The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Jiangzheng Yang, Yangjiangzheng of Bazhong, Sichuan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with S LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2017. On January 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2018, 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 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2018. On the same day, the Respondent sent an email communication to the Center, acknowledging receipt of the Notification of Respondent Default.
The Center appointed Rachel Tan as the sole panelist in this matter on March 6, 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, part of the BASF Group, is one of the largest chemical companies in the world. It has customers in over 200 countries and supplies products to a wide variety of industries. Between 1990 and 2005, the Complainant invested EUR 5.6 billion in Asia, which included sites in Nanjing and Shanghai, China.
The Complainant trades under the BASF mark, and owns over 1,500 BASF trade marks worldwide. In particular, the Complainant holds the following two International Registrations designating a large number of jurisdictions, including China:
BASF No. 638794, registered May 3, 1995, in classes 03, 05 and 30;
BASF No. 909293, registered October 31, 2006, in classes 01, 02, 03, 04, 05, 06, 07, 09, 10, 12, 16, 17, 18, 19, 22, 24, 25, 27, 28, 29, 30, 31, 32, 35, 36, 37, 39, 41, 42 and 44.
Ciba AG was a chemical company based in Switzerland. In 2008, Ciba AG was acquired by the Complainant who now owns registrations for the CIBA trade mark, including two International Registrations designating various jurisdictions:
CIBA POLY-MEC No. 763510, registered July 16, 2001, in class 09;
CIBAFAST No. 618413, registered May 3, 1994, in class 01.
The Complainant holds numerous domain names incorporating the BASF trade mark, both within generic Top-Level Domains (“gTLDs”) and country code Top-Level-Domains (“ccTLDs”), particularly in Asia: , , , and many others.
The disputed domain name was registered on November 4, 2017. The disputed domain name resolves to a website displaying adult content. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trade marks, the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established rights to the BASF and CIBA trade marks.
The test for confusing similarity involves a reasoned but relatively straightforward comparison between a Complainant’s trade mark and the disputed domain name.
In this case, the disputed domain name is comprised of the trade marks BASF and CIBA in their entireties, conjoined by a hyphen. The use of a hyphen and lower case is inconsequential to the assessment of identity or confusing similarity. It is permissible for the Panel to ignore the generic Top-Level Domain suffix, in this case “.com”. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant needs to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Since the overall burden of proof rests with the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such appropriate allegations or evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited.
In this case, the Complainant has established registered rights in the BASF and CIBA trade marks which well predate the registration of the disputed domain name. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
(a) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the terms “basf” or “ciba”;
(b) There is no indication to show that the Respondent is commonly known by the disputed domain name or has acquired trade mark rights to the term “basf” or “ciba”;
(c) The Respondent has reproduced not one but two of the Complainant’s trade marks without license or authorization showing a lack of legitimate intent;
(d) The disputed domain name resolves to an active website showing graphic adult content. Such behaviour on the part of the Respondent manifestly demonstrates that the disputed domain name is not being used in connection with a bona fide offering or goods or services; and
(e) The Respondent has never been granted authorization to use the Complainant’s BASF or CIBA trade marks, nor is the Respondent commercially linked to the Complainant.
Accordingly, the Complainant has satisfied 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 non-exhaustive circumstances which would constitute evidence of registration and use of a domain name in bad faith. The Panel concludes that based on the evidence submitted and all other relevant facts and circumstances, the Panel is satisfied that the Respondent has registered and used the disputed domain name in bad faith. In reaching its conclusion, the Panel had regard to the following circumstances:
(a) The Complainant’s BASF and CIBA trade marks and domain names were registered well before the registration date of the disputed domain name. The Complainant has made extensive use of the BASF trade mark globally, including in China, where it has sizeable operations. A simple Internet search would have yielded a considerable amount of information about the Complainant, the acquisition of Ciba AG, the worldwide reputation of its brands, and its business activities. It is thus inconceivable that the Respondent was unaware of the Complainant’s trade mark rights at the time of registering the disputed domain name.
(b) There is no evidence to show that the Respondent is using the disputed domain name in good faith for the genuine offering of goods or services. In stark contrast, the disputed domain name is currently used to attract Internet uses to a pornographic site. Previous UDRP panels have uniformly held that regardless of the motivation of the Respondent, the diversion of domain names to a pornographic site is itself consistent with the finding that the domain name was registered and is being used in bad faith. See Six Continents Hotels, Inc. v. Sewern Nowak,WIPO Case No. D2003-0022 () and numerous other UDRP decisions.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account the Respondent’s lack of rights of legitimate interests, the manner in which the disputed domain name is being used, the Panel concludes that the Respondent has clearly registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied 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.
Rachel Tan
Sole Panelist
Date: March 19, 2018
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