Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
Respondent is Hong Fu Chen, Chen Hong Fu of Yun Fu Shi, Guangdong, China.
The disputed domain name <basfsj.com> is registered with West263 International Limited (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2017. On November 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 15, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on the same day and filed an amended Complaint to correct an administrative formality. Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on November 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 12, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on December 15, 2017. 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.
Complainant, BASF SE, is a company incorporated in Ludwigshafen, Germany. It is one of the largest chemical companies in the world. BASF SE and its subsidiaries (the “BASF Group”) employ more than 112,000 people worldwide, and have customers in over 200 countries.
Complainant has registered a large number (more than 1,500) of national and International trademarks reflecting the term BASF, including trademark registrations in China (since November 20, 1988, Chinese trademark registration number 329975), trademark registrations in the United States of America (“US”) (since June 15, 1965, US trademark registration number 0791033), and international trademark registrations (since May 3, 1995, international registration number 638794) (Annexes 7-9 to the Complaint).
Respondent is Hong Fu Chen, Chen Hong Fu of Yun Fu Shi, Guangdong, China. Respondent registered the disputed domain name <basfsj.com> on April 9, 2017, which is long after Complainant’s registration of the BASF trademarks in the US (since 1965), and in China (since 1988). The disputed domain name resolves to a website with pornographic content.
Complainant contends that the disputed domain name is identical or confusingly similar to the BASF marks.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name <basfsj.com> be transferred to it.
Respondent did not reply to Complainant’s contentions.
6.1. Language of the Proceeding
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 on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
a) Complainant has undertaken a reverse WhoIs search for domain names owned by Respondent and found several domain names containing English words, such as <029good.com>, <106buy.com>, <126tea.com>, <1121photo.com>, <access2010s.com>, <evil-guys.com>, <ic-mobile.com>, <byjobhotel.com>, <crazy-gb.com>, and <dirtylips.net> (Annex 4 to the Complaint).
b) The terms emphasized above are not Chinese terms but very apparently English words. This indicates that Respondent is in position to understand the English language. Respondent is able to undergo UDRP proceedings in English.
c) A brief report by DomainIQ has associated the name and email address of Respondent to 905 domain names. The “Interesting Facts” section indicates that “the average domain has 1.85 words and the most common language is English” (Annex 5 to the Compliant). Therefore, it would not be unfair to Respondent to conduct these proceedings in English.
d) Complainant is not able to communicate in Chinese. Being a German entity, Complainant is not in position to conduct these proceedings in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint.
e) English language is not the native language of Complainant or its representative; therefore it would not give Complainant unfair advantage over Respondent.
f) Paragraph 10(c) of the Rules provides that the Panel shall ensure that the administrative proceeding takes place with due expedition. Conducting the proceedings in Chinese would contravene this provision for the reasons stated above.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:
“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.”
(WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from Germany, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters (“sj”, “basf”) and is registered in the generic Top-Level Domain (“gTLD”) space comprising of the Latin characters “.com” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name includes Latin characters “sj” and “basf” rather than Chinese script; (b) Respondent has registered 905 domain names, and many of them contain English words, such as “good”, “buy”, “tea” and “photo”; (c) the website resolved by the disputed domain name contains the English words, such as “All Rights Reserved”; (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these 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. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
6.2. Substantive Issues
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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 Complainant and in particular with regards to the content of the relevant provisions of the Policy (paragraphs 4(a) - (c)), the Panel concludes as follows:
The Panel finds that Complainant has rights in the BASF mark acquired through registration. The BASF mark has been registered in jurisdictions throughout the world including in US and China (see Annexes 7-9 to the Complaint), and Complainant has a widespread reputation in chemical industry in the world.
The disputed domain name <basfsj.com> comprises the BASF mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of “sj” to the mark BASF. This does not seem to eliminate the identity or at least the confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent may not avoid confusing similarity by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).
Mere addition of the suffix “sj” to Complainant’s mark fails to distinguish. Consumers may falsely believe that <basfsj.com> is operated or authorized by Complainant (see ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; see also Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho, WIPO Case No. D2011-1237). In relation to the gTLD suffix, WIPO Overview 3.0 further states:
“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11).
Thus, the Panel finds that disregarding the suffix “sj” as well as the gTLD suffix “.com”, the disputed domain name is identical to the BASF marks, and is confusingly similar to Complainant’s marks when viewed in its entirety.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 Complainant’s trademarks.
The overall burden of proof on this element rests with 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. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
According to the Complaint, Complainant is one of the largest chemical companies in the world. Complainant and its subsidiaries employ more than 112,000 people worldwide, and have customers in over 200 countries. Complainant has rights in the BASF marks since 1965 in the US and 1995 internationally, which long precede Respondent’s registration of the disputed domain name (2017).
Moreover, Respondent is not an authorized dealer of BASF-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption. (The Argento Wine Company Limited v. Argento Beijing Trading Company,supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “basf” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the BASF marks or to apply for or use any domain name incorporating the BASF mark;
b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2017, long after the BASF marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s BASF marks;
c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the website, currently resolved by the disputed domain name, is a website with porn pictures (see Annex 16 to the Complaint). It seems that Respondent is making profits through the Internet traffic attracted to the website under the disputed domain name. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041)
The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent lack of rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
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 Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
(i) Registered in Bad Faith:
The Panel finds that Complainant has a widespread reputation in the BASF mark with regard to its products. Complainant has registered its BASF mark internationally, including registration in US (since 1965) and China (since 1988). It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2017). The Panel therefore finds that the BASF mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.
Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
(ii) Used in Bad Faith:
Respondent is using the website resolved by the disputed domain name to provide porn photos, and the links to porn websites. Thus, the Panel concludes that Respondent is currently using the confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent’s website.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the reputation of the BASF Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the BASF Marks. Moreover, as mentioned above, Respondent offered the links to porn websites via the website to which the disputed domain name resolves, presumably for commercial gain. The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith. Such use of the disputed domain name is also disruptive in relation to the interests of Complainant.
In summary, Respondent, by choosing to register and use domain name which is confusingly similar to Complainant's trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all 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 <basfsj.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: January 4, 2017