WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Jihuazhou, Zhongshan BASF Paint Co., Ltd.

Case No. D2016-1844

1. The Parties

The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.

The Respondent is Jihuazhou, Zhongshan BASF Paint Co., Ltd. of Zhongshan, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <zsbasf.com> is registered with Xin Net Technology Corp. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2016. On September 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2016, 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 September 16, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On September 20, 2016, the Center sent an email communication to the Parties, noting the Complainant's request that English be the language of the proceeding included in the Complaint, and allowed the Respondent two days to make further comment. The Respondent did not comment on the language of the proceeding.

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 the Respondent of the Complaint in Chinese and English, and the proceeding commenced on September 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 18, 2016.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 27, 2016. 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 BASF SE is a large international chemical company. The BASF Group comprises subsidiaries and joint venturers in more than 80 countries and operates nearly 400 production sites in Europe, Asia, Australia, the Americas, and Africa. The Complainant has customers in over 200 countries and supplies products for use in a wide variety of industries. The Complainant employs more than 112,000 people around the world. Additionally, the Complainant is currently expanding its international activities in Asia, having already invested billions of euros in major Chinese cities, including Nanjing and Shanghai.

The Complainant is the owner of hundreds of trademark registrations throughout the world for the BASF mark and BASF-formative marks. Among them are International Registration Nos. 638794 (registered on May 3, 1995) and 909293 (registered on October 31, 2006) for the mark BASF, both designated for protection in dozens of countries, including China where the Respondent is located. The Complaint also owns multiple domain names incorporating the BASF mark, including <basf.com>, <basf.asia>, <cnbasf.com>, <basf.in>, and <basf.org>.

The Respondent registered the disputed domain name on November 30, 2015. At the time the Complaint was filed, the disputed domain name resolved to a website advertising BASF-branded products. The Complainant investigated the Respondent's activities and the results indicated that the products sold by the Respondent are counterfeit goods. The website displayed the term "BASF" throughout, including prominently in the top left corner and center of the website. The website also included images of cans of paint and related products with "BASF" on their labels along with English and Chinese text.

5. Parties' Contentions

A. Complainant

The Complainant states that the disputed domain name is identical or confusingly similar to the Complainant's famous trademark. The Complainant's BASF mark is well-known in connection with chemical goods and services. The disputed domain name is highly similar to the BASF mark and is likely to cause confusion in the mind of the general public. The disputed domain name consists of the BASF mark in its entirety plus the prefix "zs" . The letters "zs" may be an acronym for the relevant industry terms "zirconia-silica", "zinc-coated steel" or "zinc-silicate". The letters may also stand for "Zhongshan", a part of the Respondent's name and the city in China where the Respondent is located. In either case, the letters "zs" can be considered non-distinctive because they relate to usual chemical elements or a Chinese industrial area. A disputed domain name that incorporates a trademark in its entirety with the addition of a non-distinctive prefix is confusingly similar to the trademark. Furthermore, the use of a prefix or suffix in conjunction with a well-known mark further aggravates the likelihood of confusion. The addition of the generic Top-Level-Domain ("gTLD") ".com" has no significance in determining whether the disputed domain name is similar to the BASF mark. Therefore, the disputed domain is identical or highly similar to the BASF mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has acquired no trademark rights in the BASF mark. Use by the Respondent of "BASF" in its name cannot be considered legitimate use. The BASF mark is so widely known that it could not be legitimately adopted by a third party as a business or company name for any purpose other than to create the impression of association with the Complainant. It is very likely that the Respondent would not have chosen to adopt the BASF mark other than to benefit from the fame of the Complainant and to attract consumers. Such use is not bona fide use. The Respondent used the Complainant's trademark without any license or authorization from the Complainant. The Respondent used the Complainant's trademark to sell counterfeit goods, competing with the Complainant's activities, which is not a bona fide offering of goods. Finally, because the Complainant's adoption and use of the BASF mark predates the registration of the disputed domain name, it is the Respondent's burden to establish the rights or legitimate interests that the Respondent may have in the disputed domain name.

The Respondent registered and is using the disputed domain name in bad faith. The BASF mark is so widely well-known that it is inconceivable that the Respondent ignored the Complainant's prior rights in the BASF mark. The Respondent had the Complainant's famous trademark in mind when registering the disputed domain name. A simple Internet search yields results related only to the Complainant. Therefore, at the very least, the Respondent knew or should have known that its registration and use of the disputed domain name would be in violation of the Complainant's prior rights. Any use of the BASF mark would amount to trademark infringement and use of the disputed domain name would de facto amount to bad faith use. Finally, the Complainant has investigated the Respondent's activity and the results show that the Respondent is engaging in counterfeiting activities and is using the website associated with the disputed domain name to sell counterfeit BASF-branded products. This is clear proof of bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Registration Agreement for the disputed domain name is in Chinese. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment. Regardless, the Respondent's conduct suggests that the Respondent understands English. At the time the Complaint was filed, the disputed domain name resolved to a website that contained English words and that included images of products bearing labels with English words. Additionally, if the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed. In light of the above, the Panel will proceed to issue its decision in English.

