WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Guojian, Shanghai Baixi Industry Compang Limited

Case No. D2015-1472

1. The Parties

The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.

The Respondent is Guojian, Shanghai Baixi Industry Compang Limited of Shanghai, China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2015. On August 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2015, 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").

On August 24, 2015, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On August 24, 2015, the Complainant confirmed its request that English be the language of the proceeding by email to the Center. On August 20, 2015, the Respondent transmitted a general email in English and On August 25, 2015, the Respondent submitted its request that Chinese be the language of the proceeding.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on September 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2015. The Response was filed with the Center on September 23, 2015.

The Center appointed Sok Ling MOI as the sole panelist in this matter on October 9, 2015. 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 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 Complainant 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.

The Complainant owns more than 40 trade mark registrations for OPPANOL worldwide, the earliest being registered since 1933, including the following:

- International registration no. 452393 for OPPANOL, registered on April 30, 1980, designating China (among others).

The disputed domain name <oppanol.com> was registered on March 14, 2015, long after the Complainant has registered its trade mark OPPANOL internationally including China. The disputed domain name was re-directed to the website "www.xiangsuhui.com/goods", which is a website purporting to sell OPPANOL products and other products bearing the trade mark of the Complainant's competitors.

5. Parties' Contentions

A. Complainant

A1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:

The only difference between the Complainant's trade mark and the disputed domain name is the generic Top-Level Domain ".com". According to previous UDRP decisions, the established law is that the gTLD suffix must not be taken into account for purpose of the similarity of mark comparison. As such, the disputed domain name is identical to the Complainant's trade mark OPPANOL.

A2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Respondent is not commonly known by the disputed domain name, nor has it acquired any trade mark or service mark rights related to the "Oppanol" term. The Complainant has conducted trade mark searches and found no OPPANOL trade mark owned by the Respondent.

The disputed domain name is redirected to a website "www.xiangsuhui.com" which is used to sell products that are similar to the goods and services protected under the Complainant's OPPANOL trade mark registration. The consensus view of previous UDRP panelists is that the use of a domain which reproduces another's trade mark to link to competitor products does not constitute legitimate noncommercial or fair use or a bona fide offering of goods or services.

A3. The disputed domain name was registered and is being used in bad faith:

The Complainant found, based on a WhoIs search that the Respondent has also registered the domain names <oppanol.cn> and <oppanol.com.cn>, and this was also admitted by the Respondent itself. It is obvious that the Respondent is engaging in a pattern of registration in order to prevent the Complainant, owner of a trade mark, from reflecting the mark in a corresponding domain name for China.

The Complainant also found, based on a WhoIs search, that the Respondent has registered other domain names reproducing third party trade marks, such as <chinabutyl.com> (reproducing the trade mark BUTYL) and <iamxiaomi.com> (reproducing the trade mark XIAOMI).

Circumstances indicate that the Respondent had registered the disputed domain name primarily for the purpose of selling it to the Complainant for profit. The Respondent had, only three months after registering the disputed domain name, contacted the Complainant directly with an offer to sell the disputed domain name. Such offer of sale is considered bad faith by previous UDRP panelists.

The Respondent is using the disputed domain name to redirect users to the website "www.xiangsuhui.com", which website reproduces the Complainant's iconic logo and trade mark, and purportedly allows users to order OPPANOL products. However, images of the products on the said website show the label "X_butyl". Lanxess, which owns the trade mark X BUTYL is a competitor of the Complainant. The said website also offers for sale products from other competitors of the Complainant (e.g. DOW, Dynasol). Such use of the OPPANOL trade mark to sell the Complainant's competitor's products amounts to bad faith use.

Accordingly, the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent submitted a response via email of September 23, 2015. Although this was not in the required format for a formal Response, the Panel is willing to take this response into consideration.

In its response, the Respondent claimed that it was the first to register the disputed domain name, and upon registration, the Respondent did contact the Complainant purely to see if the Complainant was interested to purchase the disputed domain name. As the Respondent did not seek a high price for the disputed domain name, such an act of approaching the Complainant could not be considered to be an act of bad faith.

