WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF S.A. v. Domain Administrator, Dvlpmnt Marketing, Inc.

Case No. D2018-2268

1. The Parties

Complainant is BASF S.A. of São Bernardo do Campo, São Paulo, Brazil, represented by IP Twins S.A.S., France.

Respondent is Domain Administrator, Dvlpmnt Marketing, Inc. of Charlestown, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <suvinil.com> (the “Disputed Domain Name”) is registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on October 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2018.

The Center appointed Roberto Bianchi as the sole panelist in this matter on November 26, 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

Complainant, founded in 1958 in São Paulo, is the Brazilian subsidiary of the BASF chemical company. Complainant produces chemicals, including pesticides, sodium methylate, raw materials for adhesives, resins, paints, detergents, cosmetics, etcetera.

Complainant owns numerous registrations for the trademark SUVINIL, including the following:

Complainant also owns the domain name <suvinil.com.br>.

The Disputed Domain Name was registered on November 4, 2003. According to the evidence, the Disputed Domain Name resolves to a website displaying pay-per-click links, and which also offers the Disputed Domain Name for Sale.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The Disputed Domain Name is identical or highly similar to Complainant’s prior trademarks SUVINIL. The first registration for the SUVINIL trademark dates back to 1981, decades before the registration of the Disputed Domain Name. The use of lower-case letters and the addition of the generic Top-Level Domain (“gTLD”) “.com” are not significant in determining whether the Disputed Domain Name is identical or confusingly similar to the mark:

Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name. Respondent is not commonly known by the Disputed Domain Name and has acquired no trademark or service mark rights related to the SUVINIL trademark. Complainant has conducted trademark searches and found no SUVINIL trademark or right owned by the owner of the Disputed Domain Name.

Respondent reproduces Complainant’s trademark without any license or authorization by Complainant, which is strong evidence of the lack of legitimate interest. See LEGO Juris A/S v. Ibnu Firdaus, WIPO Case No. D2012-1336. Respondent’s use or preparation to use of the Disputed Domain Name demonstrate no intent to use it in connection with a bona fide offering of goods or services. On the contrary, it is being used to display pay-per-click commercial links related to Complainant and/or its core activities. In addition, the Disputed Domain Name is placed on sale as evidenced by the banner at the top of the corresponding webpage. The sale of the Disputed Domain Name cannot be considered as a bona fide offering of goods or services.

The Disputed Domain Name was registered and is being used in bad faith. Complainant and its trademarks are so well known that it is inconceivable that Respondent ignored Complainant’s earlier rights in the trademark SUVINIL. At the time of the registration of the Disputed Domain Name, the SUVINIL trademark was registered and Complainant’s products were distributed widely by means of a large distribution network.

It is clear that Respondent had Complainant’s name and trademark in mind when registering the Disputed Domain Name. Respondent’s choice of the Disputed Domain Name cannot have been accidental and must have been influenced by the fame of Complainant’s group, BASF. Indeed, a simple search on an online search engine yields results only related to Complainant. Indeed, all results relate to Complainant, and in particular, the first result is “www.suvinil.com.br”. Therefore, at the very least, Respondent knew or should have known that, when it registered and used the Disputed Domain Name, it would do so in violation of Complainant’s earlier rights.

There is no possible way whatsoever that Respondent would use the Disputed Domain Name in connection with a bona fide offer of products or services. Indeed, any use of the SUVINIL trademark would amount to trademark infringement and damage to the reputation of the trademark. The sole holding of the Disputed Domain Name by Respondent, in an attempt to prevent Complainant from reflecting its trademark and company name in a domain name, is a strong evidence of bad faith. Furthermore, any actual use of the Disputed Domain Name by Respondent would de facto amount to bad faith active use.

Complainant’s trademark is arbitrary and has no common or general meaning in any language, and the Disputed Domain Name is not generic or descriptive. Respondent has been maintaining the Disputed Domain Name linked to a parking page for commercial gain. The ability of pay-per-click commercial links to generate revenue depends on the ability of the Disputed Domain Name to attract users seeking information on the owner of the trademark. As the Disputed Domain Name only comprises Complainant’s trademark, it appears that the Disputed Domain Name is very likely to attract Internet users. By the time Internet users reach the parking webpage under the Disputed Domain Name, they will already have been confused to associate the Disputed Domain Name with the trademark of Complainant and therefore confusion will already have occurred. This confusion is reinforced by the very strong resemblance between the Disputed Domain Name and Complainant’s domain name <suvinil.com.br>.

