The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Liu Lei, Tian Jin Ba Si Fu Shu Zhi Ke Ji You Xian Gong Si of Tianjin, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Guangdong JinWanBang Technology Investment Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2017. On February 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 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.
On March 8, 2017, 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 in both Chinese and English of the Complaint, and the proceedings commenced on March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2017.
The Center appointed Sok Ling MOI as the sole panelist in this matter on April 24, 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 one of the largest chemical companies in the world and is listed on the Frankfurt Stock Exchange, London Stock Exchange and Zurich Stock Exchange. The Complainant has customers in over 200 countries and employs more than 112,000 people around the world.
The Complainant owns more than 1,500 trade mark registrations for BASF worldwide, including the following:
Jurisdiction
Mark
Registration No.
Class No.
Registration Date
International designating China etc.
BASF
638794
3, 5 & 30
May 3, 1995
International designating China etc.
BASF
909293
1, 2, 3, 4, 5, 6, 7, 9, 10, 12, 16, 17, 18, 19, 22, 24, 25, 27, 28, 29, 30, 31, 32, 35, 36, 37, 39, 41, 42 & 44
October 31, 2006
The Complainant also owns several domain name registrations incorporating its trade mark BARF, including the following:
-
-
-
-
The disputed domain name was registered on November 4, 2015, long after the Complainant had used and registered its trade mark BASF. According to the evidence submitted by the Complainant, the disputed domain name resolved to a website which purported to offer competitive products and services under the company banner of “Tianjin BASF Resin Technology Co Ltd” which is described as a “world’s leading water treatment chemicals resin brand” based in China. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trade mark BASF, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. The Complainant requests for 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
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and
(b) according to the evidence submitted by the Complainant, the website to which the disputed domain name resolves contains contents in both English and Chinese.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has failed to do so; and
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in BASF by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant’s trade mark BASF in its entirety. The addition of the dash “-” and the letters “tj” does not reduce the confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of proof to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The Respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974)
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the BASF trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent has acquired any trade mark rights in the name “BASF”.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name.
According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website that purported to offer competitive products and services under the company banner of “Tianjin BASF Resin Technology Co Ltd” which was described as “the world’s leading water treatment chemicals resin brand” based in China. It is open to the Respondent to furnish evidence to establish its right to use BASF as part of its company name despite the Complainant’s prior trade mark rights for overlapping products and services. Since the Respondent has failed to respond, the Panel determines that the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(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 Panel accepts that the Complainant’s BASF trade mark enjoys a significant reputation in many countries worldwide as well as a strong Internet presence. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the BASF trade mark and its extensive use by the Complainant. As such, a presumption arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name. Registration of a domain name that incorporates a complainant’s long-established well-known trade mark suggests opportunistic bad faith.
The Panel accepts the Complainant’s assertion that the element “tj” of the disputed domain name may be understood as referring to the Chinese city of Tianjin, hence leading Internets users into the false belief that the Respondent website “www.” is the Tianjin distributor of the Complainant’s BASF products and services. This has the potential to divert Internet users looking for the Complainant’s products to the Respondent’s website. As the Respondent is purportedly using its website to offer competitive products and services (namely, resin and water disposal products and services), it can be deemed a competitor. The Respondent’s use of the Complainant’s trade mark BASF and its Chinese phonetic equivalent “巴斯夫” on its website further creates an impression of the existence of an affiliation with the Complainant where there is none. Such use of the disputed domain name not only misleads the public but also causes disruption to the Complainant’s business. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iii) of the Policy are applicable to the present case.
The Panel further determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Furthermore, efforts to send the Written Notice to the Respondent at the physical address provided by the Respondent to the Registrar (and in turn to the Center) failed which suggests that the Respondent had provided false contact details.
The Respondent has not filed a response to deny the Complainant’s allegations of bad faith. In view of the Panel’s above finding that the Respondent lacks rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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.
Sok Ling MOI
Sole Panelist
Date: May 10, 2017
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