WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Mr. Shahrokhi

Case No. D2015-0588

1. The Parties

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

The Respondent is Mr. Shahrokhi of Dubai, United Arab Ermirates.

2. The Domain Name and Registrar

The disputed domain name <basfe.com> is registered with OnlineNic. Inc. d/b/a China-Channel.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on April 2, 2015. On April 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2015, 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. On April 14, 2015, the Complainant submitted a clarification and amended Complaint.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for response was May 11, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 13, 2015.

The Center appointed Archibald Findlay SC as the sole panelist in this matter on May 27, 2015. 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 following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of challenge, can be accepted as background.

The Complainant contends that it is the largest chemical company in the world and avers that it and its subsidiaries (which are known as the "BASF Group") operate in some 80 countries worldwide and employ approximately 113,000 people. The BASF Group has six business segments, namely chemicals, plastics, performance products, functional solutions, agricultural solutions and oil and gas. In 2014, the BASF Group had a turnover of some EUR 74 billion.

The BASF Group comprises more than 160 subsidiaries and joint ventures, and operates more than 380 production sites in Europe, Asia, Australia, America and Africa. The BASF Group supplies products to a wide variety of industries and has customers in more than 200 countries worldwide.

In particular, the BASF Group has been operating in the United Arab Emirates since 1970 and employs more than 650 people in five locations. It is present in the United Arab Emirates as part of the Business Center Turkey, Middle East and North Africa with headquarters in Istanbul. It also has an established website, namely "www.basf.com".

The Complainant is the owner of several BASF trademarks, inter alia, the Community Trademark EM00098020 BASF, registered on October 15, 1998.

The disputed domain name was registered on May 1, 2014.

5. Parties' Contentions

A. Complainant

The Complainant asserts that the Respondent registered the disputed domain name in May 2014.

The Complainant further draws attention to the fact that not only does the disputed domain name reproduce its trademark in its entirely but also asserts that that factor is sufficient to establish that the disputed domain name is identical or confusingly similar to that of the Complainant's various registrations. It points out that the mere addition of the letter "e" does not affect the similarity between the Complainant's trademark and the disputed domain name.

The further allegation advanced is that there is no affiliation of the Respondent and the Complainant in any way or that the former has been granted any rights to use and register its trademark or seek registration of any domain name incorporating the trademark. In addition, it is contended that the disputed domain name is not used for a bona fide offering of goods and services or any other legitimate use, whether noncommercial or otherwise. Moreover, it is contended that the Complainant was, or is, commonly known by the names "BASF" and/or "basfe" prior to the registration of the disputed domain name.

The Complainant also asserts that the disputed domain name was used for a website allegedly offering chemical products and that the look and feel of said website is almost identical to that of the Complainant’s international company website (“www.basf.com”), including an almost identical copy of the Complainant’s protected BASF logo, and use of the Complainant’s old slogan (“The Chemical Company”, in use until January 1, 2015).

The Complainant further asserts that the Respondent must have been aware of the existence of the Complainant's trademark and therefore, by reason of its registration and subsequent user, this constitutes bad faith, particularly by reason of the incorporation of the whole of the trademark in the disputed domain name. The Complainant contends that on the website the Respondent claims to sell good from similar categories as the Complainant and that one must therefore conclude that by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source and/or affiliation of his website and products.

B. The Respondent

The Center's Notification of the Complaint and Commencement of Administrative Proceeding of April 21, 2015, sets out fully the fact that the matter has now come to the Center on a Complaint from the Complainant, and advises the Respondent of the nature of the administrative proceedings and deadlines in terms of the Rules, as well as warning the Respondent to take any steps in terms of the Rules within the specified time. It further advises that failure would lead to the Respondent being in default and the matter would proceed accordingly. The Complaint and amended Complaint were sent by the Center to the Respondent by e-mail and the Written Notice delivered by courier (a report from the courier reflects that the Written Notice was so delivered to the Respondent).

Despite transmission by e-mail of the Complaint and amended Complaint and the physical delivery of the Written Notice, the Respondent did not react at all, and on expiry of the time limit he was advised in the Notification of Respondent Default of May 13, 2015, from the Center, that he was in default. Since no communication has been received from the Respondent to date, the Panel is satisfied that it must therefore deal with the matter on the premise that the Respondent is in default and did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Substantive Elements of the Policy

Paragraph 15(a) of the Rules requires that:

"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

"(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.

(ii) That the respondent has no rights or legitimate interests in respect of the domain name.

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.

Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).

B. Effect of Default

Notwithstanding the fact that a respondent may be in default, a complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle a complainant to a finding in its favor by reason thereof, as failure by a complainant to discharge the burden of proof will still result in the complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v Shopintimates USA, WIPO Case No. D2011-0049). The panel is nevertheless not bound to accept all that has been put up by a complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltdand Sanlam Ltd v Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).

However, paragraph 14 (b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (see Allianz Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).

From this the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v Global Net 2000 Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v Shopintimates USA, (supra); VKR Holding A/s v Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., WIPO Case No. D2012-0040).

Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v Global Net 2000 Inc, (supra); RX America LLC. V. Matthew Smith, WIPO Case No. D2005-0540 Allianz, (supra); Standard Innovation Corporation v Shopintimates USA, (supra); VKR Holdings A/S v Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., (supra); Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).

