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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Sudhakar Ruddy / Domains By Proxy, LLC

Case No. D2016-2271

1. The Parties

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

The Respondent is Sudhakar Ruddy of Singapore / Domains By Proxy, LLC of Arizona, America.

2. The Domain Name and Registrar

The disputed domain name <basf-asia.com> ("the Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 8, 2016. On November 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 9, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 9, 2016 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 November 10, 2016.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2016.

The Center appointed Isabel Davies as the sole panelist in this matter on December 19, 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 is a very large international chemical company listed on the stock exchanges of London, Zurich and Frankfurt.

The Complainant owns more than 1500 trademarks in many classes for BASF worldwide dating back as far as the 1950s. These include the following: International trademark registration number 521841 for BASF, registered on January 16, 1988 (and duly renewed) in classes 1, 2, 3, 4, 5, 6, 9, 11, 16, 17, 19, 30, 31, 37 and 42.

The Disputed Domain Name was registered July 18, 2016. The Disputed Domain Name has never been used in any way. It currently resolves with the Godaddy parking page.

5. Parties' Contentions

A. Complainant

A. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant states that it is the largest chemical company in the world and that the BASF Group comprises subsidiaries and joint ventures in more than 80 countries, and operates six integrated production sites and 390 other production sites in Europe, Asia, Australia, the Americas and Africa.

It states that it has customers in over 200 countries and supplies products to a wide variety of industries, employing more than 112,000 people around the world. Therefore, it states, it is a major, well-known company in the field of chemicals. The company is currently expanding its international activities with a recent focus in Asia. Between 1990 and 2005, the company invested EUR5.6 billion in major Chinese hubs like Nanjing and Shanghai.

The Complainant states that it owns more than 1,500 trademark rights for BASF worldwide and is the owner of trademarks registered as early as the 1950s, years before the registration of the Disputed Domain Name.

The Complainant submits that BASF is a famous trademark and that this has previously been stated by for example in decision BASF SE v. Jim Welsh, WIPO Case No. D2010-2000.

"This appears to be a case of a person registering the Domain Name in the name of the Respondent in order to hide his or her identity and for the purpose of cashing in on a famous trademark." "[…] which is confusingly similar to Complainant's well-known trademarks […]"

The Complainant cites the decision of the Arbitrator in a case before the National Internet Exchange of India who ruled that "the evidence on record show the Complainant's trademark is well known". Moreover, the Complainant holds numerous domain names incorporating the BASF trademark, both within generic TLDs and country codes Top-level Domain ("ccTLD") ones, particularly in Asia and China: <basf.com>, <basf.asia>, <basf.in>, <basf.org> and many others.

The Disputed Domain Name is <basf-asia.com>.

The Complainant contends that the Disputed Domain Name is highly similar to the BASF trademark and likely to create confusion in the mind of the general public and that the BASF term is reproduced identically within the Disputed Domain Name. It is followed by the generic term "asia" which is likely to reinforce the likelihood of confusion, since it is an indication of origin of the products and services which potential clients might associate with the Complainant.

The Complainant submits that the use of a hyphen and lower case letter format are not significant in determining whether the Disputed Domain Name is identical or confusingly similar to the mark.

The Complainant also submits that, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD"). In any event, the gTLD ".com" does nothing to minimize the confusing similarity and then refers to ArcherDaniels-Midland Company v. tao bang hua, WIPO Case No. D2016-0990.

The Disputed Domain Name fully incorporates the Complainant's prior trademark BASF. Therefore, the Complainant contends that the Disputed Domain Name is identical or confusinly similar to the Complainant's earlier BASF trademarks.

The Complainant therefore submits that the first condition under the Policy is deemed satisfied.

B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))

The Complainant contends that the Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name. It states, first, that the Respondent is not commonly known by the Disputed Domain Name, has acquired no trademark or service mark rights related to the "basf" term and is not commercially linked to the Complainant.

The Complainant states that it has conducted trademark searches and found no BASF trademark or right owned by the owner of the Disputed Domain Name.

Secondly, the Respondent reproduces the Complainant's trademark without any license or authorization from the Complainant's company, which is strong evidence of the lack of legitimate interest. The Complainant refers to LEGO Juris A/S v. Ibnu Firdaus, WIPO Case No. D2012-1336.

Thirdly, the Respondent demonstrates no intent to use the Disputed Domain Name in connection with a bona fide offering of goods or services. It states that the Disputed Domain Name has not been used in any way whatsoever.

Moreover, the Complainant states, by acting shortly after the registration of the Disputed Domain Name, it wishes to reinforce the idea that it does not acquiesce to any use or preparation to use of this in any way.

Fourthly, the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant's BASF trademarks.

Fifthly, as the adoption and extensive use by the Complainant of the trademark BASF predates the first entry of the Disputed Domain Name, the burden is on the Respondent to establish the Respondent's rights or legitimate interests which the Respondent may have or have had. The Complainant refers to PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174.

The Complainant submits that none of the circumstances which set out how a respondent can prove his rights or legitimate interests are present in this case and in light of all the elements mentioned above, the Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant therefore states that, as the Complainant has made a prima facie case that the Respondent lacks legitimate rights or interests in the Disputed Domain Name, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the domain name.

