The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is kou xiansheng, bashifurunhuayouwuxiyouxiangongsi of Wuxi, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2015. On December 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11, 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.
On December 14, 2015, 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 confirmed its 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 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 in both Chinese and English, and the proceeding commenced on December 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on January 15, 2016. 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 part of the BASF Group and is the largest chemical company in the world, listed on the Frankfurt Stock Exchange, London Stock Exchange, and Zurich Stock Exchange. It 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 company is currently expanding its international activities with a particular focus on Asia. Between 1990 and 2005, the company invested EUR 5.6 billion in Asia including Nanjing and Shanghai, China.
The Complainant trades under the BASF trade mark. It owns more than 2000 BASF trade marks worldwide including the following international trademarks designating China and registered years before the Domain Name:
- BASF n° 638794 registered May 3, 1995 in classes 03, 05 and 30;
- BASF n° 909293 registered October 31, 2006 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.
Because of its extensive use, BASF has also been recognized as a well known trade mark by UDRP panelists. The BASF mark in Chinese is “巴斯夫”, pronounced “ba si fu”.
The Complainant holds numerous domain names incorporating the BASF trade mark, both within generic Top Level Domains (“gTLDs”) and geographical ones, particularly in Asia and China: , , , and many others.
The Domain Name was registered on May 6, 2014. It is connected to a website (“the Website”) which offers for sale and sells lubricant and motor oil which are products which BASF also produces. The BASF brand name is displayed and used on the Website and the Respondent appears to operate under the company name BASF Lubricating Oil Wuxi Co and/or BASF Energy Technology Beijing Co Ltd. The products sold on the Website bear the names EMGARD and BASF EMGARD. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint that the language of the proceeding should be English. The Complainant contends that the Respondent understands English for the following reasons:
- The Respondent’s products on sale on the Website are labelled in English e.g. “motorcycle engine oil”, “combination of antifreeze”, “special synthetic quality”.
- The Website displays a photograph of the building the Respondent appears to be operating from, which reads “BASF Lubricating Oil Wuxi Co.”
- The Website displays an alleged “Quality Management System Certificate” and an alleged certificate from the “International automobile maintenance technician association”. If these documents are legitimate, then they evidence the Respondent’s understanding of the English language at least in the case of the alleged Quality Management System certificate as it appears to require the filing of documents in English. If these documents are not legitimate, the Respondent would have to have sufficient knowledge to search for certificates written in English, understand their content to identify them as actual certificates, and/or edit the images to insert his name at the right place or fake the entire document. This also shows that the Respondent has sufficient English knowledge to apprehend that these certificates as markers of value.
- The Respondent is familiar with an international brand in the English language which is not of Chinese origin, which shows a degree of comfort with the English language.
- There are other English extracts and snippets on the Website such as “About us”, “Products”, “Core technology”, “Products category”, “News category” as well as “Culture”, “Missions”, “Vision”, “Values”, and “For you to continue to provide quality products and consulting information”.
- The Website shows a brochure relating to the Respondent’s products, which lists all products in English and comprises several isolated terms in English.
- The Domain Name is registered in Latin characters.
The Complainant also contends that it is not able to communicate in Chinese. Being a German entity, the Complainant is not in a 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. English language is not the native language of the Complainant or its representatives, therefore it would not give it unfair advantage over the Respondent.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. There is evidence that indicate that the Respondent has knowledge of the English language. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese especially in circumstances where the Respondent has elected not to file a Response to the proceeding. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent cannot avail himself of the excuse that he had no knowledge or did not understand that proceedings have been filed against him. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark BASF and that it is a well known trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the trade mark BASF in its entirety. The addition of the commonly used abbreviation of the descriptive word for “lubricant”, “lub” does nothing to dispel confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD suffix, in this case “.com.”
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant has registered rights in the name BASF in China. The Complainant has not at any time authorised or licensed the Respondent to use BASF as a domain name, business or trading name, trade mark or in any other way. The Respondent’s details in the WhoIs database are:
Registrant Name: kou xianshen
Registrant Organization: bashifurunhuayouwuxiyouxiangongsi.
The Respondent uses the word “巴士夫”pronounced “ba shi fu” in connection with the BASF. The first and third characters of the word are identical to the first and third characters of the Complainant’s mark in Chinese “巴斯夫”. Although the second character is written differently in Chinese script, the pronunciation of both characters is almost identical. The organizational name of the registrant appears to be transliteration of the Chinese version of “Wuxi BASF Lubricant Oil Co., Ltd.” Previous UDRP decisions have made clear that a respondent that uses a complainant’s trade mark as part of its business, company or domain name without authorization cannot be considered to have demonstrated that it has been commonly known by that name or domain name. The adoption of the name in such circumstances is not legitimate as the intention is to create an impression of association with the Complainant. Hence this intention will never amount to a legitimate interest as it is often nothing more than a ruse to mask an illegitimate use of the Complainant’s trade mark in a domain name (see Compagnie Gervais Danone v. Chen S,WIPO Case No. D2009-0288).
The Respondent is a competitor of the Complainant. His unauthorised use of the Complainant’s well known trade mark in connection with a domain name used to offer for sale and sell a competitor’s goods cannot be considered a bona fide offering of good and services.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the BASF trade mark when he registered the Domain Name. The Website offers for sale and sells products that compete with the Complainant’s products. Some of the products are in fact marketed under a name that includes the BASF name - BASF EMGARD. The Respondent in fact trades under the business name BASF Lubricating Oil Wuxi Co and BASF Energy Technology Beijing Co Ltd. BASF is a well known trade mark and the trade mark registrations in China predate the registration of the Domain Name, one by more than 20 years. The Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. The Website is aimed at luring customers to believe that it belongs to the Complainant or is authorised by it when that is not the case. The products offered for sale are competing products. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells competing goods is evidence of bad faith registration and use especially since it is clear from the Website that the goods in question bear the BASF mark as do the companies that the Respondent purportedly trades under.
The BASF mark in both Latin as well as Chinese characters - “巴士夫” are being used by the Respondent in connection with the goods offered for sale on the Website. From evidence produced by the Complainant, The Bei Tang Office of Wuxi Market Supervision Bureau made a finding in August 2015 that the use of the “巴士夫” mark by the Respondent constituted trade mark infringement of the Complainant’s 巴斯夫 trade mark. The Respondent was also found to have violated Chinese anti-unfair competition law in its advertising as it claims that the products originate from Germany.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Website are and the products sold on them are those of or authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name was in bad faith. 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 Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: February 1, 2016
Full & Egal Universal Law Academy