WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Whois Privacy Protection Service, Inc. / Tah Teche, Cranium Developers
Case No. D2016-1902
1. The Parties
The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Tah Teche, Cranium Developers of Buea, Cameroon.
2. The Domain Name and Registrar
The disputed domain name <basf-global.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 Complainant filed an amended Complaint on September 22, 2016.
The Center verified that the Complaint together with 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 September 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2016. The Center received an email communication from the Respondent on September 29, 2016.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on October 25, 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 facts relevant to the decision in this case are that:
(1) the Complainant is a global chemical company doing business by reference to the trade mark BASF;
(2) the trade mark BASF is the subject of United States Patent and Trademark Office ("USPTO") Registration No. 72198631, filed July 28, 1964 and registered May 31, 1966, presently standing in the name of the Complainant;
(3) the disputed domain name was registered on September 9, 2015;
(4) the disputed domain name resolves to a webpage with miscellaneous links, described later; and
(5) there has been no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark.
5. Parties' Contentions
The Complainant asserts trade mark rights in BASF and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant accordingly petitions the Panel to order transfer of the disputed domain name.
The Respondent did not submit a Response to those contentions.
The Respondent stated in an email communication to the Center that the disputed domain name was purchased for "a customer of [the Respondent's] former employer" and that "[the disputed domain name] has since expired and is no longer in [the Respondent's] possession".
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of registration of the trade mark BASF with the USPTO and the Panel accepts that the Complainant has trade mark rights.
The generic Top-Level Domain, ".com", can (generally and in this case) be disregarded for the purposes of comparison.2 The disputed domain name takes the trade mark and links to it, by hyphenation, the word "global", a generic term of no source-distinguishing value. The trade mark is the only distinctive part of the disputed domain name and the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.3
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
"(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."
There is no evidence that the Respondent has trade mark rights in the disputed domain name. The publicly available WhoIs database identifying the Respondent as the registrant does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no relationship between the Parties, and the Complainant has not authorized the Respondent to use its trade mark. The evidence is that the disputed domain name resolves to a webpage with links to the Complainant but also with link, for example, to "Cyclisme" (cycling) and "Astuces et conseils pour jeux" (tips and tricks for games). Whether or not those links have been automatically generated, the Respondent is responsible for the material posted there and the capacity of the resolving website to confuse Internet users and draw them away from the Complainant's business does not indicate a bona fide offering of goods or services, or show a legitimate noncommercial use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply to the Complainant's contentions has not rebutted such prima facie case. Additionally, the Respondent indicates that the disputed domain name was purchased for another party and is no longer in the Respondent's possession, suggesting further that it has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(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 web site 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 web site or location or of a product or service on your web site or location."
The Panel finds that the Respondent's actions fall squarely under paragraph 4(b)(iv). The Panel has already found the disputed domain name to be confusingly similar to the trade mark. The Panel accepts the Complainant's assertion that the Respondent gains commercially from the resultant confusion which brings traffic to the resolving webpage. The Panel finds that, in terms of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the Complainant's trade mark as to the source or affiliation of that location.
Accordingly, the Complainant has satisfied the third and final limb of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and with the Complainant's request, the Panel orders that the disputed domain name <basf-global.com> be transferred to the Complainant.
Debrett G. Lyons
Date: November 8, 2016
1 See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").