The Complainant therefore submits that, in the absence of any such demonstration, the second condition under the Policy should be deemed satisfied.

C. The Disputed Domain Name was registered and is being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

First, the Complainant states that the BASF trademarks are so widely well-known, as stated above, that it is clear that the Respondent had the Complainant's name and trademark in mind when registering the Disputed Domain Name. The Respondent's choice of domain name cannot have been accidental and must have been influenced by the fame of the Complainant's trademark. Indeed, a simple search on an online search engine yields results only related to the Complainant. Therefore, at the very least, the Complainant contends, the Respondent knew or should have known that, when registering and using the Disputed Domain Name, it would be doing so in violation of the Complainant's earlier rights.

Secondly, the Complainant states that it sees no possible way whatsoever that the Respondent would use the Disputed Domain Name in connection with a bona fide offer of products or services and that any use of the BASF trademark would amount to trademark infringement and damage to the repute of the trademark. It contends that by obtaining the Disputed Domain Name the Respondent was attempting to prevent the Complainant from reflecting its trademark and company name in a domain name, and that this is strong evidence of bad faith. Furthermore, any actual use of the Disputed Domain Name by the Respondent would de facto amount to bad faith active use.

The Complainant states that its trademark is arbitrary and has no common or general meaning in any language, and the Disputed Domain Name is not generic or descriptive.

The Complainant thirdly refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0") which states that UDRP panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The UDRP panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. UDRP Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.

The Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which found that the relevant issue is not limited to whether the respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The Complainant submits that the distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept.

In light of all the elements above, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith by the Respondent. The combination of all the elements listed and detailed above show that the Respondent has acted in bad faith when registering and using the Disputed Domain Name, in line with UDRP cases decided interpreting paragraph 4(a)(iii) of the UDRP Policy.

The Complainant therefore submits that the third condition under paragraph 4(a) of the Policy is deemed satisfied.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is among the largest chemical companies in the world .

The Panel notes that the Complainant owns more than 1500 trademark rights for BASF worldwide.and is the owner of trademarks registered as early as the 1950s, years before the registration of the Disputed Domain Name.

The Panel accepts that BASF has been found to be a famous trademark in previous decisions such as BASF SE v. Jim Welsh, WIPO Case No. D2010-2000.

The Panel accepts that the Disputed Domain Name is confusingly similar to the BASF trademark and likely to create confusion in the mind of the general public as the "basf" term is reproduced identically within the Disputed Domain Name. It is followed by the generic term "asia" which is likely to reinforce the likelihood of confusion, since it is an indication of origin of the products and services which potential clients might associate with the Complainant.

The Panel accepts that the use of a hyphen and lower case letter format are not significant in determining whether the Disputed Domain Name is identical or confusingly similar to the mark, that it is permissible for the Panel to ignore the gTLD and that the gTLD ".com" does nothing to minimize the confusing similarity as found in ArcherDaniels-Midland Company v. tao bang hua, WIPO Case No. D2016-0990.

The Panel finds that the Disputed Domain Name is highly similar to the Complainant's earlier BASF trademarks.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent is not commonly known by the Disputed Domain Name and has acquired no trademark or service mark rights related to the "basf" term.

The Panel accepts that the Respondent is not commercially linked to the Complainant and that the Respondent reproduces the Complainant's trademark without any license or authorization from the Complainant's company and that this is strong evidence of the lack of legitimate interest as found in LEGO Juris A/S v. Ibnu Firdaus, WIPO Case No. D2012-1336.

The Panel accepts that the Respondent has demonstrated no intent to use the Disputed Domain Name in connection with a bona fide offering of goods or services.

The Panel accepts that, as the adoption and extensive use by the Complainant of the trademark BASF predates the registration of the Disputed Domain Name, the burden is on the Respondent to establish the Respondent's rights or legitimate interests which the Respondent may have or have had as was found in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174.

The Panel accepts that none of the circumstances which set out how a respondent can prove his rights or legitimate interests, are present in this case and that, as the Complainant has made a prima facie case that the Respondent lacks legitimate rights or interest in the Disputed Domain Name, the burden of proof shifts to the Respondent to demonstrate rights or legitimate interests in the Disputed Domain Name.

As the Respondent has failed to respond to the Complaint the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts that the BASF trademarks are well-known and that it is inconceivable that the Respondent was unaware of these when registering the Disputed Domain Name.

The Panel accepts that under the circumstances, the Respondent could not use the Disputed Domain Name in connection with a bona fide offer of products or services and that any use of the BASF trademark would amount to trademark infringement and would be use in bad faith. It accepts that the registration of the Disputed Domain Name by the Respondent prevents the Complainant from using its trademark and company name in a similarly formatted domain name and that this is evidence of bad faith.

The Panel accepts that the Disputed Domain Name is not generic or descriptive.

The Panel additionally finds convincing Telstra Corporation Limited v. Nuclear Marshmallows, supra, which found that the relevant issue is not limited to whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.

In view of the findings in this case and WIPO Overview 2.0 referred to above the Panel finds that the Disputed Domain Name was registered and used 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, <basf-asia.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: December 29, 2016

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