The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Kelly Coleman, Team Money Trees of Belleair Beach, Florida, United States of America (“US” or “United States”). 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 December 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2018. At the Respondent’s request, the due date for Response was extended to January 6, 2018, in accordance with paragraph 5(b) of the Rules. By stipulation between the Parties, in accordance with paragraph 5(e) of the Rules, the due date for Response was further extended to January 24, 2018. The Response was filed with the Center on January 24, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 5, 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 a large chemical company, publicly listed on the Frankfurt, London, and Zurich stock exchanges. According to the Complaint, it employees 112,000 people around the world, supplying its products in over 200 countries. The Panel also notes that the Respondent points out that the Complainant, or its predecessor, exited the consumer electronics business in the 1990s.
In Annex 4 of the Complaint, the Complainant has listed a large number of trademarks registered in many countries around the world for BASF. The Complaint also draws attention particularly to two International Registrations (“IR”), details of which are provided in Annex 5:
- IR No. 638794 for BASF, registered on May 3, 1995, for a range of goods in international classes 3, 5, and 30, and designating 48 countries; and
- IR No. 909293 for BASF, registered on October 31, 2006, for a range of goods and services in international classes 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, and 44, and designating 76 countries. (Collectively, “International Trademarks”).
As the Respondent points out, neither registration extends to the United States. The Respondent also points out there are apparently six live registrations for BASF on the United States Trademarks Register, four of which predate the International Trademarks. These are:
- US Trademark No. 790582 for BASF, registered on June 8, 1965, for fertilizers in International Class 1;
- US Trademark No. 791033 for BASF, registered on June 15, 1965, in respect of magnetic tapes in International Class 9;
- US Trademark No. 809060 for BASF, registered on May 31, 1966, for plastics, dispersion and solutions of plastics and synthetic resins, chemicals and chemical compositions – namely dyestuffs, pesticides, tanning agents and anticorrosives in International Class 1;
- US Trademark No. 1496364 for BASF, registered on July 19, 1988, in respect of a range of goods in International Classes 1, 2 and 3;
- US Trademark No. 3786543, registered on May 11, 2010, for a wide range of goods and services in International Classes 1 – 7, 9, 16 – 19, 22, 24, 27, 28, 31, 32, 35 – 37, 39, 41, 42 and 44; and
- US Trademark No. 4139697 for BASF, with a figurative element, registered on May 8, 2012, for a range of goods in International Classes 1 – 5, 9, 17, 19 and 31, and a range of research, consultation, analysis and design services in International Class 42.
Contrary to the Respondent’s submission, each of these is listed in Annex 4. All (except US Trademark No. 791033) are shown on the Trademark Electronic Search System provided online by the US Patent and Trademark Office as owned by the Complainant. US Trademark No. 791033 is shown on the US Register as owned by BASF Aktiengesellschaft Corporation of Ludwigshafen in the Federal Republic of Germany. The address for this company recorded in the Register is the same as the address for the Complainant recorded in the Register for each trademark actually in its name.
The Respondent registered the 84 disputed domain names on August 10, 2017. So far as appears from the record in this proceeding, none has ever resolved to an active website. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that to divest the Respondent of one or more of the disputed domain names, the Complainant must demonstrate each of the following:
(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 that disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the two International Trademarks and the six United States Trademarks referred to in section 4 above. The Panel includes US Trademark No. 791033 in that finding based on the close resemblance of the owner’s corporate name to that of the Complainant, their shared physical address and the inclusion of the trademark in Annex 4 of the Complaint. Taking these matters into account, the Panel considers it appropriate to infer that they are either the same company or part of the same corporate group.
The second stage of this inquiry requires a visual and aural comparison of each disputed domain name to the proven trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
Each of the disputed domain names consists of the string “basf” and another word or term in ordinary usage or common parlance, although in at least one case – – the additional element appears to have been misspelled.
The Respondent says first that the evidence shows the Complainant does not have exclusive rights to BASF which is, after all, a four-letter initialism. Secondly, the Respondent argues that this requirement under the Policy is based on the United States Lanham Act, 15 US Code §1125 and must be interpreted in accordance with the United States courts’ interpretation of that provision.
The Respondent’s first argument is based on the Complainant’s trademark consisting of four letters, the registration of United States Trademark No. 791033, and the registration of United States Trademark No. 5085298 for OATSBASF by Shenzhen Paipai Science and Technology Co. Ltd., for mobile electric power generators, dataprocessing apparatus, computer bags, cabinets for loudspeakers, headphones, carrying cases for cell phones, stands adapted for mobile phones and cases especially made for photographic apparatus and instruments, apparently in International Class 9.
The Panel does not accept that these arguments apply under this requirement of the Policy. The Policy operates in a global context. It regulates conduct by persons who may be in a different country to the complainant in any given case. The legal approach taken in one jurisdiction to issues of infringement may have common or similar underpinnings to those in other jurisdictions, but there are differences from country to country and jurisdiction to jurisdiction. In addition, the Policy is directed to abusive registration of trademarks as domain names and not to traditional trademark issues of confusion as to source giving rise to infringement. Accordingly, the Policy prescribes its own independent standard informed by the need to address a global context and the particular circumstances of individual cases. Therefore, as noted above, jurisprudence under the Policy has developed so that the first requirement is a standing requirement involving an essentially side by side visual and aural comparison. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the generic Top-Level Domain (“gTLD”) “.com”, each of the disputed domain names consists of the Complainant’s trademark and a descriptive term (and in one case, a typo). Accordingly, the Panel finds that each disputed domain name is confusingly similar to the Complainant’s trademark. See also WIPO Overview 3.0, section 1.8. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant points out that none of the disputed domain names is derived from the Respondent’s name. The Complainant also has not licensed or authorised the Respondent to use its trademark in any domain name. Further, the Complainant points out that none of the disputed domain names is in use. These factors, with the length and scope of the Complainant’s trademark registrations, typically satisfy the requirement of a prima facie case under the second requirement.
