This behavior may be considered as, passing-off, and must be considered of bad-faith.
The Respondent did not reply to the Complainant’s contentions.
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent did not comment on it.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) parts of the contents of the website associated with the disputed domain name are in English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations.
Therefore the Panel is of the view that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the BASF mark in connection with its chemical goods and services in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the BASF mark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s BASF mark is well known in connection with chemical goods and services offered by the Complainant in many countries as well as in China.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant’s products or services.
The disputed domain name consists of the Complainant’s BASF mark in its entirety with the addition of the two letters “w” and “a” and the generic Top-Level Domain (gTLD) suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “basf” which is identical to the Complainant’s registered trademark BASF. Given the fame and notoriety of the Complainant’s BASF mark, the addition of the two letters “w” and “a” does not provide sufficient distinction from the Complainant’s trademark. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” being the gTLD is not typically a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant’s BASF mark and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the BASF mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test.
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “basf”;
(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the BASF mark;
(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
(4) On the contrary, the disputed domain name is currently connected to a website that contains a reference to the Complainant and its BASF mark and which is used to sell identical and similar products, i.e. paint to compete directly with the Complainant. The Panel finds that the Respondent therefore does not have the right to use the BASF mark in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
(5) The Complainant and its BASF mark enjoy a widespread reputation and high degree of recognition as a result of their fame and notoriety in connection with chemical goods and services and have registered trademarks in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the BASF mark is not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes that the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark 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 domain name; or
(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a 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 above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its BASF mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the disputed domain name is currently connected to a website that contains a reference to the Complainant and its BASF mark and which is used to sell identical and similar products, i.e. paint to compete directly with the Complainant. Such behaviour on the part of the Respondent is indicative of bad faith registration and use as per paragraph 4(b)(iv) of the Policy. The Respondent could have explained its choice of the disputed domain name and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s BASF mark and a lack of plausible explanation for the choice of incorporating the Complainant’s well-known trademark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to connect to a website that contains a reference to the Complainant and its BASF mark and which is used to sell identical and similar products, i.e. paint to compete directly with the Complainant, are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test.
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 <basfwa.com> be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: December 24, 2014