The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is zhenzhong li of Chenzhou, Hunan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2016. The same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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. On December 20, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 English and Chinese, and the proceedings commenced on December 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 17, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 20, 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. 4. Factual Background
The Complainant is a chemical company that supplies products to a wide variety of industries in over 200 countries and employs more than 112,000 people around the world. The company has major activities in Asia, including China. The Complainant owns multiple trademark registrations for BASF worldwide. These include International registration number 638794, registered on May 3, 1995 specifying goods in classes 3, 5 and 30, and International registration number 909293, registered on October 31, 2006 specifying goods and services in multiple classes. Both these registrations designate multiple jurisdictions, including China, and they remain in effect. The Complainant has registered multiple domain names including where it provides information about itself and its products.
The Respondent is an individual allegedly located in Hunan, China and the registrant of the disputed domain name. The disputed domain name was created on September 6, 2016. The disputed domain name resolves to a website in Chinese displaying links to gambling websites. A slogan at the top of the website announces that the operator brings together the best entertainment brands. At the time of filing the Complaint, the website also displayed copies of pages from a telecommunications company website providing information on various products but those pages no longer appear at the time of this decision. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to its BASF trademark. The disputed domain name differs from the trademark by the addition of a hyphen and the term "cn" which may easily be understood as short for "China". The use of lower case letter format and the addition of the generic Top-Level Domain ("gTLD") ".com" are not significant in determining whether the domain name is identical or confusingly similar to the mark. The average Internet user will likely believe that the disputed domain name is used by the Complainant to sell its products in China.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The domain name resolves to a website unrelated to the Complainant that contains advertisement banners to generate revenue. The Respondent has never been granted authorization, license or any right whatsoever to use the Complainant's BASF trademarks. The Respondent is not commercially linked to the Complainant.
The Complainant argues that the disputed domain name was registered and is being used in bad faith. The BASF trademark is so well-known that it is inconceivable that the Respondent was unaware of the Complainant's earlier rights to that mark. The Respondent had the Complainant's name and trademark in mind when registering the disputed domain name. A simple online search yields results only related to the Complainant. Any use of the BASF trademark would amount to trademark infringement and damage to the repute of the trademark. The BASF trademark has no common or general meaning in any language, and the disputed domain name is not generic or descriptive. The Respondent also owns other domain names reproducing trademarks that are well-known in their respective fields. The Respondent has engaged in a pattern of behaviour preventing trademark holders from reflecting their trademark within the corresponding domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that "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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent owns several other domain names containing English words, that English is the most common language used on websites with which the Respondent is associated, and the Complainant is not able to communicate in Chinese. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. Having received notice of the Complaint in Chinese and English, the Respondent has not expressed any wish to respond to it or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the BASF trademark.
The disputed domain name incorporates the Complainant's BASF trademark in its entirety, which is the dominant element of the disputed domain name.
An additional element in the disputed domain name is "-cn", which is an abbreviation for China. As a mere geographical term, this additional element is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768.
The only other additional element is the gTLD ".com". A gTLD suffix is generally disregarded in assessing the confusing similarity of a domain name to a trademark. See 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.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use 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) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the 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 the trademark or service mark at issue.
As regards the first circumstance above, the disputed domain name is being used with a website that displays links to gambling websites. The Panel has already found that the disputed domain name is confusingly similar to the Complainant's BASF trademark. The Complainant informs the Panel that the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant's BASF trademark and that the Respondent is not commercially linked to the Complainant. BASF is not a dictionary word. Nothing on the website indicates a legitimate reason why the Respondent would choose to register a domain name including the letters "basf". These facts indicate that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services covered by the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance above, the Respondent's name is recorded in the Registrar's WhoIs database as "zhenzhong li". The disputed domain name resolves to the website of a business named Liangshanbo (a play on the name of a Chinese folk tale character and a word for gamble). The website displays another domain name in a banner and advertisements for third-party websites. None of these names is "basf-cn" or "basf". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance above, the disputed domain name resolves to a website displaying links to commercial websites. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The Respondent registered the disputed domain name in 2016, years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The Complainant has made extensive use of its BASF trademark. The top search result for the term "basf" in the Baidu Internet search engine is the Complainant's official website. The disputed domain name incorporates the Complainant's BASF trademark in its entirety as its dominant element. BASF is not a dictionary word. Nothing on the website to which the disputed domain name resolves indicates a reason why the Respondent would choose to register that combination of letters other than to target the reputation of the Complainant's trademark. The only additional element apart from the gTLD is "-cn" which gives the false impression that the disputed domain name indicates the Complainant's Chinese website. This all indicates to the Panel that the Respondent was aware of the Complainant and its BASF trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant's BASF trademark, in connection with a website that displays links to gambling websites. The disputed domain name operates by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website. This use is intentional and either for the commercial gain of the Respondent or the operators of the gambling websites, or both. In any event, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: February 2, 2017
Full & Egal Universal Law Academy