The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Xiang Gang Huang Jia Ji You Xian Gong Si of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2017. On November 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 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 November 17, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 17, 2017, 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 both Chinese and English, and the proceedings commenced on November 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on January 3, 2018. 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, with operations in more than 80 jurisdictions across Europe, Asia, Australia, the Americas and Africa. It is listed on the Stock Exchanges of Frankfurt, London and Zurich. The expansion of its business worldwide has seen investments of EUR 5.6 billion between 1990 and 2005, in major Chinese hubs such as Nanjing and Shanghai.
The Complainant owns more than 1,500 trade mark registration rights for the trade mark BASF. Its international registrations include International Registration Nos. 638794 of May 3, 1995 and 909293 of October 31, 2006. The BASF trade mark has been found to be well known by WIPO UDRP panelists (see e.g., BASF SE v. Jim Welsh,WIPO Case No. D2010-2000 and BASF SE v. jin liu/liujing,WIPO Case No. D2014-1889).
The Complainant also holds numerous domain name registrations incorporating the BASF trade mark, e.g., , , , and .
The disputed domain name was registered on April 15, 2017. It has not been used by the Respondent but is being offered for sale. 5. Parties’ Contentions A. Complainant
1. The disputed domain name is identical or highly similar to the BASF trade mark in which the Complainant has rights; it fully incorporates the BASF trade mark of the Complainant.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name and has not acquired any trade mark rights in the term “Basf”. The disputed domain name was registered without any license or authorization from the Complainant, and neither is there any commercial link between the parties. The Respondent has not made preparations to use the disputed domain name in connection with a bona fide offer of goods or services.
3. The disputed domain name was registered and is being used in bad faith. The BASF trade mark is so well known that it is inconceivable that the Respondent was not aware of the Complainant’s earlier rights in the trade mark BASF. The Respondent’s choice of the disputed domain name cannot have been accidental but was in fact influenced by the fame of the BASF trade mark. Internet search engine searches show search results which relate only to the Complainant. Moreover, it is not conceivable how the Respondent would be able to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is a “well-known cybersquatter” and the owner of several domain names comprising famous trade marks or the names of famous people (e.g., , , and . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding
The registration agreement was in Chinese but the Complainant requested for English to apply. The Complainant pointed out that the disputed domain name was registered under a new generic Top-Level Domain (“gTLD”) which has a meaning in English, “.site”. A reverse WhoIs search shows that the Respondent owns many domain names containing English words, e.g., , , , , , , , and . These facts indicate that the Respondent is in a position to understand the English language. On the other hand, the Complainant is not able to communicate in Chinese, and to have the Complainant translated into Chinese would involve additional expense and cause a delay.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that: “[u]nless 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”. Paragraph 10(c) of the Rules stipulates that “The Panel shall ensure that the administrative proceeding takes place with due expedition”.
Considering the choice of the disputed domain name which relates to an English-language gTLD and the other domain names found to be associated to the Respondent, the Panel is persuaded that the Respondent is sufficiently familiar with the English language, and would not be prejudiced by the Panel’s decision in this regard. If the Respondent had any concern or objections in this regard, it could have raised these to the Center, but did not. Neither did it choose to respond in Chinese in this entire proceeding. To require the Complainant to have the Complaint and annexes translated into Chinese would invariably lead to a delay in the proceeding, which is not merited in the circumstances of this case.
The Panel therefore concludes that it would be appropriate for English to be adopted as the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the BASF trade mark in which the Complainant has shown to have rights. The only difference lies in the gTLD “.site”, which is a technical requirement and as such is disregarded under the first element confusing similarity test.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not authorize the Respondent to use the BASF trade mark or to register the disputed domain name. There is no evidence that the Respondent has been known by the name “basf”, or that there has been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. In fact, BASF is such a well-known trade mark that it is indeed inconceivable for the Respondent to be able to assert any right or legitimate interest in the disputed domain name.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, are considered to be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trade 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 domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 a 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.
In view of the fame of the Complainant’s mark, even in China, where the Respondent is located, and the fact that the Complainant has already secured the domain name, it is highly unlikely that the Respondent was not aware of the Complainant and its BASF trade mark at the time it registered the disputed domain name. The fame of the BASF trade mark and the Respondent’s silence in this proceeding is also indicative that the Respondent had registered the domain name for the purposes described in paragraphs 4(b)(i) and (iv) of the Policy. The Respondent’s registration of other domain names containing well-known marks, e.g., DELL, FACEBOOK, FORBES, SAMSUNG, ALIBABA, HERMES and SNAPCHAT, also reflects a pattern of conduct on the part of the Respondent (see paragraph 4(b)(ii) of the Policy).
The Panel therefore finds that the third element of paragraph 4(a) 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.
Francine Tan
Sole Panelist
Date: January 7, 2018
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