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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Norkan Inc.

Case No. D2017-2202

1. The Parties

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

The Respondent is Norkan Inc. of Warren, Michigan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <buybasf.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2017. On November 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2017, 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.

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, and the proceedings commenced on November 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2017.

The Center appointed Charles Gielen as the sole panelist in this matter on December 21, 2017. 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 owns worldwide numerous trademark registrations for BASF, such as International registration No. 638794 registered on May 3,1995 for goods and services in classes 3, 5 and 30 and International registration No. 909293 registered on October 31, 2006 for goods and services in classes 1, 2, 3, 4, 5, 6, 7, 9, 10, 12, 16, 17, 18, 19, 22, 24, 25, 27, 28, 29, 30, 31, 32, 35, 36, 37, 39, 41, 42 and 44. Furthermore, the Complainant holds numerous domain names incorporating the trademark BASF, such as: <basf.com>, <basf.asia>, <basf.in> and <basf.org>.

The disputed domain name <buybasf.com> was created on March 1, 2017 and resolves to an active website including the Complainant’s trademark and logo and offering the Complainant’s products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends it is the largest chemical company in the world and is listed on the Frankfurt Stock Exchange, the London Stock Exchange and the Zurich Stock Exchange. The Complainant's group of companies 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, Americas and Africa. The Complainant 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, the Complainant is undoubtedly a major, well-known company in the field of chemicals.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since the disputed domain name reproduces the trademark BASF in its entirety preceded by the generic term “buy”.

Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant gives the following reasons for this. Firstly, the Respondent is not commonly known by the disputed domain name. The Respondent has acquired no trademark or service mark related to the word “basf”. Secondly, the Respondent reproduces the Complainant’s trademark without any license or authorization from the Complainant, which is a strong evidence of the lack of legitimate interest. Thirdly, the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s trademark BASF. Moreover, the Respondent is not commercially linked to the Complainant. Fourthly, since 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 its rights or legitimate interests in the disputed domain name.

Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant first of all contends that the disputed domain name resolves to an online shop pretending the offering of the Complainant’s products. The BASF logo is reproduced on the header of the page. According to the Complainant it is clear that the Respondent wished to create the impression of an affiliation to the Complainant by using the BASF logo. However there is no such affiliation and by reproducing the Complainant’s earlier trademark BASF entirely, both within the disputed domain name and the content of the website linked thereto, the Respondent is undoubtedly trying to attract, for commercial gain, internet users and consumers by creating a likelihood of confusion. In light of all the elements above, the Complainant contends that the domain name was registered and is being used in bad faith by the Respondent.

B. Respondent

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

6. Discussion and Findings

The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trademark BASF based on numerous trademark registrations. The term “basf” in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the term “buy” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark BASF. The reason is that the term “buy” is generic so that the emphasis is on the second element of the disputed domain name “basf” which is identical to the Complainant's trademark. This element therefore is the dominant element. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the “.com” suffix is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark BASF. The Panel is convinced that the term “basf” in the disputed domain name has no other meaning except to refer to the Complainant and its businesses, which is proven by the fact that the Respondent on the website to which the disputed domain name resolves refers to the business of the Complainant and some of its products. In view of the international fame of the trademark BASF, the Respondent must have been aware of the prior existence of this trademark. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.

The main reasons for this conclusion are as follows. The trademark BASF enjoys international fame and consists of a coined term. The intention of the Respondent is to mislead consumers in believing that the disputed domain name is in one way or the other connected to the Complainant and its business. The Respondent is undoubtedly trying to attract, for commercial gain, internet users and consumers by creating a likelihood of confusion with the Complainant and its business. This intention also follows from the fact that the Respondent is using the disputed domain name for a website which refers to the business and products of the Complainant without the Respondent being connected or affiliated in any way whatsoever with the Complainant. The Panel is of the opinion that registration and use of a domain name in connection with such activities constitutes bad faith under the Policy. The intention of the Respondent clearly is to capitalize on the reputation of the Complainant’s trademark BASF.

The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.

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 <buybasf.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: December 28, 2017

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