C. Domain Name is Identical or Confusingly Similar

The Complainant put up details of its registered trademarks BASF which it owns in many countries as well as the domain name above to show that it is well known internationally.

On the basis of its evidence and contentions in this matter, the Panel considers that on the factual background relied up by it, particularly as it is unchallenged by the Respondent, the Complainant has registered trademark rights in BASF which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the "TRIPS Agreement"). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending rademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v Anirban Mitra, (supra)).

In support of its contentions in the Complaint, the Complainant relies particularly on Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; CHANEL, INC v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413; and Welch Foods Inc. v. USCYB, WIPO Case No. D2001-1072. These UDRP decisions support the proposition that where a trademark has been incorporated entirely into a domain name that is sufficient to establish that it is identical or confusingly similar to the complainant's registered mark.

The fact that the trademark has been incorporated entirely into the disputed domain name is sufficient to establish that it is identical or confusingly similar to the Complainant's registered mark (Quixtar Investments, Inc. v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkin / Neo nNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016; also more recent UDRP decisions, namely, Swarovski Aktiengesellschaft v. swarovski-earrings-sales.com, WIPO Case No. D2013-1824; Rapid Share AG, Christian Schmidt v Invisible Registration.com, Domain Admin, WIPO Case No. D2010-1059; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; Hoffmann-La Roche Inc. v. Krontak Ladik, WIPO Case No. D2013-0019).

On the basis of this wealth of authority, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a) of the Policy.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate his rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.

Although paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights to or legitimate interests in the disputed domain name, once a complainant establishes a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name, the burden of production on this factor shifts to the respondent to rebut such prima facie case, despite the overall burden of proof remaining upon a complainant to prove each of the three elements of paragraph 4(a) of the Policy (see Document Technologies Inc v. International Electronic Communications Inc., WIPO Case No. D2000-0270; University City Studios Inc, (supra); Deutsche Telekom AG v Britt Cordon, WIPO Case No. D2004-0487).

Having defaulted, the Respondent has placed himself in a position that he has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.

The Complainant contends that it is the owner of the trademark BASF and associated domain name referred to above and that the Respondent has not been given any permission to register or use any domain name incorporating its trademark. The Complainant contends that the disputed domain name was used for a website allegedly offering chemical products and that the look and feel of said website is almost identical to that of the Complainant’s international company website, including an almost identical copy of the Complainant’s protected BASF logo, and use of the Complainant’s old slogan. It follows, therefore, that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted.

Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (see Sybase Inc, (supra); Groupe Anchon v Gan Yu, WIPO Case No. D2010-0138).

From the record, there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. There is also no evidence that the Respondent is commonly known by the disputed domain name, or that he is making a legitimate noncommercial of fair use of the disputed domain name.

The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of paragraph 4(a) of the Policy.

E. Registration and Use in Bad Faith

Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Complainant contends that only someone who was familiar with its mark would have registered a domain name identical thereto and relies upon British Sky Broadcasting Group p.l.c. v Mr. Pablo Morino and Sky Services S.A., WIPO Case No. D2004-0131.

The Panel accepts this proposition and finds further support from the fact that bad faith can, in specific circumstances, exist where a domain name contains in its entirety a complainant’s trademark (see Cellular One Group v Paul Brien, WIPO Case No. D2000-0029), the Panel does not see that this principle cannot also apply in circumstances where the domain name in its entirety is a one-word combination of a complainant's registered trademark (see San Lameer (Pty) Ltdand Sanlam Ltd v Atlantic Internet Services (Pty) Ltd (supra)).

The Complainant also contends that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source and/or affiliation of his website and products.

The implication arising from the disputed domain name and how it is being used (i.e., a website with the look and feel of Complainant’s international company website), in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is confused into believing that it is doing business with the Complainant or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith (see Media 24 Limited v Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltdand Sanlam Ltd v Atlantic Internet Services (Pty) Ltd (supra); Think, Schufwerk GmbH v Soo Doo, WIPO Case No. D2012-2522).

Moreover, by use of the Complainant’s trademark in the disputed domain name and the inclusion on the website at the disputed domain name of an identical copy of the Complainant’s protected BASF logo, the Respondent is trading on the value established by the Complainant in its marks to attract users and thereby deriving economic benefit from either those users attracted to the disputed domain name website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (see Yahoo! Inc and GeoCities v. Data Art Corp., DataArt Enterprises Inc., Stonybrook Investments, Globalnet 2000 Inc., Powerclick Inc., and Yahoo Search Inc., WIPO Case No. D2000-0587).

The selection of a domain name that is the same as, or confusingly similar to, a complainant' trademark and complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore he selected the disputed domain name in circumstances where he was very well aware of the Complainant's reputation and intended to benefit therefrom.(see Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc (supra)).

The Panel derives further support for its view from the fact that "basf" is a coined word or acronym having no meaning other than as a trademark describing the goods and services of the Complainant (see Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).

In the absence of anything from the Respondent to gainsay or explain away the inferences which are otherwise properly drawn, the Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraph 4 (a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <basfe.com> be transferred to the Complainant.

Archibald Findlay SC
Sole Panelist
Date: June 11, 2015