WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Domain Sales - (Expired domain caught by auction winner) c/o Dynadot
Case No. D2019-1096
1. The Parties
The Complainant is BASF SE, Germany, represented by IP Twins S.A.S., France.
The Respondent is Domain Sales - (Expired domain caught by auction winner) c/o Dynadot, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <kauranat.com> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 12, 2019, 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 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 May 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 21, 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is a German chemical company. It is part of the BASF group, which is one of the largest chemical companies in the world and 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. It 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 manufactures and sells a chemical product used in wood production under the name “Kauranat”. The Complainant has various registrations for the trademark KAURANAT the earliest being European Union trademark registration no. 128728, registered on October 15, 1998. These trademarks are referred to in this decision as the “KAURANAT trademark”.
The Disputed Domain Name was registered by the Respondent on August 10, 2018. At present it does not resolve to a website but evidence filed by the Complainant shows it has resolved to a webpage where it was offered for sale for USD 988.
5. Parties’ Contentions
The Complainant says that the Disputed Domain Name is identical to its KAURANAT trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the term “kauranat”. It says Kauranat is a coined word with no other meaning other than in relation to the Complainant and its product of that name.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says the Respondent offered to sell the Disputed Domain Name at a price in excess of its
out-of-pocket costs in acquiring the Disputed Domain Name.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Complainant has rights in the KAURANAT trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the KAURANAT trademark is a coined word and where there is no evidence of anyone else using that term.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
None of these applies in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the KAURANAT trademark. The Complainant has prior rights in the KAURANAT trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel concludes that on the balance of probabilities, paragraph 4(b)(i) above applies. As indicated above, the filed evidence shows the Respondent offering the Disputed Domain Name for sale for USD 988, which is a sum likely to be well in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name. Given that the word Kauranat has no other meaning apart from in relation to the Complainant the Panel infers the Respondent intended to sell the Disputed Domain Name to the Complainant.
Further, the Panel finds it difficult to conceive any legitimate case of good faith that the Respondent may have and the Respondent has not filed any Response to rebut the case advanced by the Complainant. As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <kauranat.com> be transferred to the Complainant.
Nick J. Gardner
Date: July 5, 2019