WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Domain Administrator / Oscar Zhou
Case No. D2017-2486
1. The Parties
The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is Domain Administrator of Phoenix, Arizona of United States of America (“United States”) / Oscar Zhou of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <basf-hk.com> is registered with NameSilo, LLC (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 18, 2017, 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 Center sent an email communication to the Complainant on December 22, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not submit an amended Complaint.
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 December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. The Respondent submitted an informal response on January 4, 2018.
The Center appointed Edoardo Fano as the sole panelist in this matter on January 23, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is BASF SE, a German Company leader in the fields of chemical products with a presence in more than 80 countries and operating in more than 200 countries, owning more than 1,500 trademarks for BASF, including:
- International Trademark Registration No. 638794 for BASF, registered on May 3, 1995;
- International Trademark Registration No. 909293 for BASF, registered on October 31, 2006.
The Complainant operates its main website at “www.basf.com” and owns several other domain name registrations incorporating the trademark BASF.
The Complainant provided evidence in support of the above.
The disputed domain name <basf-hk.com> was registered on October 27, 2017. At the time of this decision, the website at the disputed domain name was not active.
5. Parties’ Contentions
The Complainant states that the disputed domain name <basf-hk.com> is confusingly similar to its trademark BASF, as the letters “hk”, which can be understood as the acronym for Hong Kong, China, are descriptive and not distinctive.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the disputed domain name has not intended to use or made preparations to use the disputed domain name in connection with a bona fide offer of goods or services, as the disputed domain name “has not been used in any way whatsoever”.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark BASF is distinctive and well known all around the world. Therefore, the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant cannot see a use of the disputed domain name by the Respondent that would not amount to bad faith.
The Respondent has made no formal reply to the Complainant’s contentions. However, the Respondent submitted an informal email communication on January 4, 2018. In his email, the Respondent stated the following:
“I don’t know what you mean.
I registered a basf-hk.com a few months ago
I’m going to use the game blog site I developed for Hongkong,
There’s nothing to do with BASF
My domain name means
Building Automation System Friend’s (HK)
Because the project is still developing, I haven’t updated my page yet.
I don’t think my domain name should be given to BASF.
If they are interested in this domain, they should try to buy the domain name before me.
They made me sad.”
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark BASF both by registration and acquired reputation and that the disputed domain name <basf-hk.com> is confusingly similar to the trademark BASF.
Regarding the addition of the letters “hk”, the Panel notes that it is now well established that the addition of generic terms or letters to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the letters “hk” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a formal response in accordance with the Rules, paragraph 5.
The Complainant, in its Complaint and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. The Respondent in its informal response stated that the disputed domain name would be used for a “game blog site” and that the disputed domain name means “Building Automation System Friend’s (HK)”. However, the Respondent has not presented any evidence in this respect or of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [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; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.”
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark BASF in the fields of chemical products is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, <basf-hk.com>, because it is confusingly similar to the Complainant’s trademark.
Regarding the use in bad faith of the disputed domain name, pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use.
The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been 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-hk.com> be transferred to the Complainant.
Date: January 29, 2018