WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Youjiyuan
Case No. D2015-0365
1. The Parties
The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Youjiyuan of Longyan, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <basfdebeirui.com> is registered with 35 Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2015. On March 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 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 March 10, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 11, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 proceeding commenced on March 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on April 22, 2015. 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 the largest chemical company in the world and is listed on the Frankfurt, London and Zurich Stock Exchanges. The Complainant 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, the 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. In terms of the Complainant’s business in Asia, between 1990 and 2005, the Complainant invested €5.6 billion in Asia, for example in sites near Nanjing and Shanghai in China.
The Complainant owns more than 2,000 trade mark registrations worldwide for the BASF trade mark including international trade mark registrations which include China as one of the designated jurisdictions (e.g. International registration Nos. 638794 and 909293).
The Complainant contends that BASF is a famous trade mark and has been recognized as such by earlier UDRP panelists (e.g. BASF SE v. Jim Welsh, WIPO Case No. D2010-2000. In another case, BASF SE v. jing liu/liujing, WIPO Case No. D2014-1889, the panel held that the BASF trade mark was well known in China: “The Panel finds that the Complainant’s BASF mark is well known in connection with chemical goods and services offered by the Complainant in many countries as well as in China.”).
The disputed domain name was registered on June 5, 2014.
5. Parties’ Contentions
(i) The disputed domain name is confusingly similar to the BASF trade mark in which the Complainant has rights. To the best of the Complainant’s knowledge, the additional element in the disputed domain name “debeirui” has no meaning in Chinese. As a famous and well known trade mark, BASF is undoubtedly the main attractive element of the disputed domain name. The sole addition of “debeirui” is not enough to differentiate the disputed domain name from the famous and well known BASF trade mark owned by the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons.
(a) The Respondent is not commonly known by the disputed domain name, and has acquired no trade mark or service mark rights in the “BASF” term. The Complainant has conducted trade mark searches and found no BASF trade mark or right owned by “youjiyuan” which is the name of the Respondent.
(b) The disputed domain name is used to promote the products of a company that assumes the name “BASF DEBEIRUI”. To the best of the Complainant’s knowledge from searches conducted, there is no company registered under that name in China. In any case, even if there were such a company registered in China, this could not be considered a legitimate interest in the disputed domain name as the BASF trade mark is so well known in China that it cannot be legitimately adopted other than for the purpose of creating an impression of an association with the Complainant. It is extremely likely that the BASF name would have been chosen only to benefit from the Complainant’s fame and to attract Internet consumers. Such use is not considered bona fide under Policy. Moreover the disputed domain name is used to sell products that are identical or similar to those protected by the Complainant’s trade mark registrations for BASF, namely paint. Using the disputed domain containing the BASF trade mark to sell competing products does not constitute legitimate noncommercial or fair use, nor a bona fide offering of goods or services.
(iii) The disputed domain name was registered and is being used in bad faith. The Respondent is using the disputed domain name to sell identical and similar products (paint). The Respondent is clearly attempting to attract for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. It is obvious that the Respondent had knowledge of the Complainant’s prior rights since the Complainant’s advertisement and promotional materials are displayed on some of the pages of the Respondent’s website. The header of the Respondent’s website displays the words: “Germany BASF”. Such use of the Complainant’s BASF trade marks along with a domain name reproducing the Complainant’s BASF trade mark must be considered as a bad faith registration and use of the disputed domain name.
Further, on one of the Respondent’s webpages, an English registration certificate is displayed. It is purportedly a company registration of the State of Nevada, United States of America, company charter. However, upon simple examination, it is obvious that the “BASFDEVIS” name was added to the certificate using an image-editing program. The certificate is therefore a fabricated document. Moreover, to the best of the Complainant’s knowledge and according to its research, there is no company registered in Nevada that bears the name “BASFDEVIS”. Such conduct on the Respondent’s part is clearly indicative that the Respondent seeks to mislead and fool consumers. This demonstrates bad faith.