In addition, Respondent is offering the Disputed Domain Name for sale. It can be inferred that Respondent intends to make money from the reputation and well-known character of the SUVINIL trademark, which is a clear indication of bad faith.

Further, Respondent has a well-established history of abusing the Policy and has been involved in many prior domain name disputes in which Respondent was found to have registered and used in bad faith other domain names incorporating third parties’ trademarks. In these regard, Complainant mentions several cases, in which Panels have ordered that the domain names in issue be transferred to the respective complainants.

It is clear that Respondent has been engaging for a very long time in a pattern of domain name registrations to prevent the rightful trademark owners from reflecting their marks in the corresponding domain names.

Respondent registered the Disputed Domain Name in bad faith. Indeed, Respondent is deliberately using the Disputed Domain Name in order to mislead consumers by creating a likelihood of confusion with Complainant`s SUVINIL mark as to the source, affiliation or endorsement of Respondent’s website.

In light of all the elements above, Complainant contends that the Disputed Domain Name was registered and is being used in bad faith by Respondent. The combination of all the elements listed above unequivocally show that Respondent has acted in bad faith when it registered the Disputed Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts taken from the TMView database, provided by the European Intellectual Property Office (EUIPO), Complainant has shown that it owns multiple registrations for the SUVINIL trademark in Brazil and Uruguay. See section 4 above. Thus, the Panel is satisfied that Complainant has rights in this mark for purposes of Policy paragraph 4(a)(i).

The Panel notes that in the Disputed Domain Name the SUVINIL mark is incorporated in its entirety, with the only addition of the gTLD “.com”. The Panel finds that the Disputed Domain Name is identical to Complainant’s mark SUVINIL.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not commonly known by the Disputed Domain Name. In addition, according to Complainant’s trademark searches, Respondent has acquired no trademark or service mark rights related to the “suvinil” term. Complainant also contends that Respondent reproduces Complainant’s trademark without any license or authorization by Complainant, which is evidence of lack of legitimate interests. Further, Respondent’s use or preparation to use of the Disputed Domain Name demonstrate no intent to use it in connection with a bona fide offering of goods or services, since the Disputed Domain Name is being used to display pay-per-click commercial links related to Complainant and/or its core activities. Lastly, says Complainant, the Disputed Domain Name is being offered on sale as shown on the banner displayed at the top of the corresponding webpage, an offering that cannot be considered a bona fide offering of goods or services. From these facts and circumstances, Complainant concludes that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

In the Panel’s view, the available evidence on the casefile supports Complainant’s contentions. In the first place, according to the corresponding WhoIs database, the registrant of the Disputed Domain Name is Domain Administrator, Dvlpmnt Marketing, Inc. and nothing indicates that Respondent is known by the Disputed Domain Name, commonly or otherwise. This discards the application of Policy paragraph 4(c)(ii).

In addition, Complainant has shown with a screen capture obtained in October 2018, that the website at the Disputed Domain Name consists of a most basic page with the title “Suvinil.com” appearing under a legend stating, “This domain may be for sale”. On the web page appears a list of “associated links”, including “Suvinil Colors”, “Egyptian Cotton”, “Colors and Inks”, “Wall Decoration, “Free Software”, “App Designing Software”, “Fashionable Colors”, “Ink Colors, and “Free Online Play”. On December 8, 2018, the Panel, in exercise of its general powers under paragraph 10 of the Rules, visited the website at the Disputed Domain Name and found that it simply displays a similar list of “related links”, most of which in turn redirect to commercial websites apparently unrelated to Complainant, and some of which offering products or services in competition with Complainant.

