The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Hee Chowming of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (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 January 9, 2017. On January 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 9, 2017, 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 January 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of the Respondent's default on February 6, 2017.
The Center appointed Michael D. Cover as the sole panelist in this matter on February 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. The Panel was granted additional time, so that the Decision was due on March 22, 2017. 4. Factual Background
The Complainant is BASF SE and is part of the BASF Group, a very large international chemical group, which is listed on the Frankfurt Stock Exchange, the London Stock Exchange and the Zurich Stock Exchange. The BASF Group has operations in more than 80 countries and has numerous production sites around the world.
The Complainant, BASF SE, is the proprietor of numerous registered trademarks for BASF in several jurisdictions, in particular, the registered trademarks for BASF set out in Annex 5 to the Complaint, the earliest being registered on May 3, 1995, more than 20 years before the registration of the Disputed Domain Name. These cover, inter alia, China.
The Complainant is also the holder of numerous domain names incorporating its BASF trademark, which it sets out in Annex 9 to the Complaint.
The Respondent is Hee Chowming, located in Hong Kong, China.
The Disputed Domain Name was registered on July 13, 2015, and does not resolve to an active website. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant's trademark BASF. The Complainant submits that the trademark BASF is a famous trademark and cites various UDRP decisions where panels have found that the trademark BASF is well-known and enjoys widespread reputation and a high degree of recognition as a result of its fame and notoriety.
The Complainant goes on to note that the Disputed Domain Name incorporates the Complainant's trademark BASF in its entirety.
The Complainant also notes that the addition of a generic Top-Level Domain ("gTLD"), such as ".com", or a nondistinctive element, such as "de", does not affect the assessment that the Disputed Domain Name is confusingly similar to a particular trademark.
The Complainant concludes that the Disputed Domain Name is confusingly similar to its trademark BASF and that the requirement of the Policy's first condition is met. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In particular, the Respondent has not at any time been commonly known by the Disputed Domain Name and has acquired no trademark or service mark rights in respect of the trademark BASF.
The Complainant notes that the Respondent is using the Complainant's trademark BASF without any license or authorization from the Complainant. The Complainant submits that this is strong evidence of a lack of rights or legitimate interest in respect of the Disputed Domain Name and nor has the Respondent made preparations to use the Disputed Domain Name in connection with a bona fide offer of goods or services. Indeed, the Complainant notes that the Disputed Domain Name is not in use at all.
The Complainant also submits that the Respondent is not making any legitimate noncommercial of fair use of the Disputed Domain Name.
The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the second condition under the Policy should be deemed satisfied. Registered and Used in Bad Faith
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant submits that its BASF trademark is so widely well-known that the Respondent must have been aware of the Complainant's earlier rights. Indeed, the Complainant submits that the Respondent must have had the Complainant's trademark BASF in mind when the Respondent registered the Disputed Domain Name. This is supported by the fact that the Complainant's trademark BASF is registered, inter alia, in China, which is the home territory of the Respondent.
The Complainant also submits that any use of the Disputed Domain Name would amount to an infringement of the Complainant's registered trademark BASF and that the Respondent has engaged in a pattern of behavior of registering domain names that reproduce well-known trademarks and cites various examples from the reverse WhoIs search which is found in Annex 14 to the Complaint.
The Complainant cites Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003 in support of its contention that the Panel should look at all the circumstances in assessing bad faith, having noted that the use of a well-known trademark and no response to the Complaint may constitute the registration and use of a disputed domain name in bad faith.
The Complainant concludes that the third condition under the Policy is satisfied. Remedy Requested
The Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to its trademark, in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established that it has rights in its trademark BASF. The Complainant has registered rights in its trademark which is registered in several jurisdictions.
The Panel also accepts the Complainant's submission that the Disputed Domain Name is confusingly similar to its trademark BASF. BASF is the dominant part of the Disputed Domain Name and is incorporated in its entirety into the Disputed Domain Name. As noted by the Complainant, it is well established that the addition of a gTLD or a nondistinctive element such as "de" is not sufficient to avoid confusing similarity.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark BASF, in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, the Panel accepts that the Complainant has not authorized or licensed the Respondent to use its trademark BASF and that the Respondent is not affiliated to the Complainant.
It is a reasonable inference that the Respondent was aware of the existence of the Complainant when it registered the Disputed Domain Name. This is because the Complainant's trademark is well-known and registered in several jurisdictions, including in China, where the Respondent is located. There is no evidence that any use of the Disputed Domain Name has taken place, which could be described as legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers. There is no evidence that the Respondent has used or prepared to use the Disputed Domain Name before this dispute arose and nor is there any evidence that the Respondent was commonly known by the Disputed Domain Name.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that element 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel accepts the submissions of the Complainant on this aspect and finds that the Disputed Domain Name has been registered and is being used in bad faith.
The Panel accepts, on the balance of probabilities that the Respondent has been making passive use of what the Panel accepts is a well-known trademark BASF and that this constitutes registration and use in bad faith.
The Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith and the element 4(a)(iii) of the Policy has been satisfied. 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.
Michael D. Cover
Sole Panelist
Date: March 22, 2017
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