WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. wang sicai / Basf Engineering Plastics (Shzhen) Co.,Ltd
Case No. D2016-1904
1. The Parties
The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is wang sicai / Basf Engineering Plastics (Shzhen) Co.,Ltd of Dongguan, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <basf-group.net> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English 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 September 20, 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.
On September 21, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on September 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2016.
The Center appointed Douglas Clark 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 Complainant, founded in 1865, is a well-known chemical production company with its headquarter in Ludwigshafen, Germany. Its products range from chemicals, plastics, crude oil to catalysts, coatings and crop technology etc. The Complainant also owns subsidiaries and joint ventures all over the world and operates more than 350 production sites in Europe, Asia, Australia, the Americas and Africa. It is listed on the Frankfurt, London and Zurich Stock Exchange.
The Complainant owns over 600 BASF trademarks, including Hong Kong, China Trademark registration No. 19890829 and No. 19890836; Chinese Trademark Registration No. 331145 and No. 329978; International Trademark Registration No. 521841, No. 638794, No. 909293, No. 892497 and No. 316799.
The Complainant is also the owner of many domain names incorporating “basf” such as <basf.com>, <cnbasf.com>, <basf.asia>, <basf.in> and <basf.org>.
The Respondent is a company based in Dongguan, Guangdong, China.
The disputed domain name was registered on May 22, 2015 and does not resolve to any page.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the disputed domain name <basf-group.net> is confusingly similar to its trademark BASF. The disputed domain name contains BASF in its entirety as the distinctive part of the disputed domain name. The additional English word “group” refers to a group of companies; such addition increases the confusing similarity between the disputed domain name and the Complainant’s trademark.
No rights or legitimate interests
The Complainant further submits that the Respondent has no connection with the Complainant and has never sought or obtained any consent or trademark registrations for BASF. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that its trademark BASF is a widely-known chemical production brand and is recognized by people in Asia and has been used in Asia and other parts of the world for many years that there is no likely legitimate right or plausible use possible by the Respondent.
Given the distinctiveness of the Complainant’s trademark and reputation, the Complainant submits that the Respondent undoubtedly had full knowledge of the Complainant’s trademarks.
The Complainant submits that the Respondent acquired the disputed domain name to disrupt the business of the Complainant and/or to prevent the Complainant from reflecting its mark in a corresponding domain name.
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 Agreements is Chinese.
Paragraph 11(a) of the Rules provides 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 the language of the proceeding to be English on the grounds that: (a) the Complainant, based in Germany, is unable to communicate in Chinese; (b) English is not the native language of the Complainant or its representative, therefore it would not give them an unfair advantage over the Respondent; (c) the translation of documents would cause undue delay and costs and would be disadvantageous to the Complainant; and (d) according to the reverse WhoIs search based on the email address of the Respondent, the Respondent also registered another two domain names containing generic English words.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2 Substantive issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 use in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <basf-group.net> incorporates the Complainant’s BASF trademark in full with the addition of the word “group” and the generic Top-level Domain (“gTLD”) (“.net”). The disputed domain name is therefore confusingly similar to the Complainant’s registered trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Compliant to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant is internationally well known and owns over 600 BASF trademarks including China. The Respondent has no business or any kind of relationship (licensor, distributor) with the Complainant.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights or legitimate interests. These are:
“(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.”
Although the Respondent’s business name is Basf Engineering Plastics (Shzhen) Co., Ltd, this, without further evidence as to whether this is its real name and what rights it has to use this name, does not confer any rights or legitimate interests on the Respondent. The Respondent has not responded to the Complaint, nor has it presented any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name <basf-group.net> was registered in bad faith and is being used in bad faith.
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <basf-group.net> was registered in bad faith and is being used in bad faith. Given the Complainant’s worldwide reputation, the Respondent clearly should have known of the Complainant when it registered the disputed domain name. The disputed domain name comprises of the Complainant’s mark in its entirety.
While the disputed domain name has not yet been used, this does not prevent a finding of bad faith. Having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the disputed domain in bad faith. (See paragraph 3.2 of the WIPO Overivew 2.0).
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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-group.net> be transferred to the Complainant.
Date: October 31, 2016