The Complainant is BASF SE, Germany, represented by IP Twins S.A.S., France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Paul Okeke, Nigeria.
The disputed domain name <basfagrofarm.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 22, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. The Respondent did not submit a formal response. However, the Respondent sent an informal email on October 22, 2020, asking what the dispute is about. Accordingly, on November 19, 2020 the Center informed the Parties that it would proceed to appoint a panel.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on November 30, 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 is one of the largest chemical companies in the world, listed on the Frankfurt Stock Exchange, London Stock Exchange, and Zurich Stock Exchange. The Complainant is active, through its subsidiaries and joint ventures, in over 80 countries, operating six integrated production sites and 390 other production sites in Africa, the Americas (North and South), Asia, Australia, and Europe employing more than 112,000 people around the world.
The Complainant holds a large portfolio of trademark registrations for BASF (word and device marks) throughout the world, including International Trademark Registration No. 638794, registered on May 3, 1995, in classes 3, 5, and 30; and International Trademark Registration No. 909293, registered on October 31, 2006, in classes 1, 2, 3, 4, 5, 6, 7, 9, 10, 12, 16, 17, 18, 19, 22, 24, 25, 27, 28, 29, 30, 31, 32, 35, 36, 37, 39, 41, 42, and 44 (collectively the “BASF mark”). The well-known character of the BASF mark in connection with chemical goods and services has been recognized in prior UDRP decisions.1
The Complainant further owns numerous domain names incorporating the BASF mark, under both generic Top-Level-Domains (“gTLDs”) or country code Top-Level-Domains (“ccTLDs”), which are linked to the Complainant’s official websites or its partners and subsidiaries’ official websites, including <basf.com> (registered on March 15, 1995), <basf-chemtrade.com> (registered on June 3, 2014), <basf-construction-solutions.com> (registered on October 28, 2013), <basf-designfabrik.com> (registered on December 28, 2006), <basf-pharma.com> (registered on August 11, 1996), <basf-plastics.com> (registered on June 9, 2011) and many others.
The disputed domain name was registered on August 22, 2020, and is linked to a website in English language, including a Google translation tool to many languages, allegedly offering investment services related to various projects in the agricultural field, seeds, and chemical products for agriculture. This website includes in the left side of its heading, before the text content of the site, the words “BASF AGRO FARM” and a circle logo containing some green leaves and a yellow wheat spike. The content of this website includes various references to “the biggest Agro Farm”, as well as official videos, photographs and promotional material of the Complainant, and various links to the Complainant’s official website “www.basf.com”. The “about us” section of this website includes information about the investment services promoted on the site, with no clear reference to the owner of the site or of the disputed domain name. The only contact details provided on this site are a contact form, an address in Germany and an email address configured on the disputed domain name.
Key contentions of the Complaint may be summarized as follows:
The BASF mark is well-known worldwide as recognized in prior UDRP decisions. The Complainant has customers in over 200 countries.
The disputed domain name is confusingly similar to the Complainant’s trademark. The BASF mark is reproduced in the disputed domain name, being visible and recognizable, and the terms “agro farm” related to the Complainant’s core business increasing the risk of confusion.
The Respondent has no rights or legitimate interests in the disputed domain name. As the disputed domain name was registered recently, the Respondent cannot yet be commonly known by the terms “basf agro farm”. The Respondent has no trademark rights over the term “basf”, and no license or authorization to use the BASF mark, not being linked to the Complainant. The disputed domain name is used in connection to an active website impersonating the Complainant and including unauthorized links to the Complainant’s official website “www.basf.com”.
The disputed domain name was registered and is being used in bad faith. Due to the strong reputation of the BASF mark and the fanciful character of the term “basf” (with no meaning in any language), it is inconceivable that the Respondent ignored it. A simple search for this term (“basf”) on an online search engine yields results only related to the Complainant and its reputed trademark. The disputed domain name was registered targeting the BASF mark, in an attempt to prevent the Complainant from reflecting its trademark and company name in a domain name. Further, due to the strong reputation of the Complainant’s mark, there is no possible use of the disputed domain name in connection with a bona fide offer of goods or services. The actual use of the disputed domain name (in connection with a website impersonating the Complainant and creating confusion in the mind of average Internet users), amounts to bad faith active use.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
The Complainant indisputably has rights in the registered BASF mark. The disputed domain name incorporates this mark in its entirety followed by the terms “agro farm”, which do not avoid confusing similarity with this trademark. The Complainant’s BASF mark is clearly recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.
As the disputed domain name is connected to a website related to the Complainant’s business sector is relevant to mention that resellers, distributors or other third parties using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services, may be making a bona fide offering of goods and services and thus have a right or legitimate interest in such domain name, if the following cumulative requirements are meet:
(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 or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The analysis of these requirements is commonly known as the “Oki Data test” (referring to Oki Data Americas., Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903). See section 2.8, WIPO Overview 3.0.
The disputed domain name is linked to a website, which does not offer the Complainant’s goods or services but investment services of unknown origin, not disclosing the lack of relationship with the Complainant and its BASF mark, but including unauthorized links to the Complainant’s official website as well as various references and promotional content directly related to the Complainant. This website impersonates the Complainant or one of its partners or subsidiaries, creating confusion as to the source of the website. Therefore, the Panel concludes that none of the requirements of the “Oki Data” test is met.
Furthermore, a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding the terms “agro farm”, which also may point to the Complainant and its notorious trademark, as an indication related to its core business in the agro chemical products’ sector, enhancing the affiliation to the Complainant and its well-known trademark. Therefore, the Panel considers that there is a risk of implied affiliation.
It is further remarkable the Respondent has not replied to the Complaint not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s BASF mark in its entirety adding the terms related to the Complainant’s core business (“agro farm”), creating a likelihood of confusion or implied affiliation and the impression that the disputed domain name refers to one of the Complainant’s official websites or its partners and subsidiaries’ official websites, suggesting sponsorship or endorsement by the Complainant;
(ii) the BASF mark is notorious in its sector (related chemicals, including agro farm chemical products) and the Complainant operates internationally including Germany, where the website linked to the disputed domain name provides a location, and Nigeria, where the Respondent is located according to the Registrar verification;
(iii) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the disputed domain name;
(iv) the disputed domain name is linked to a website that offers investment services in the same sector in which the BASF mark is well-known, and includes unauthorized links to the Complainant’s official website as well as various references and promotional content directly related to the Complainant and its reputed trademark; and
(v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainant’s BASF mark with the intention of obtaining a free ride on its established reputation, seeking to mislead and attract Internet users to a commercial website offering investment services in various projects in the same field that constitutes the Complainant’s core business, which may compete with the Complainant’s, and which constitutes bad faith. Furthermore, the disputed domain name prevents the Complainant from reflecting its trademark and company name in a domain name including its reputed trademark and terms related to its core business.
All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.
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 <basfagrofarm.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: December 11, 2020
1 BASF SE v.Jim Welsh, WIPO Case No. D2010-2000; BASF SE v. jing liu/liujing, WIPO Case No. D2014-1889; and BASF SE v. kou xiansheng, bashifurunhuayouwuxiyouxiangongsi, WIPO Case No. D2015-2245, adduced by the Complainant.