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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Sheng Yi Xiang

Case No. D2017-2598

1. The Parties

The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.

The Respondent is Sheng Yi Xiang of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <ciba-basf.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2017. On January 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2018, 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 January 16, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 17, 2018. 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 English and Chinese of the Complaint, and the proceedings commenced on January 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2018.

The Center appointed Rachel Tan as the sole panelist in this matter on March 6, 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 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 trademarks 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.

Ciba AG was a chemical company based in Switzerland. In 2008, Ciba AG was acquired by the Complainant who now owns registrations for the CIBA trademark, including two International Registrations designating various jurisdictions:

CIBA POLY-MEC No. 763510, registered July 16, 2001, in class 09;

CIBAFAST No. 618413, registered May 3, 1994, in class 01.

The Complainant holds numerous domain names incorporating the BASF trademark, both within 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 November 12, 2013. The disputed domain name currently does not resolve to any webpage, but previously hosted what appears to be the website of a company trading as, Shanghai Jingyan Chemical Co., Ltd (“Jingyan”), which purports to offer BASF branded products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trademarks, 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.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of Proceeding

Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.

In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:

(a) The Complainant has undertaken a reverse WhoIs search for domain names owned by the Respondent and located five domain name containing English words;

(b) The Complainant is a German entity and is not in a position to conduct the proceeding in Chinese with a great deal of additional expense and delay due to the need for translation of the Complaint. English is not the native language of the Complainant or its representative, and would not give it unfair advantage over the Respondent.

The Complainant cites a number of UDRP decisions in which a panel has allowed the language of the proceeding to be in English rather than the language of the Registration Agreement.

The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.

It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:

(a) The Complainant is a company from Germany. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;

(b) English is not the native language of either Party;

(c) The Respondent’s choice of English words for other domain names indicates some familiarity with the English language;

(d) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and

(e) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

6.2. Analysis of the Complaint

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 rights to the BASF and CIBA trademarks.

In this case, the disputed domain name is comprised of the trademarks CIBA and BASF in their entireties, conjoined by a hyphen. The use of a hyphen and lower case is inconsequential to the assessment of identity or confusing 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 identical or confusingly similar to the Complainant’s trademarks.

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 and CIBA trademarks 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 terms “basf” or “ciba”;

(b) There is no indication to show that the Respondent is commonly known by the disputed domain name or has acquired trademark rights to the term “basf” or “ciba”;

(c) The Respondent has reproduced not one but two of the Complainant’s trademarks without license or authorization showing a lack of legitimate intent;

(d) The Complainant has submitted an archived webpage on which Jingyan offered BASF branded products, giving a misleading impression of association with the Complainant; and

(e) The Respondent has never been granted authorization to use the Complainant’s BASF or CIBA trademarks, nor is the Respondent commercially linked to the Complainant.

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 based on the evidence submitted and all other relevant facts and 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 and CIBA trademarks and domain names were registered well before the registration date of the disputed domain name. The Complainant has made extensive use of the BASF trademark 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 acquisition of Ciba AG, the worldwide reputation of its brands, and its business activities. It is thus inconceivable that the Respondent was unaware of the Complainant’s trademark rights at the time of registering the disputed domain name.

(b) The disputed domain name currently resolves to an inactive website. However, the Panel notes that in the past, the disputed domain name resolved to the website of Jingyan. On the website, Jingyan claimed to be the sales agent of the Complainant specializing in the wholesale distribution of BASF and CIBA branded pigments and paints. 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. Therefore, the Respondent was intentionally trying to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s BASF and CIBA trademarks 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 all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering previous usage and by continuing to hold the disputed domain name, the Respondent has registered and is using the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the third element under paragraph 4(a) of the Policy.

7. Decision

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 <ciba-basf.com> be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: March 20, 2018

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