WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Seemer Mohammed
Case No. D2016-1906
1. The Parties
The Complainant is BASF SE of Ludwigshafen, Germany, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Seemer Mohammed of Chuzhou, Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <chembasf.com> is registered with GoDaddy.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 confirming that the Respondent is listed as the registrant and providing the Respondent's 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 September 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 18, 2016.
The Center appointed Cherise Valles 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.
The information set out on the disputed domain name is in English and it is therefore assumed that the Respondent understands English.
4. Factual Background
The Complainant is a leading chemical company. It employs approximately 112,000 employees through its companies in more than 80 countries. The Complainant posted sales of more than EUR 70 billion in 2015, and its shares are traded on the stock exchanges in Frankfurt, London and Zurich, among others.
The Complainant is the owner of multiple trademark registrations throughout the world, including in China, for the mark BASF. These include the following:
- International trademark registration number 521841 for BASF, registered on January 16, 1988 (and duly renewed) in classes 1, 2, 3, 4, 5, 6, 9, 11, 16, 17, 19, 30, 31, 37 and 42, with China as a designated country;
- International trademark registration number 638794 for BASF, registered on May 3, 1995 (and duly renewed) in classes 3, 5 and 30, with China as a designated country;
- International trademark registration number 909293 for BASF, registered on October 31, 2006 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, with China as a designated country.
The Complainant has also domain names under generic Top-Level Domains ("gTLDs") including the trademark BASF, including <basf.com>.
The disputed domain name <chembasf.com> was registered on August 21, 2016. The disputed domain name previously resolved to a website that contained the Complainant's corporate image, header and footer, and which constituted an almost exact replica of the Complainant's genuine website.
5. Parties' Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, namely, BASF, in light of the fact that it wholly incorporates the Complainant's mark.
- The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
- The disputed domain name has been registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the website at the disputed domain name replicated the contact page of the Complainant's website and replaced the phone and fax numbers by an email address referring to the Respondent. This adds to the likelihood that the Respondent has been using the disputed domain name for phishing or other malicious purposes.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (i.e., a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant in accordance with the Rules, paragraph 14(b).
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The disputed domain name <chembasf.com> wholly incorporates the Complainant's registered BASF trademark. The addition of the element "chem" is insufficient to distinguish the disputed domain name from the Complainant's BASF trademark. Previous UDRP panels have held that there is confusing similarity where the entire mark in question is incorporated into the disputed domain name and where only a generic word, or a shortened version of a generic word, has been added. See, among others, BASF SE v. kou xiansheng, bashifurunhuayouwuxiyouxiangongsi, WIPO Case No. D2015-2245. Indeed, the Respondent's use of the term "chem" (the shortened version of the English word "chemical") in connection with the trademark BASF increases the confusing similarity because the Complainant uses the trademark BASF in connection with its activities as a chemical company.
In the light of the foregoing, the Panel finds that the disputed domain name <chembasf.com> is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with "you" referring to the respondent):
"[a]ny 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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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."
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. See, for example, Champion Innovations, Ltd. V. Udo Dussling (45FHH), WIPO Case No. D2005-1094. The Complainant's BASF trademark is well-known worldwide (including in China), as recognized by previous UDRP panels. See, for example, BASF SE v. kou xiansheng, bashifurunhuayouwuxiyouxiangongsi, supra. In contrast, there is no evidence to suggest that the Respondent is commonly known by the disputed domain name or has registered trademarks or trade names corresponding to the disputed domain name, which evinces a lack of rights or legitimate interests in the disputed domain name.
Previous UDRP panels have found that in the absence of any license or permission from the complainant to use such a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed. This is applicable in the present case as the website at the disputed domain name suggests that the Respondent is the Complainant, when in fact there would appear to be no relationship between the Parties whatsoever.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
As mentioned in Section 4 above, the disputed domain name resolved to a website which constituted an almost exact replica of the Complainant's genuine website. Moreover, the reputation of the Complainant's trademarks, including in China where the Respondent appears to be located, has been confirmed by past UDRP panels, including in BASF SE v. kou xiansheng, bashifurunhuayouwuxiyouxiangongsi, supra. Both of these facts suggest that at the time the Respondent registered the disputed domain name, the Respondent must have known of the Complainant and its BASF trademark. It has previously been held that knowledge of a corresponding trademark at the time of the domain name registration suggests bad faith. See, for example, Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling, WIPO Case No. D2008-0226.
Previous UDRP panels have found bad faith where, evidence suggests that the disputed domain name was being used to copy and mirror a website associated with a complainant. See ALH Group Pty Ltd v. Naveen Mathur, WIPO Case No. D2015-2004. The disputed domain name in this proceeding resolved to a website constituting an almost exact replica of the Complainant's genuine website, and this constitutes evidence of bad faith use. The Panel further accepts the Complainant's contention that such use of the disputed domain name may be indicative of phishing or other malicious purposes.
In the light of the foregoing, the Panel finds that paragraph 4(a)(iii) of the Policy is 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 <chembasf.com> be transferred to the Complainant.
Date: November 8, 2016