WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Domain Administrator, See PrivacyGuardian.org / tropicalheightsafricalimited, tropica heightsafrica
Case No. D2019-0955
1. The Parties
The Complainant is BASF SE, Germany represented by IP Twins S.A.S., France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / tropicalheightsafricalimited, tropica heightsafrica, Uganda.
2. The Domain Name and Registrar
The disputed domain name <basfuk.com> (“Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2019. On April 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 2, 2019.
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 May 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2019.
The Center appointed Willem Leppink as the sole panelist in this matter on May 31, 2019. 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 following facts are undisputed.
The Complainant is part of the BASF Group, one the largest chemical companies in the world and is listed on the Frankfurt Stock Exchange, London Stock Exchange, and Zurich Stock Exchange. The BASF Group comprises subsidiaries and joint ventures in more than 80 countries, and operates six integrated production sites and 390 other production sites in Europe, Asia, Australia, Americas and Africa. BASF Group has customers in over 200 countries and supplies products to a wide variety of industries, employing more than 112,000 people around the world. The Complainant is therefore a major, well-known company in the field of chemicals.
The Complainant owns a large portfolio of trademarks comprising of the word element BASF, including the international registration number 909293, based on a national German registration filed in August 4, 2006, for goods and services in classes 1, 2, 3, 4, 5, 6, 7, 9, 10, 12, 16, 1, 7, 18, 19, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 35, 36, 37, 39, 41, 42, 44, designating several states, including the United Kingdom. This international registration will hereinafter be referred to as the “Trademark”.
The Complainant and/or its group companies carried out their first sale in the UK in 1880 and BASF has a history of 137 years of presence in the UK.
The Domain Name was registered on November 25, 2018.
The Domain Name resolved to a website (“Website”) that mirrored the official website of The Complainant “www.basf.com”, by having a source code that linked to this official website.
5. Parties’ Contentions
Insofar as relevant for deciding this matter, the Complainant contends the following.
The Domain Name is highly similar to the Trademark, as it fully contains the well-known Trademark to which the geographical designation UK (the usual designation for the UK) is added.
The Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name. The Respondent is not commonly known by the Domain Name and has acquired no trademark or service mark rights related to the “BASF” term. The Respondent reproduces the Trademark without any license or authorization from the Complainant, which is a strong evidence of the lack of legitimate interests. See WIPO Case No. D2012-1336, LEGO Juris A/S v. Ibnu Firdaus. The Respondent’s use of the Domain Name or preparation to use the Domain Name demonstrate no intent to use it in connection with a bona fide offering of goods or services. To the contrary, the Respondent uses the Domain Name in a fashion that is extremely detrimental to the Complainant, by mirroring the source code of the official website of the Complainant. The mirroring of the website is a clear attempt to make Internet users believe the Website and the Domain Name originate from the Complainant. The Respondent has never been granted authorization, license or any right whatsoever to use the Trademark. Moreover, the Respondent is not commercially linked to the Complainant.
It is clear that the Domain Name was registered and is being used in bad faith. The Trademark is so widely well-known that it is inconceivable that the Respondent ignored the Complainant’s earlier rights. It is clear that the Respondent had the Complainant’s name and Trademark in mind when registering the Domain Name. The Respondent’s choice of Domain Name cannot have been accidental and must have been influenced by the fame of the Trademark. The bad faith is reinforced by the fact that the Respondent was at the time of filing the complaint mirroring the official website of the Complainant in an attempt to cause confusion in the mind of the internet users. There is no possible way whatsoever that the Respondent would use the Domain Name in connection with a bona fide offer of products or services. It is clear that Respondent is using a privacy protection service to shield its identity and avoid these proceedings. The use of a privacy protection service is not per se an indication of bad faith, it must be considered as such when coupled with the registration as a Domain Name of a well-known trademark and with the current use of the domain name. The Domain Name is currently linked to email servers. By potentially sending and receiving emails from that email address and maybe others, the Respondent clearly attempts to harm the Complainant by impersonating it. The Complainant submits that this is a clear evidence of bad faith on the part of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark.
The Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name reproduces the Trademark in its entirety, only adding “uk” which is an international country code for the UK.
In addition, with regard to the generic Top-Level Domain (“gTLD”) “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / email@example.com, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457); it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the gTLD is a necessary component of the domain name.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions.
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
Based on the record, there is no evidence of any of the circumstances set forth in paragraph 4(c) of the Policy, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file of any other rights or legitimate interests in the Domain Name. There is also no evidence that the Complainant ever permitted in any way the registration or use the Complainant’s Trademarks, or to apply for or use any domain name incorporating the Trademarks. Moreover, the Website, to which the Domain Name resolved, gave the Internet public the impression that it was the official website of the Complainant, as the Website was a mere reproduction of the official Website of the Complainant. Hence, the Panel finds that the Website was clearly misleading, which contributes to the lack of legitimate interests.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, there is no evidence of any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. There is also no evidence of any legitimate noncommercial or fair use of the Domain Name.
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant, the Panel finds that the Trademark which is also the name of Complainant are very well known in multiple jurisdictions.
Based on the facts of the matter, several circumstances indicate that the intention behind the registration of the Domain Name seems to be to create the false impression that the Domain Name is affiliated with the Complainant and of the Website being an official website of Complainant and thus for Internet users receiving fraudulent emails from email addresses related to the Domain Name and that would check the Website related to the same Domain Name, to be falsely reassured that such email would originate from the Complainant.
In the Panel’s view there is no other plausible explanation as to why the Domain Name was registered, other than in awareness of the Complainant and the Trademark trying to be engaged in fraudulent behavior. This explanation is confirmed by the fact that the Respondent was initially hiding behind a privacy shield, was using a non-existing address and has not responded to the Complaint.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <basfuk.com> be transferred to the Complainant.
Willem J.H. Leppink
Date: June 14, 2019