The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Mark Mark of the Virgin Islands, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2016. On September 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2016, 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 11, 2016.
The Center appointed David J.A. Cairns as the sole panelist in this matter on October 19, 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 a German chemical corporation. The BASF Group is a supplier of a variety of products and industries in more than 200 countries. It is one of the world's largest chemical companies.
The Complainant is the registered owner of many trademarks in jurisdictions around the world. These registrations include the United States trademark registrations No. 0809060 (first registered on May 31, 1966) and No. 3786543, (registered on May 11, 2010) for the word mark BASF.
The Complainant is also the owner of numerous domain names incorporating the BASF trademark, including, for example, the domain names , first registered on 15 March, 1995 and , first registered on 26 February, 1998.
The disputed domain name was first registered on November 7, 2014. The Panel entered the disputed domain name in its web browser on October 27, 2010 and found no webpage associated with the disputed domain name. The Complainant submitted in evidence a screen capture of the landing page associated with the disputed domain name taken on March 28, 2016. It is entitled "BASF Metal Forwards Limited". Under the heading "Co-operate with us" the landing page states that "BASF will focus on the development of the introducing broker (IB) business, …". Under the heading "Products" appear "FX", "Noble metal", "oil" and "index". The landing page also contains various links including "About BASF", "Products", "Platform", "Partners", "Account", "Customer", "Deposit", "Withdrawals" and "Contact Us". 5. Parties' Contentions A. Complainant
The Complainant states that BASF is a widely known trademark. It cites two UDRP decisions in which the Panels have recognized the fame of the Complainant's BASF trademark, namely, BASF SE v. Jim Welsh, WIPO Case No. D2010-2000, and BASF SE v. Jing liu,WIPO Case No. D2014-1889.
The Complainant states that the disputed domain name is highly similar to the Complainant's BASF trademark and is likely to create confusion for the general public. It states that the domain name only differs from the BASF trademark in the suffix "forex" and that the BASF trademark is in an "attack" position within the disputed domain name. The Complainant asserts that this position facilitates the association of the Complainant's trademark with the disputed domain name and constitutes the main visual element of the disputed domain name for the Internet user.
The Complainant states that the suffix "forex" is a generic term short for "foreign exchange". It states that the incorporation of generic prefixes or suffixes to a well-known trademark generally aggravate and do not mitigate the likelihood of confusion.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is not commonly known by the disputed domain name and that it has no trademark rights in relation to BASF. The Complainant states that the fact that the Respondent has not been authorized or licensed by the Complainant to register the disputed domain name is a strong evidence of the lack of the Respondent's legitimate interest.
The Complainant asserts that the Respondent has created a website in which it has profited from the Complainant's trademark to sell counterfeiting products, competing with the Complainant's activities, and that the Respondent is not using the domain name in connection with a bona fide offering of goods and services.
The Complainant states that the Respondent has the burden to establish its rights or legitimate interests in relation to the disputed domain name, since the registration and extensive use of the Complainant's BASF trademark precedes the registration of the disputed domain name.
The Complainant states that the domain name has been registered and is being used in bad faith. The Complainant asserts that the Complainant's BASF trademark is widely known and that it is inconceivable for the Respondent not to have known of its existence before the registration of the disputed domain name. The Complainant asserts that the Respondent purposely took into consideration the fame of the Complainant's trademark in choosing the disputed domain name. It further states that any use of the disputed domain name would be in bad faith.
The Complainant states that the Respondent used to reproduce the BASF trademark on the website linked to the disputed domain name, although the disputed domain name now resolves to an error page. It states that it is irrelevant whether this website is still in use for the purposes of determining the bad faith of the Respondent. The Complainant states that the Respondent has also registered the disputed domain name giving false identification details, which is further evidence of bad faith.
The Complainant alleges that the Respondent has registered a second domain name also based on the name of an existing company and added the suffix "fx". This is, the Respondent takes the name of Galileo Capital Partners Limited and created the domain name. It then created a false trading website using this domain name. The Respondent states that there is a pattern of conduct which is an additional proof of the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel is required to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the trademark registrations for the word mark BASF referred to above.
