WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Liu Jialiang
Case No. D2016-1843
1. The Parties
The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Liu Jialiang of Jiangmen, Guangdong, China.
2. The Domain Names and Registrar
The disputed domain names <basfpaint.com> and <gd-basf.com> are registered with Xiamen ChinaSource Internet Service Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2016. On September 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 18, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed two amended Complaints on September 29, 2016 and October 3, 2016 respectively.
The Center verified that the Complaint together with the two amended Complaints 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 October 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 25, 2016.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 3, 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 company incorporated in Germany and is among the largest chemical companies in the world. The Complainant is the owner of more than 600 registrations worldwide for the trade mark BASF (the "Trade Mark"). The Trade Mark is a well-known mark in relation to chemical products, including paints and coatings.
The Respondent is apparently an individual resident in China.
C. The Disputed Domain Names
The disputed domain names were registered on June 5, 2015 and February 12, 2014, respectively.
D. The Websites at the Disputed Domain Names
The disputed domain names are both resolved to the same website, which promotes the business of a company based in Zhongshan City in Guangdong Province, China - 中山市巴斯夫涂料有限公司 (Zhongshan City BASF Paint Company Limited) and offers for sale a wide range of paint products under the Trade Mark (the "Website").
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The menu on the Website is in both Chinese and English language;
(2) The banner advertisements and charts featured on the Website are in both Chinese and English language;
(3) The URL terms used by the Respondent to develop the Website use English language;
(4) The Complainant is not able to communicate in Chinese. Being a German entity, the Complainant is not in a position to conduct this proceeding in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint; and
(5) English is not the native language of the Complainant, so conducting this proceeding in English will not give the Complainant an unfair advantage.
The Respondent, having received the Center's communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Furthermore, having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Website is predominantly a Chinese language website, although it does have some English language content.
The Panel considers that, in all the circumstances of this proceeding, including, in particular, the Respondent's decision to take no part in this proceeding despite being given the opportunity to do so in both English and Chinese, it would be inappropriate to conduct the proceeding in Chinese, which would necessarily involve extra costs on the part of the Complainant in translating the Complaint into Chinese, and would delay the resolution of this proceeding.
In all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names comprise the Trade Mark in its entirety, together with the common and generic word "paint", which is descriptive of the Complainant's goods marketed and sold under the Trade Mark, or the letters "gd", the common acronym for Guangdong, the province in China in which the operator of the Website is based. The Panel finds the addition of such generic and descriptive wording or lettering does not serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a 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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in respect of the Website, which offers for sale paint products in direct competition with those of the Complainant, and which features prominently the Trade Mark. Under the circumstances, the Respondent's use would likely lead to confusion on the part of Internet users through the impersonation of the Complainant and its activities.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
For the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In light of the manner of use by the Respondent of the Website described above, the Panel finds the requisite element of bad faith has been satisfied under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel finds that the disputed domain names have been registered and are being used in bad faith.
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 names <basfpaint.com> and <gd-basf.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: November 17, 2016