The Respondent also claimed that the disputed domain name was not used to promote other products that may cause a conflict with the Complainant's trade mark, or products belonging to other companies. The Respondent did in fact sell OPPANOL products and the registration of the disputed domain name was a convenient way to recommend OPPANOL products to its customers.

In any event, the Respondent claimed that the disputed domain name was <oppanol.com> whereas the Complainant's trade mark was OPPANOL, and were not identical.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent requested via email of August 25, 2015 for Chinese to be the language of the proceeding.

On the record, Respondent Guojian appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script;

(b) the Respondent had previously contacted and communicated with the Complainant in English, with the intention to sell the disputed domain name to the Complainant;

(d) the Respondent has registered several other domain names comprising Latin characters, e.g. <iamxiaomi.com> and <chinabutyl.com> (based on a reverse WhoIs search conducted by the Complainant), as well as <iamfax.com>, <robotguanjia.com>, <iamlecarc.om>, <wolaipay.com>, <chinahanxiu.com> and <wanbill.com>, based on a reverse WhoIs search independently conducted by the Panel using the Respondent's email address.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Center informed the Respondent that it would accept a Response in either English or Chinese;

Considering the above circumstances, the Panel finds 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. To require the Complaint to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) it shall accept the emails and Response as filed in Chinese and (iii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the OPPANOL mark by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant's trade mark OPPANOL in its entirety. The addition of the gTLD ".com" does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.

Consequently, the Panel finds that the disputed domain name is identical to the Complainant's trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.

There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term "Oppanol". It also appears that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the OPPANOL trade mark. The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name.

In its Response sent as an email attachment on September 23, 2015, the Respondent claimed that it has registered the disputed domain name as a convenient way of promoting and recommending the OPPANOL products to its customers. It claimed that it is selling OPPANOL products and is not using the disputed domain name to promote products belonging to the Complainant's competitors.

The disputed domain name resolves to a commercial website which prominently displays the Complainant's trade mark and logo, and which purports to offer OPPANOL products. The consensus view of UDRP panels is that such use of the website, including in some cases by unauthorised sales or service agents, can be a bona fide offering of services and confer on the said agents a legitimate interest in the disputed domain name, provided it meets certain requirements, such as:

(i) the Respondent must actually be offering the goods or services at issue;

(ii) the Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

(iii) the site must accurately disclose the Respondent's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;

(iv) the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

(See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.)

In this regard, the Panel could not find any disclaimer on the Respondent's website disclosing the relationship or lack of relationship between itself and the Complainant. By using the OPPANOL mark on its website without such a disclaimer, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website "www.oppanol.com" is somehow connected with the Complainant, despite the lack of affiliation or association with or authorization from the Complainant.

Furthermore, based on evidence submitted by the Complainant, the Panel finds that the Respondent had in fact promoted and offered for sale products and brands of other proprietors that the Complainant has identified as its competitors. This conduct can be classified as a "bait and switch" tactic. Additionally, the so-called OPPANOL products could also well be counterfeit knockoff of the Complainant's products.

By registering the domain names <oppanol.cn> and <oppanol.com.cn> as well, the Respondent is attempting to corner the China market thus depriving the Complainant from reflecting its trade mark in a domain name.

The continuing use of the disputed domain name is confusing to internet users and clearly falls foul of the OKI Data requirements.

The Panel therefore determines that the Respondent has failed to demonstrate that it has any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark 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 disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites 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 websites or location or of a product or service on the Respondent's website or location.

Given the observation above that the Respondent has not accurately disclosed its relationship (or more precisely lack thereof) with the Complainant and the Panel's consequent finding that the Respondent lacks rights or legitimate interests in the disputed domain name, the Panel determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website. As such, based on the available record, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

The Respondent has also registered the domain names <oppanol.cn> and <oppanol.com.cn> reproducing the Complainant's trade mark in its entirety. The Panel therefore determines that the Respondent had registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name. The Panel further notes that the Respondent has also registered several other domain names reproducing or incorporating third party trade marks (e.g. <iamxiaomi.com>).

Taking into account all other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

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 <oppanol.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: October 23, 2015