6.2. Substantive Discussion

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(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. Identical or Confusingly Similar

The Complainant has rights in the BASF mark. The Complainant is the registered owner of many trademark registrations for the BASF mark and BASF-formative marks around the world, used and registered long before the Respondent registered the disputed domain name. The Panel accepts that the Complainant's mark is internationally known.

The disputed domain name is confusingly similar to the Complainant's trademark. It incorporates the BASF mark in its entirety and the addition of "zs" does not avoid confusing similarity. The letters "zs" are likely an acronym for a chemical term, relevant to the Complaint's industry, or for Zhongshan, part of the Respondent's name as well as the apparent geographic location of the Respondent. In either case, the term does not sufficiently distinguish the disputed domain name from the BASF mark. A descriptive term does not impact the overall impression of the disputed domain name. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, WIPO Case No. D2000-1414. Indeed, adding to a trademark a descriptive term that is related to the products or services of the trademark owner to the trademark adds to confusing similarity. See Lime Wire LLC v. David Da Solva / Contactprivacy.com, WIPO Case No. D2007-1168. Because the Complainant is a chemicals company, the addition of an acronym for a chemical term to the BASF mark is likely to be perceived as indicating a website related to the Complainant's products and services in respect of the particular chemical.

Similarly, a geographic term does not impact the overall impression of the disputed domain name. If consumers recognize "zs" as referring to Zhongshan, they are likely to perceive the disputed domain name as indicating a website related to the Complainant's activities in that city. See Inter IKEA Systems B.V. v. Muhannad Mayyas, WIPO Case No. D2016-0067; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, WIPO Case No. D2015-0210. Therefore, "zs" is not a prominent part of the disputed domain name and does not sufficiently distinguish the disputed domain name from the Complainant's trademark.

Finally, the addition of the ".com" gTLD extension, being a technical part of the domain name, is not relevant in determining confusing similarity and is without legal significance. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

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

(ii) The respondent 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 consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends and the Respondent does not deny that the Complainant never authorized the Respondent to use the BASF mark. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent uses the BASF mark in its name and to brand products and used the disputed domain name to advertise BASF-branded goods, but such use of the BASF mark and the disputed domain name does not give rise to rights or legitimate interests in the circumstances of the present case. The Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The disputed domain name resolved to a website advertising goods under the BASF mark. The Complainant states that the use of its trademark is not authorized and there is evidence in the record, which the Respondent has not contested, that the Respondent is manufacturing and selling counterfeit products under the BASF mark. Such use of the BASF mark is not bona fide use. Given the reputation of the Complainant and its BASF mark, it is inconceivable that the Respondent registered the disputed domain name for any purpose other than to capitalize on that reputation. "[U]se which intentionally trades on the fame of another cannot constitute a 'bona fide' offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy." Madonna Ciccone, p/k/a Madonna v. Dan Parisi / Madonna.com, WIPO Case No. D2000-0847.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 disputed domain name; or

(ii) The Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) The 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, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

The present case fits clearly within the situation described in paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent was undoubtedly aware of the Complainant and its BASF mark at the time of registration of the disputed domain name. The Complainant and its BASF mark are widely known throughout the world. Additionally, the Complainant owns trademark registrations in several jurisdictions, including in China where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before registering a domain name, a simple Internet search for BASF would have yielded many obvious references to the Complainant. The Respondent must have had the Complainant's trademark in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent's use of the disputed domain name to sell counterfeit BASF-branded products. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. The Panel finds that the Respondent's registration of the disputed domain name incorporating the Complainant's mark, being fully aware of the Complainant's rights in the mark, without any rights or legitimate interests in doing so is registration in bad faith.

The Respondent used the disputed domain name to direct Internet users to a website advertising what appear to be counterfeit goods, which indicates that the Respondent's primary intent was to use the Complainant's mark to attract Internet users to its website and to capitalize on the fame of the Complainant's mark. See Sanofi-aventis v. Igor Peklov, WIPO Case No. D2008-1419; Chrome Hearts LLC v. James Hart, WIPO Case No. DCC2011-0005 ("The fact that counterfeit goods are being sold through this medium indicates that the disputed domain name is being used in bad faith"). These activities amount to bad faith use of the disputed domain name pursuant to Paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith.

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 <zsbasf.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: November 10, 2016