To rebut this case, the Respondent invokes the fair use doctrine under the Lanham Act, 15 US Code §1125(a)(3)(A). The Respondent appears to have used the Complainant’s sealant products in his house. According to the Respondent, the products turned out to be defective. He says further that the Complainant’s local arm, BASF Corporation, promised him it would repair the defective products at its own costs if the solution it proposed did not work out. The corrective works did not resolve the problems and, according to the Respondent, BASF Corporation has not honoured its promise. This has led to a number of actions on the part of the Respondent.
He has written to the the chairman of the Complainant and other senior officers seeking their intervention.
In 2012, he registered the domain name and, apparently, some 100 other domain names with “basf” as their root.
Apparently, the registrations of the other domain names lapsed in circumstances which are not entirely clear. However, it appears that the Respondent consciously decided to let them go. According to the Response, new information caused him to decide to “repurchase” the domain names. The disputed domain names result from that choice.
The domain name does resolve to an active website. The Respondent says it has done so since he registered it in 2012. It is an extensive site. A prominent heading on the home page conveys its intent and provides an indication of its content:
“This website © was developed as a public service, to warn and caution people – ‘worldwide’ regarding sealant failures of Sonneborn® SONOLASTIC® 150 TINT BASE and other BASF - Sonneborn® sealants.”
The Respondent also appears to have registered and pointed to the same website content the domain name .
It is not part of the Panel’s role to decide whether the Respondent’s grievances are justified or the Complainant and its products are being unfairly maligned. Nor does the Panel have sufficient information on which to make such a determination. What the website shows, however, is that the Respondent appears to have a genuine grievance with the Complainant or members of its corporate group.
That may provide a sufficient basis for the Respondent to have rights or legitimate interest in the domain names and . The domain names and , however, are not disputed domain names in this proceeding.
The question is whether what appears to be a genuinely held grievance can be relied on by the Respondent to support his claim to rights or legitimate interest in 84 other, disputed domain names. In the Panel’s view, in the circumstances of this case, the answer is not.
First, the Panel notes that at least some of the disputed domain names could arguably be seen as suitable for a grievance site. Examples could be , . Other disputed domain names do not so plainly signal their potential grievance-type subject matter. For example, , , , .
This is particularly important since, as already noted, none of the disputed domain names is actually in use. It is impossible to assess how the Respondent is using them and whether or not that use is genuinely as a grievance site.
That the Respondent is operating what appears to be a genuine grievance website at and and has been doing so for many years lends some credibility to the Respondent’s claim.
However, it appears that the Respondent has something very different planned. The Respondent says that, having let the previous 100 domain names go, he discovered “new information” which suggested he repurchase them. What the new information was has not been disclosed. The Respondent says there is:
“work product that has been ongoing from the time I purchased the disputed domain names … which has not been completed and shared wit [sic] [the Complainant] which will occur soon. At this point all data related to that communication is pending is [sic]considered confidential.”
The Respondent has provided no detail about what work, if any, has been done; what the nature of the website will be or how many websites are in contemplation. The suggestion is that the website or websites will be grievance sites like the one at but, presumably, directed to some other or different topic(s).
Moreover, when the Respondent was corresponding with the Complainant’s executives in 2012 about his dispute, he pointed out that their failure to agree to his demands in a time frame he said they had promised meant he had removed the password protection from the website at so it became publicly and freely accessible. At the same time he made three other websites about the same subject publicly available. In his email dated March 13, 2012, he went on to state:
“l have 12 more, ready to go but will hold off launching the next dozen for a bit but not forever. Enough time has been wasted and it is time to resolve this controversy!”
The Panel considers that statement goes well beyond airing his grievance as a public warning to others and seeks to use the threat of much wider scale action to resolve his demands. There is plainly considerable scope for the Respondent to use the large number of disputed domain names in similar fashion. That use of domain name registration in terrorem appears to the Panel to go well beyond legitimate noncommercial or fair use under the Policy.
Accordingly, the Panel concludes that the Respondent has not rebutted the Complainant’s prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that each of the disputed domain names has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given the justification that the Respondent has advanced for registering the disputed domain names, it is plain he was well aware of the Complainant’s trademarks. The point of registering the disputed domain names was to ensure that they were closely identifiable with the Complainant and its trademark.
As the Panel has found in section 5B above that the Respondent did not have rights or legitimate interests under the Policy in the disputed domain names, their registration with that knowledge and (threatening) intent is registration in bad faith under the Policy.
In the circumstances of this case, the registration of such a large number of disputed domain names and passively holding them over the head of the Complainant, as it were, constitutes use in bad faith consistently with the principles derived from Telstra Corporation Limited v Nuclear MarshmallowsWIPO Case No. D2000-0003. Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith. 6. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: February 19, 2018
Full & Egal Universal Law Academy