Presumably, this use of the Disputed Domain Name was designed to generate income via click-through traffic. Respondent thus appears to be unduly profiting from Internet users visiting the website with the expectation of finding Complainant’s products and trademark. Obviously, this kind of use of the Disputed Domain Name cannot be a bona fide offering of goods or services under Policy paragraph 4(c)(i), or a fair or legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers under Policy paragraph 4 (c)(iii). This is enough for Complainant to make a prima facie case of Respondent’s lack of rights or legitimate interests.

The Panel notes that Respondent failed to reply to the Complaint, and to provide the Panel with any evidence or argument indicating that it might have at least some rights or legitimate interests in registering and using the Disputed Domain Name. Consequently, the Panel concludes that Respondent does not have any rights or legitimate interests in the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 2.1 (“…(W)here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”)

C. Registered and Used in Bad Faith

The Panel notes that some of the registrations for Complainant’s SUVINIL trademark in Brazil predate the registration of the Disputed Domain by over twenty years. See section 4 above. In addition, the website at the Disputed Domain Name consists of “related links”, several of which offer goods or services competing with Complainant. This shows that Respondent knew of Complainant, its goods and SUVINIL trademark at the time of registering the Disputed Domain Name. In the circumstances of this case, this means that the registration of the Disputed Domain Name was in bad faith.

Complainant has shown that Respondent was the respondent in numerous prior cases, where panels ordered the transfer of the corresponding domain names to the complainants. See Loris Azzaro B.V. v. “Domain Administrator” DVLPMNT MARKETING, INC., WIPO Case No. D2014-0098, relating to <chromeazzaro.com>; Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. DVLPMNT Marketing, Inc., WIPO Case No. D2014-0200, relating to <westincasuarina.com>; Coach, Inc. v. DVLPMMT Marketing, Inc., WIPO Case No. D2014-0784, relating to <coachoutlet.com> and <thecoachoutlet.com>; bioMérieux v. Domain Administrator - Dvlpmnt Marketing, Inc., WIPO Case No. D2014-1795, relating to <biomeriux.com>; Stuart Weitzman IP, LLC v. DVLPMNT Marketing, Inc., WIPO Case No. D2014-1858, relating to <stewartweitzmanshoes.com>; FirstMerit Corporation v. DVLPMNT MARKETING, INC., WIPO Case No. D2014-1995, relating to <firstmeritbank.net> and <firstmeritonlinebanking.com>; Milltronics USA, Inc. v. Domain Administrator, DVLPMNT Marketing, Inc. (DMI), WIPO Case No. D2015-1916, relating to <milltronics.com>; Wal-Mart Stores, Inc. v. Domain Administrator, DVLPMNT MARKETING, INC., WIPO Case No. Case D2016-0077, relating to <membersmarkgrill.com> and <membersmarkgrills.com>; Fraternal Enterprises Limited Partnership d/b/a Bredemann Ford v. DVLPMNT Marketing, Inc., WIPO Case No. D2016-0442, relating to <bredemannford.com>; BIC Corporation v. DVLPMNT Marketing, Inc., WIPO Case No. D2016-0557, relating to <bottlekoozies.com> and <koozie.com>; GeoGebra GmbH v. DVLPMNT Marketing, Inc., WIPO Case No. D2016-1419, relating to <geogebra.com>, and Tyson Foods, Inc. v. Domain Administrator, Dvlpmnt Marketing, Inc., WIPO Case No. D2017-0319, relating to <tysoncareers.com>. These cases demonstrate that Respondent has engaged in a pattern of preventing trademark owners from reflecting their marks in the corresponding domain names. According to Policy paragraph 4(b)(ii) this pattern of conduct allows to presume that Respondent is a serial cyber-squatter that has registered the Disputed Domain Name in order to prevent Complainant from reflecting the SUVINIL mark in a corresponding domain name, i.e., in bad faith.

Further, as shown in section 6 A above, Respondent’s use of the Disputed Domain Name appears to be clearly aimed at generating monies for Respondent via a click-through scheme, based on the confusion created among Internet users presumably looking for Complainant and its products. By using the Disputed Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use of the Disputed Domain Name in bad faith.

Lastly, the fact that Respondent failed to respond to the Complaint reinforces the Panel`s overall impression that Respondent is acting in bad faith.

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, <suvinil.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: December 10, 2018