The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Jie Yu, Yu Jie of Dandong, Liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2016. On November 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant's contact information for the disputed domain name which differed from the named Respondent's contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 2016 providing the registrant's contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on November 14, 2016.
On November 14, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. The Complainant requested for English to be the language of the proceeding in the Complaint. The Respondent did not comment on the language of the proceeding.
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 November 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 15, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 21, 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, BASF SE, is the largest chemical company in the world and is listed on the Frankfurt Stock Exchange, London Stock Exchange, and Zurich Stock Exchange. The Complainant's Group 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. Between 1990 and 2005, the company invested EUR 5.6 billion in major Chinese hubs like Nanjing and Shanghai.
The Complainant is the owner of numerous trademark registrations for the BASF mark. For example: International trademark registration number 638794, with the registration date of May 3, 1995; International trademark registration number 909293, with the registration date of October 31, 2006; European Union trademark registration number 000098020, with the registration date of October 15, 1998, and many more.
The Complainant also holds numerous domain names incorporating the BASF trademark. For example: , , , and many others.
The disputed domain name was registered on August 3, 2016.
Currently, the disputed domain name is inactive. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its BASF trademark and likely to create confusion in the mind of the general public.
The Complainant further argues that the disputed domain name fully incorporates the Complainant's prior trademark BASF. Therefore, the Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's BASF trademark.
The Complainant further argues that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
The Complainant further argues that previous UDRP panels have ruled in favor with its Complaints and accepted its arguments, among others, in regards to its rights in its famous trademark BASF.
The Complainant further argues that the Respondent is not commonly known by the disputed domain name and that the Respondent reproduces the Complainant's trademark without any license or authorization.
The Complainant further argues that the Respondent's use of the disputed domain name or preparation to use the disputed domain name demonstrate no intent to use it in connection with a bona fide offering of goods or services.
The Complainant further argues that the Respondent has registered and used the disputed domain name in bad faith.
The Complainant further argues that it is clear that the Respondent had the Complainant's name and trademark in mind when registering the disputed domain name.
The Complainant further argues that its trademark is arbitrary and has no common or general meaning in any language, and the disputed domain name is not generic or descriptive.
The Complainant further argues that the Respondent uses a privacy service in order to keep its identity secret and that the use of such service, although not actionable per se, is a further evidence of bad faith registration and use.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) 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."
The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of November 8, 2016.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond to the Complainant's language request.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The disputed domain name was registered under the generic Top-Level Domain ("gTLD") ".store" which is meaningful in English;
(iii) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comment on the language of the proceeding, or to provide any response to the Complaint;
(iv) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the BASF mark. For example: International trademark registration number 638794, with the registration date of May 3, 1995; International trademark registration number 909293, with the registration date of October 31, 2006; European Union trademark registration number 000098020, with the registration date of October 15, 1998, and many more.
The disputed domain name reproduces entirely the Complainant's BASF trademark with the addition of the gTLD ".store".
The addition of the gTLD suffix ".store" does not have the capacity to distinguish the disputed domain name from the Complainant's BASF registered trademark and is disregarded when comparing the disputed domain names with the Complaint's trademark. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the BASF trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the BASF trademark since at least the year 1988. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name is identical to the Complainant's trademark. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Also, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent's bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In this case there are appropriate circumstances, including the fact that the Respondent use a privacy shield service in order to keep its identity secret, there is no possible use of the disputed domain name which would not end up in violation of the Complainant's trademark, said trademark is comprised of an arbitrary word, and the Respondent's failure to use the disputed domain name and answer the Complaint. These circumstances are considered to be indications of the Respondent's bad faith registration and use of the disputed domain name.
Having regard to the evidence, the Panel finds that the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant and profit therefrom. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith".
Based on the evidence that was presented to the Panel, including the Complainant's registered trademark, the use of the Complainant's trademark in the disputed domain name, the passive use of the disputed domain name and the Respondent's failure to answer the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: January 4, 2017
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