Complainant is BASF SE, Germany, represented by IP Twins S.A.S., France.
Respondent is Prakash Yadav, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2021. On January 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 15, 2021. The Center appointed Phillip V. Marano as the sole panelist in this matter on March 2, 2021. 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 Complainant is a multinational chemical company and the largest producer of chemicals in the world, with customers in over two-hundred countries. Complainant owns valid and subsisting registrations for the BASF trademark in many of these countries, including in Germany, India and the United States of America, with the earliest priority dating back to 1952. Respondent registered the disputed domain name on October 29, 2020. At the time of this Complaint, the disputed domain name did not resolve to website content, but was configured with MX records enabling email services. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the BASF trademark and has adduced evidence of trademark registrations in numerous countries around the world. The disputed domain name is confusingly similar to Complainant’s BASF trademark, according to Complainant, because the trademark is recognizable in the disputed domain name with the addition of the geographical term “India”, which falsely suggests that Respondent is the local provider of Complainant’s products in India. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the absence of any trademark or service mark rights owned by Respondent; the lack of any license or authorization from Complainant for Respondent to use the BASF trademark; the lack of any evidence that Respondent is known by Complainant’s BASF trademark; and evidence establishing Respondent’s illicit use of the disputed domain name to conduct email phishing activities. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the fame of the BASF trademark, as recognized by prior UDRP decisions, making it inconceivable that Respondent ignored Complainant’s earlier rights in the BASF trademark and making any bona fide use of the disputed domain name impossible; and evidence establishing phishing activities perpetrated by Respondent using the disputed domain name. Complainant provided as evidence at least one fraudulent email to one of Complainant’s logistics partners pretending to be from the “Head [of] Export and Import Operations” at “BASF INDIA LIMITED”. The email included Complainant’s BASF THE CHEMICAL COMPANY logo and requested rate information and offered, “We are interested to start a deal with your transport company, hope you are also interested to sign a deal with us.” B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i) the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant has registered the BASF trademark in numerous countries with priority dating back to 1952, nearly seventy years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the BASF trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s BASF trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s BASF trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 . The confusing similarity is not dispelled by combination with the descriptive geographic term “India”. WIPO Overview, section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”); OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam,WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”). In view of Complainant’s prior registration for the BASF trademark in numerous countries, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1. It is evident that Respondent, identified by registration data for the disputed domain name as Prakash Yadav, India, is not commonly known by the disputed domain name or Complainant’s BASF trademark. UDRP panels have categorically held that use of a domain name for illegal activity—including the impersonation of the complainant, email phishing schemes, and other types of fraud—can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including phishing activities. WIPO Overview 3.0, section 2.13. See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”). Here, Complainant has submitted an example of an email sent by Respondent from an “@basfindia.com” email address to one of Complainant’s logistics partners, wherein Respondent purports to be the “Head [of] Export and Import Operations” at “BASF INDIA LIMITED”. The email misappropriates Complainant’s logo, impersonating Complainant to seek potentially confidential information about exportation and importation rates. Whether such conduct constitutes simple impersonation, attempted trade secret misappropriation, or is merely an entry to a more elaborate phishing scheme is inconsequential because all of the foregoing are examples of illegal activity that can never confer rights or legitimate interests under the second element of the Policy. To this end, the second and third elements of the Policy may be assessed together where clear indicia of bad faith suggest that there cannot be any Respondent rights or legitimate interests. WIPO Overview 3.0, section 2.15. In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name and evidence establishing Respondent’s use of the disputed domain name in furtherance of illegal activity, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i) Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The use of others’ trademarks to extort information from unsuspecting and unwary people, by using the disputed domain name for phishing activity, is considered abusive registration of the disputed domain name under the Policy.See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser, WIPO Case No. D2009-1383; WSI Holdings Ltd. v. WSI House, WIPOCase No. D2004-1089 (“Respondent appears to be engaged in “phishing” for mistaken potential employees of the Complainant … Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy.”); See also Go Daddy Operating Company, LLC v. Wu Yanmei, WIPO Case No. D2015-0177 (“emails sent by the respondent from domain names using the complainant’s trademark in an attempt to obtain complainant’s customer information was held to be use of the disputed domain name for a phishing scheme and consequently bad faith under the Policy”); and AB Electrolux v. Piotr Pardo,WIPO Case No. D2017-0368 (“engaging in fraudulent email phishing activities through unauthorized use of a trademark for obtaining data or deriving information is construed as bad faith under the Policy”). As discussed above, email evidence submitted by Complainant establishes Respondent’s bad faith registration and use of the disputed domain name in furtherance of impersonation at best, and attempted trade secret misappropriation or an elaborate phishing scheme at worst. In view of Respondent’s attempted impersonation of Complainant, and Complainant’s credible evidence that Respondent uses the disputed domain name to send phishing emails, the Panel concludes that Complainant has established the third element 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 Phillip V. Marano
ii) 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.
Sole Panelist
Date: March 15, 2021
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