WIPO Arbitration and Mediation Center EXPERT DECISION BASF SE v. Steve Duncan Case No. DLI2008-0001 1. The Parties
The Claimant is BASF SE, Ludwigshafen, Germany, represented by Lustenberger Glaus & Partner, Switzerland.
The Respondent is Steve Duncan, York, United Kingdom of Great Britain and Northern Ireland. 2. Domain Name
The dispute concerns the following domain name registered with SWITCH. 3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2008. On September 16, 2008, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On the same date, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for .ch and .li domain names (the Rules of Procedure), adopted by SWITCH, the .ch and .li registry, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on September 29, 2008. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was October 19, 2008.
The Respondent filed response emails on September 29, 2008, September 30, 2008, October 1, 2008 and October 2, 2008. These emails shall be collectively considered as
the Response.
No Conciliation conference has taken place within the deadline specified in Paragraph 17(b) of the Rules of Procedure.
In several emails sent between November 1 and November 4, 2008, the Respondent expressed his intention to transfer the domain name at issue to the Claimant.
On November 3, 2008, the Claimant made an application for the continuation of the Dispute resolution proceedings as specified in paragraph 19 of the Rules of procedure and paid the required fees.
On December 3, 2008, the Center appointed Andrea Mondini as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.
In further emails sent between December 3 2008 and December 7, 2008, the Respondent reaffirmed his intention and his attempts to transfer the disputed domain name to the Claimant.
On the date of this decision, the disputed domain name was still registered in the name of the Respondent. 3. Factual Background
The Claimant is one of the largest chemical companies in the world and is the owner of the following trademark registrations for the acronym BASF covering also Liechtenstein (Annex 4 to the Complaint):
- BASF (logo), IR R-387959 registered on January 20, 1992 for all International Classes of goods and services.
- BASF (word mark), IR-521 841 registered on January 16, 1988 for goods and services in the Classes 1, 3-6, 9, 11, 16, 17, 19, 30, 31, 37 and 42.
- BASF (word mark) IR 638 794 registered on May 3, 1995, for goods and services in the Classes 3, 5 and 30.
The Respondent registered the disputed domain which leads to a one-page website containing a filler text in Latin words.
In several email communications sent after November 1, 2008, the Respondent expressed his willingness to transfer the disputed domain name to the Claimant.
However, due to the registrar lock or other reasons not known to the Expert, the disputed domain name is still registered in the Respondent's name as of the date of this decision. 4. Parties' Contentions A. Claimant
The Claimant contends that the domain name at issue is identical to its trademark BASF registered in Liechtenstein and therefore creates a likelihood of confusion.
The Claimant further contends that the Respondent has not submitted any evidence that he is a representative or a licensee of the Claimant and did not provide any reasonable explanation as to why he registered the disputed domain name. B. Respondent
In his email dated September 29, 2008, Respondent contended that he registered the disputed domain name in good faith and that its site provides a service which has nothing to do with chemicals.
In its subsequent emails, the Respondent repeatedly expressed his willingness to transfer the disputed domain name to the Claimant. 5. Discussion and Findings
According to paragraph 24 of the Rules of Procedure, the Expert shall make a decision based upon mainly two elements:
- if Claimant owns a right in a distinctive sign, and
- if the registration of the Domain Names by the Respondent constitutes a clear infringement of such right under the laws of Switzerland or Liechtenstein. A. The Claimant has a right in a distinctive sign
Given the fact that Claimant proved registrations of the BASF word mark and logo covering Liechtenstein, the Expert holds that Claimant established its exclusive right in its distinctive sign in Liechtenstein. B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant's right
The disputed domain name is clearly identical to the Claimant's trademark and business name under which the Claimant was obviously known before the Respondent's registration of the domain name at issue. The registration or use of the disputed domain name therefore constitutes a clear infringement of the Claimant's right in the distinctive sign BASF.
In addition, the Respondent repeatedly expressed his willingness to transfer the disputed domain name to the Claimant. Thereby the Respondent admitted and agreed that the disputed domain name shall be transferred to the Claimant. 6. Expert Decision
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name be transferred to the Claimant.
Andrea Mondini
Expert
Dated: December 18, 2008
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