The Complainant is BASF SE of Germany, represented by Lovells LLP of Germany.
The Respondent is Gomes Paulo of France.
The disputed domain name <basf.ws> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2008. On September 4, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 4, 2008, GoDaddy.com, Inc. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2008.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on October 16, 2008. 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.
The Complainant is a company incorporated under the laws of the European Union, with its principle place of business in Ludwigshafen, Germany and is the largest chemical company in the world.
The Complainant is the registered owner of a large number of trademarks registered in Germany and internationally and reflecting the term BASF. In particular it is the registered owner of the International trademark No. 0521841 for BASF and the Community trademark No. EM005458518 for BASF (collectively referred to as “the BASF trademark”).
The Respondent registered the domain name on December 17, 2007.
The Complainant alleges that the disputed domain name <basf.ws> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4(a) of the Policy, the domain name is identical and confusingly similar to the Complainant's registered trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered BASF trademark to which reference has already been made. It then says that it is self-evident that the domain name <basf.ws> is both identical and confusingly similar to the BASF trademark as it incorporates the trademark as a whole and that the domain name suggests that it is somehow connected with the BASF trademark or authorized by the Complainant, neither of which is true.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show that the Respondent cannot bring itself within any of the provisions of paragraph 4(c) of the Policy, has never been authorised by the Complainant to use its trademark and is using the domain name for a webpage containing a video portal, which is not a legitimate purpose.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent must be presumed to have known of the Complainant's famous trademark, it has been using it for a website that is a video portal with links to websites promoting other goods and services and is offering the domain name for sale through SEDO, a domain name broker.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
i. The 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 the domain name; and
iii. The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
The Panel finds that the domain name <basf.ws> is identical to the BASF trademark. That is so because the domain name consists of the totality of the BASF trademark without any changes or additions.
It is also now well established that if it is found, as in this case, that a domain name is identical to a trademark, that finding is not negated by the presence in the domain name of suffixes such as the gTLD suffix “. com”. In the present case, it is the ccTLD suffix “.ws” that has been added, but the same principle applies and the addition of “.ws” does not diminish the finding that the domain name is identical to the Complainant's BASF trademark: Forest Laboratories Inc. v. DialupOne Internet Services LLC, WIPO Case No. DWS2008-0004; Volvo Trademark Holding AB v. Tarek Abd El Moaty, WIPO Case No. DWS2004-0001; and Sherwin-Williams Company et al. v. Tom Lento, WIPO Case No. DWS2000-0002.
As the Complainant clearly has rights in the BASF trademark as its registered owner, the Panel finds that the domain name is identical to the trademark and that the Complainant has accordingly established the first of the three elements that it must prove.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows that he has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Panel's task in deciding if a registrant has any rights or legitimate interests in a domain name can be made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that he had until October 2, 2008 to send in a Response, that he would be in default if the Response were not received by that date and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name <basf.ws>. That prima facie case is made out from the following considerations.
The Respondent chose for his domain name, without the Complainants' authorization, the Complainant's prominent trademark BASF, which has been used by the Complainant internationally for many years in its business, creating the largest chemical company in the world, operating as it does at 150 sites internationally and with customers in over 200 countries. Moreover, the evidence shows that the Respondent is not a representative or licensee of the Complainant and is not authorized to use its trademarks in a domain name or anywhere else. In addition, the evidence show that the Respondent is using the domain name for a website that is in part a video portal and which also carries links to other sites promoting a large range of goods and services none of which are supplied by the Complainant.
These facts give rise to the prima facie case made out by the Complainant. The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has thus made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the 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 site or location.”
The Panel finds that the Complainant has shown that the Respondent registered and used the domain name in bad faith and that in particular the Respondent's conduct puts the case squarely within paragraphs 4(b)(i) and (iv) of the Policy.
The reasons why the Complainant's case has been made out are as follows.
First, the case comes within the provisions of paragraph 4(b)(i) of the Policy because the Complainant has tendered evidence to show that the domain name is being advertised for sale with the domain name broker SEDO. This could only be done with the knowledge and approval of the Respondent. As the domain name was registered comparatively recently, the Panel draws the inference that the Respondent's primary intention in registering the domain name was to try to sell it to the complainant or to a competitor for a profit within the meaning of the above provision. Moreover, as the Complainant submits, the very fact of advertising the domain name for sale on an auction site may be evidence of bad faith, a view adopted in the cases cited by the Complainant, namely Harrods Limited v. Robert Boyd, WIPO Case No. D2000-0060 and Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
Secondly, the case comes within the provisions of paragraph 4(b)(iv) of the Policy for the following reasons. By registering a domain name containing only the Complainant's prominent trademark and without any legitimate reason for doing so, it is more probable than not that the Respondent's intention in registering and subsequently using it was to create confusion with the Complainant's name and the famous BASF trademark for some sort of financial benefit.
Moreover, the confusion likely to be created is confusion with the BASF trademark about the affiliation of the goods and services being promoted on the Respondent's website and the websites to which it is linked and as to whether those goods and services are in some way associated with or approved by the Complainant. The website “www.basf.ws” is principally a video portal, but it also carries links to sites that offer clothing, tickets to sporting events and an extensive range of other goods and services.
The Panel finds that these circumstances tend to create confusion with the Complainant's trademark as to the sponsorship, affiliation and endorsement of the Respondent's site and the goods and services on them and on the other sites, and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain.
The facts therefore come within paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP panels on analogous facts; see for example: Identigene, Inc. v. Genetest Laboratories WIPO Case No. D2000-1100; MathForum.co, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 and IndyMac Bank, F.S.B. v. Jim Kato, NAF Case No. 190366. In this regard, the comments of the panelist in Identigene, Inc. v. Genetest Laboratories (supra) are apposite:
“Complainant has alleged and the Panelist finds that Respondent's use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv). InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; America Online Inc .v. Cyber Network LLP, WIPO Case No. D2000-0977”.
Accordingly, the Complainant has made out the third of the three elements that it must establish.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <basf.ws> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: October 30, 2008