Bad faith is also evidenced by the fact that the logo of the famous BRIDGESTONE trade mark has also been displayed on the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules stipulates that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant requested that English be the language of the proceeding for the reasons that there are circumstances which demonstrate that the Respondent is able to understand English. The Respondent’s website displays an English registration certificate, purportedly issued by the State of Nevada. The Complainant, on the other hand, as a German company, is not able to communicate in Chinese. Requiring it to do so would lead to a lot of additional expense and delay in the proceeding due to the need for translation of the Complaint. English is not the native language of the Complainant or its representative. It therefore does not give the Complainant an unfair advantage over the Respondent.
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
The Panel takes the view that it is appropriate for English to be the language of this proceeding. The disputed domain name incorporates a well known brand comprising Latin characters. The Respondent appears to be familiar with an international brand not of Chinese origin and with the display of the registration certificate issued in English on its website, the Panel believes that the Respondent has a degree of comfort with the English language. The communication in Chinese language by the Center to the Respondent regarding the commencement of the proceeding and the obligations the Respondent has under the Policy if he wants to dispute the Complaint, and regarding the language of the proceeding, has provided reasonable and fair opportunities for the Respondent to understand the nature of the administrative proceeding that has been commenced in relation to the disputed domain name and for him to respond. If the Respondent had any legitimate concerns, questions and/or difficulties with the English language, he could have brought this to the attention of the Center. He did not do so. In the interest of the Policy consideration expressed in paragraph 10(c) of the Rules, the Panel accordingly rules that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
The Complainant has, without doubt, rights in the BASF trade mark. The Panel is of the view and agrees that the BASF mark is well known. The question then is whether the addition of the term “debeirui” in the disputed domain name is sufficient to remove any confusion with the BASF trade mark.
The Complainant has been unable to determine any meaning or significance in Chinese in the term “debeirui”. Notwithstanding, the Panel is of the view that whether “debeirui” has any meaning or not, and whether it maybe a transliteration of word or term related to the Respondent, the salient factors remain, namely that (i) “basf” appears in its entirety in the disputed domain name, (ii) BASF is a well known trade mark of the Complainant, and (iii) the said mark is identifiable within the disputed domain name. Where a well known mark is incorporated within a domain name and the mark is clearly recognizable therein, it would require rather special circumstances for the domain name not to be confusingly similar to the complainant’s well known mark. An explanation of the derivation of the disputed domain name would be the very least that is expected from the respondent, before a panelist would have a basis to make a finding otherwise. The Respondent has not responded in the proceeding, a result of which the Panel is unable but to conclude that the disputed domain name is confusingly similar to the Complainant’s BASF trade mark.
The first element of paragraph 4(a) of the Policy has been satisfied.
C. Rights or Legitimate Interests
Having considered the circumstances of this case as presented in evidence by the Complainant, as well as the fact that BASF is a well known trade mark and the name of a well known entity, the Panel finds that the Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Policy provides examples of circumstances by which the Respondent could demonstrate his rights or legitimate interests in respect of the disputed domain name
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
None of the above circumstances have been shown by the Respondent to exist in this case. On the contrary, there is prima facie evidence of bad faith since the Complainant’s advertisement and promotional materials are displayed on some of the pages of the Respondent’s website. Such use does not constitute a bona fide offering of goods or services.
The second element of paragraph 4(a) of the Policy has therefore been satisfied in this case.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, if found by the Panel to be present, would be evidence of the registration and use of the disputed domain name to be 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 Panel notes that the Respondent has been using the disputed domain name to sell goods, namely paints, which is one of the items that the BASF trade mark and the Complainant are known for. The Respondent also appears to be well aware of the Complainant and of its BASF trade mark, since the Complainant’s proprietary promotional and advertising materials appear on the Respondent’s website. Based on the record, the Panel accordingly finds that the circumstances point to a clear attempt by the Respondent to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Respondent has not filed any response to defend his use and registration of the disputed domain name. The Panel accordingly finds for the Complainant on the issue of the registration and use of the disputed domain name, i.e. that the disputed domain name was registered and is being used in bad faith.
The third element of paragraph 4(a) of the Policy has therefore been satisfied in this case.
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 <basfdebeirui.com> be transferred to the Complainant.
Date: April 28, 2015