WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Tan Wei, Heap Can Plastics Co., Ltd. Suzhou
Case No. D2017-2484
1. The Parties
The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Tan Wei, Heap Can Plastics Co., Ltd. Suzhou of Suzhou, Jiangsu, China,
2. The Domain Name and Registrar
The disputed domain name <basf-nylon.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2017. On December 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2017, 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. The Complainant filed an amended Complaint on January 4, 2018, to correct an administrative formality.
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 January 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2018. The Respondent sent an informal email communication to the Center on January 10, 2018. On January 31, 2018, the Center informed the Parties that it would proceed with the panel appointment.
The Center appointed Rachel Tan as the sole panelist in this matter on February 28, 2018. 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, part of the BASF Group, is one of the the largest chemical companies in the world. It has customers in over 200 countries and supplies products to a wide variety of industries. Between 1990 and 2005, the Complainant invested EUR 5.6 billion in Asia, which included sites in Nanjing and Shanghai, China.
The Complainant trades under the BASF mark, and owns over 1,500 BASF trade marks worldwide. In particular, the Complainant holds the following two International Registrations designating a large number of jurisdictions, including China:
BASF No. 638794, registered May 3, 1995, in classes 03, 05 and 30;
BASF No. 909293, registered October 31, 2006, in classes 01, 02, 03, 04, 05, 06, 07, 09, 10, 12, 16, 17, 18, 19, 22, 24, 25, 27, 28, 29, 30, 31, 32, 35, 36, 37, 39, 41, 42 and 44.
The Chinese transliteration of BASF is “巴斯夫”, pronounced as “BA SI FU”.
The Complainant holds numerous domain names incorporating the BASF trade mark, both under generic Top-Level Domains (“gTLDs”) and country-code Top-Level-Domains (“ccTLDs”), particularly in Asia: <basf.com>, <basf.asia>, <basf.in>, <basf.org>and many others.
The disputed domain name was registered on March 20, 2017. The disputed domain name resolves to a website displaying the Complainant’s trade mark and logo, and purports to be hosted by a distributor of the Complainant’s products in China.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the trade mark, the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name.
The Respondent did not submit any substantive response to the Complainant’s contentions.
6. Discussion and Findings
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the BASF trade mark.
The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name.
In this case, the disputed domain name is comprised of the BASF trade mark in its entirety followed by a hyphen and then the word “nylon”. The positioning of the BASF trade mark at the beginning of the disputed domain name makes it instantly recognizable. The word “nylon” does not assist in distinguishing the disputed domain name. The use of a hyphen and lower case is inconsequential to the assessment of identity or confusingly similarity. It is permissible for the Panel to ignore the generic Top-Level Domain suffix, in this case “.com”. Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant needs to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Since the overall burden of proof rests with the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If 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 disputed domain name. If the Respondent fails to come forward with such appropriate allegations or evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited.
In this case, the Complainant has established registered rights in the BASF trade mark which well predate the registration of the disputed domain name. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
(a) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “basf”;
(b) There is no indication to show that the Respondent is commonly known by the disputed domain name or has acquired trade mark rights to the term “basf”;
(c) The Respondent has reproduced the Complainant’s trade mark without license or authorization. The further decision to add the term “nylon”, a chemical material manufactured by the Complainant, evidences the lack of legitimate interests;
(d) The disputed domain name resolves to an active website which reproduces the BASF trade mark and logo as well as the Complainant’s other trade marks, such as ULTRAMID, ULTRADUR and ULTRAFORM. Within the content on the website, the Respondent uses the term “we” to associate itself with the Complainant, even though it is neither an authorized retailer nor does it have a commercial relationship with the Complainant. Such misleading behaviour on the part of the Respondent clearly demonstrates that the disputed domain name is not being used in connection with a bona fide offering or goods or services; and
(e) The Respondent is not licensed or authorized to use the BASF trade marks.
The Respondent has not come forward with any substantive response to rebut the Complainant’s allegations. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances which would constitute evidence of registration and use of a domain name in bad faith.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case, and based on the evidence of these and other relevant circumstances, the Panel is satisfied that the Respondent has registered and used the disputed domain name in bad faith. In reaching its conclusion, the Panel had regard to the following circumstances:
(a) The Complainant’s BASF trade mark and domain names were registered well before the registration date of the disputed domain name. The Complainant has made extensive use of the BASF trade mark globally, including in China, where it has sizeable operations. A simple Internet search would have yielded a considerable amount of information about the Complainant, the worldwide reputation of its brands, and its business activities. The Respondent is connected with Heap Can Plastics Co., Ltd. Suzhou, a company apparently operating in the plastics industry, which would appear to compete with the activities of the Complainant. It is thus inconceivable that the Respondent was unaware of the Complainant’s trade mark rights at the time of registering the disputed domain name.
(b) There is no evidence to show that the Respondent is using the disputed domain name in good faith for the genuine offering of goods or services. In stark contrast, the disputed domain name currently resolves to a website which contains an introduction to the Complainant and multiple reproductions of the BASF trade mark, logos and other trade marks owned by the Complainant. The copyright notice blatantly names “巴斯夫（中国）有限公司” (BASF (China) Co., Ltd), as the copyright owner. Furthermore, the Respondent claims to be a distributor of the Complainant. However, the Complainant has stressed that the Respondent is in no way affiliated with the Complainant. Instead, the Respondent has intentionally created the impression of a commercial relationship with the Complainant in order to mislead consumers. Moreover, the product links on the website redirect users to “www.xzslw.com”, the website of Heap Can Plastics Co. Ltd Suzhou. Therefore, the Respondent is intentionally trying to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s BASF trade mark as to the source, affiliation or endorsement of its website and the products listed therein.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account the Respondent’s lack of rights of legitimate interests, and all the facts and circumstances of the case, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
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-nylon.com> be transferred to the Complainant.
Date: March 14, 2018