World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Kang M. Nam and Domain Bar Young N

Case No. D2010-0900

1. The Parties

The Complainant is BASF SE of Ludwigshafen, Germany, represented by Hogan Lovells International LLP, Germany.

The Respondents are Kang M. Nam of Busan, Republic of Korea and Domain Bar Young N, also of Busan, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <glysantin.com> (the“Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2010, naming as First Respondent Whois Privacy Protection Service Inc. and Second Respondent Kim Hyeonsuk and Domain Bar Young N. On June 2, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On the same day, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 30, 2010. The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondents’ default on July 23, 2010.

The Center appointed Alan L. Limbury as the sole panelist in this matter on July 30, 2010. 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, the world’s largest chemical company, has used the trademark GLYSANTIN in connection with engine coolants since 1929. It has numerous registrations for that mark, including German registration No. 350548, registered on April 12, 1926.

The Domain Name was first registered on January 16, 2005 in the name of Kim Hyeonsuk, with Domain Bar Young N as Administrative Contact. Domain Bar Young N has remained the Administrative Contact throughout the events described below.

In March, 2010 the Domain Name resolved to a website promoting coolants and offering the Domain Name for sale. Following a cease and desist letter from the Complainant dated April 19, 2010 addressed to Kim Hyeonsuk and copied to Domain Bar Young N, by email to the Complainant, Domain Bar Young N claimed to have purchased the Domain Name himself and offered it for sale to the Complainant for 1,500 Euros. The Complainant declined, whereupon, on April 23, 2010, the Domain Name was redirected to a website operated by Domain Bar Young N at which the Domain Name was offered for sale. The registration of the Domain Name was also transferred to Whois Privacy Protection Service Inc. and the Domain Name was again redirected to another sponsored links website. On May 18, 2010, the Complainant’s first cease and desist letter to the former registrant, Kim Hyeonsuk, was returned due to a false address. The identity of the current registrant, Kang M Nam, was revealed only after the Complainant filed its Complaint with the Center naming Whois Privacy Protection Service Inc. as First Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant says the Domain Name is identical and confusingly similar to its trademark GLYSANTIN; that the Respondents have no rights or legitimate interest in the Domain Name, which was registered and is being used in bad faith.

As to legitimacy, the Complainant says the Respondents were not commonly known by the Domain Name prior to its registration; they are not, and never have been, licensees of the Complainant, nor otherwise authorized to use the GLYSANTIN mark; are not using the Domain Name for a bona fide offering of goods or services and are not making a legitimate non-commercial or fair use of it.

As to bad faith registration, the Complainant says that, given the fame of the GLYSANTIN mark in the field of coolants, the Respondents were evidently aware of the GLYSANTIN mark when the Domain Name was registered. As to bad faith use, the Complainant points to the offer to sell the Domain Name, both on the website and directly to the Complainant; to the confusing use within paragraph 4(b(iv) of the Policy; to the use of false contact information by the initial registrant and an obviously false telephone number of the First Respondent; and to the Respondents’ attempts to conceal their identity after the Complainant’s initial contact, including use of a privacy service immediately after an exchange between the Complainant and the Second Respondent.

The Complainant says the Respondents and the former registrant are identical or at least connected with each other and that, even if they are not, it is evident that the Domain Name has been continuously used in bad faith ever since it was first registered, regardless of changes in the registrant.

B.Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer of a domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

(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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080 and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et al., WIPO Case No. D2000-0848.

A. Identity of the Respondent

The Rules, paragraph 1, define “Respondent” as the holder of a domain-name registration against which a complaint is initiated. The current holder is Kang M. Nam. However, the Complainant’s assertion that both Kang M. Nam and Domain Bar Young N are identical has not been denied, and the facts give some reason to accept that this is so. Accordingly the Panel will proceed on the basis that the Respondents are one and the same person. See, eg. General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834. Accordingly, the Panel will refer to the Respondents in the singular.

B. Identical or Confusingly Similar

The Domain Name is clearly identical to the Complainant’s GLYSANTIN trademark, the gTLD “.com” being inconsequential.

The Complainant has established this element of its case.

C. Rights or Legitimate Interests

The Panel finds that the GLYSANTIN mark is distinctive and well-known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that the Respondent does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant has established this element of its case.

D. Registered and Used in Bad Faith

It is unnecessary to examine the circumstances under which the Domain Name was first registered in the name of Kim Hyeonsuk in 2005, since the relevant registration for the purposes of the Policy is the registration that took place shortly after the offer to sell the Domain Name to the Complainant was rejected. That registration was in the name of a privacy service, which concealed the name of Kang M. Nam.

It is clear that the Respondent, as Administrative Contact for the Domain Name throughout its life, was well aware of the Complainant’s GLYSANTIN trademark when that registration took place, since he had just offered it for sale to the Complainant in response to a cease and desist letter and had been rebuffed. The Panel finds that the change in registration and the use of the privacy service following the cease and desist letter were done in furtherance of the purpose of selling the Domain Name to the Complainant for an amount which must have been in excess of the out-of-pocket costs of registration. This constitutes evidence of both bad faith registration and bad faith use, pursuant to the Policy, paragraph 4(b)(i).

Accordingly the Panel finds that the Domain Name was registered and is being used in bad faith.

The Complainant has established this element of its case.

7. Decision

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 <glysantin.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Dated: August 16, 2010

 

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