The disputed domain name is not identical with the Complainant's BASF trademark. The disputed domain name incorporates the Complainant's trademark entirely and adds the suffix "forex", which is an abbreviation for "foreign exchange".
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2, states that "The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself […]. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [...] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name."
Paragraph 1.9 of the WIPO Overview 2.0 states that "the addition of merely generic, descriptive or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP". The suffix "forex" is short for "foreign exchange", two generic words that compose a generic term.
In the present case, the Panel considers that on a visual comparison the disputed domain name is confusingly similar to the Complainant's BASF trademark for the following reasons: (i) BASF is a distinctive and invented word; (ii) the disputed domain name incorporates the BASF trademark in its entirety; (iii) the BASF trademark remains easily recognizable and distinctive in the disputed domain name; (iv) the addition of the descriptive suffix "forex" emphasizes rather than neutralizes the trademark function of "basf" by suggesting a foreign exchange service affiliated with the BASF trademark.
For the above reasons, the Panel considers that the disputed domain name is confusingly similar to the Complainant's BASF trademark. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the Complainant's BASF trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name.
Paragraph 4(c) of the Policy provides three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain name. Firstly, in relation to paragraph 4(c)(i), the Respondent cannot be considered as to be making a bona fide offering of goods and services as the use of the Complainant's BASF trademark in a deceptive manner to suggest an association with the Complainant is not a bona fide use.
As for paragraph 4(c)(ii), there is no evidence that the Respondent is commonly known by the disputed domain name.
With regard to paragraph 4(c)(iii), the Respondent is clearly not making a legitimate noncommercial or fair use as the webpage previously associated with the disputed domain name manifested a commercial purpose of an introducing broker business. Although there is no longer any website associated with the disputed domain name the Respondent's commercial purpose has been demonstrated and can be presumed to continue.
In light of the above, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that a disputed domain name was registered in bad faith and also that it is being used in bad faith. Paragraph 4(b) of the Policy sets out four circumstances "in particular but without limitation" which, if found to be present by a Panel, shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that bad faith within the meaning of paragraph 4(b)(iv) of the Policy is established in the present case for the following reasons: (i) BASF is a well-known international trademark; (ii) the website previously associated with the disputed domain name deceptively used "BASF" as the name of its business, with no disclaimer or effort to distinguish its business from the business of the Complainant; (iii) the Panel finds from the evidence that the Respondent's linkage of the elements "basf" and "forex" in the disputed domain name was not coincidental but deliberate and in full knowledge of the Complainant's BASF trademark, and chosen precisely because of the fame and goodwill of the BASF trademark; (iv) the website previously associated with the disputed domain name stated its purpose as being the introducing broker business, and therefore had an objective of commercial gain; (v) the Respondent intended to attract Internet users who would expect to find either a website of the Complainant or a website that was affiliated to or sponsored by the Complainant at a domain name incorporating the BASF trademark.
The Respondent seems to have provided false registration information for the disputed domain name, which the Panel finds is corroborative evidence of bad faith. The Respondent also appears to have registered another domain name using another company's name and adding the suffix "fx", and has further created a website in relation to trading services. This evidence resembles the set of facts of the present in this case. Although a single similar fact situation does not necessarily constitute a "pattern of conduct" of preventing the trademark owner from reflecting its trademark in a domain name for the purposes of paragraph 4(b)(ii) of the Policy (see paragraph 3.3 of the WIPO Overview 2.0 and Investone Retirement Specialists, Inc. v. Motohisa Ohno,WIPO Case No. D2005-0643) this similar fact evidence does constitute corroborative evidence of the intention to deceive required by paragraph 4(b)(iv) of the Policy.
For these reasons, the Panel finds that the Respondent has registered and used the disputed domain name 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 disputed domain name be transferred to the Complainant.
David J.A. Cairns
Sole Panelist
Date: November 2, 2016
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