WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. huang jian (黄健)
Case No. D2019-1322
1. The Parties
The Complainant is BASF SE, Germany, represented by IP Twins S.A.S., France.
The Respondent is huang jian (黄健), China.
2. The Domain Name and Registrar
The disputed domain names <basf-deutschland.com>, <basf-service.com>, and <basf-unternehmen.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 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 in English on June 19, 2019.
On June 19, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on June 19, 2019. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on July 24, 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 Complainant is one of the largest chemical companies in the world and is active, through its affiliates, in over 80 different countries. The Complainant states that 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 states that it is currently expanding its international activities, with a focus on Asia, including China, where the Respondent resides, where it invested EUR 5.6 billion in major hubs like Nanjing and Shanghai.
The Complainant owns a large portfolio of trademark registrations for BASF (word and device marks) in China and throughout the world, for example international trademark registration number 638794, registered on May 3, 1995 and international trademark registration number 909293, registered on October 31, 2006, both designating, inter alia, China. Incidentally, the relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain names, which were all registered on June 4, 2019. The disputed domain names direct to inactive webpages.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain names are confusingly similar to its trademarks for BASF, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.
The Complainant claims that its trademarks are famous and well regarded in the chemical industry, and provides evidence of a number of prior UDPR decisions in which the BASF marks were explicitly recognized as well-known trademarks. The disputed domain names are not linked to active websites. However, the Complainant contends that the disputed domain names are held passively by the Respondent, that this constitutes “passive holding”, and that the DNS records for the disputed domain names contain MX and SPF records, indicating that the disputed domain names were used in verifying and setting up email addresses. The Complainant claims that such email addresses may be used to impersonate the Complainant and mislead third parties. Moreover, the Complainant contends that the registration of the three disputed domain names, each following the same pattern of the BASF trademark + hyphen + generic term constitutes a pattern of bad faith behavior. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain names and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of the proceeding
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant states that, to the best of its knowledge, the language of the Registration Agreements is Chinese. Nevertheless, the Complainant has filed its Complaint in English, and requests that the language of the proceeding be English.
The Panel has carefully considered all elements of this case, in particular, the Complainant's request that the language of the proceeding be English and the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese); and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.
6.2. Discussion and Findings on the merits
The Policy requires the Complainant to prove three elements:
(i) the disputed domain names are identical 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the sign BASF based on its use and registration of the same as a registered trademark, incidentally commencing many years prior to the registration of the disputed domain names.
Moreover, as to confusing similarity of the disputed domain names with the Complainant’s marks, each of the disputed domain names consist of the combination of two elements, which are each time the Complainant’s BASF trademark as the first element, and the respective additions of “-deutschland”, “-service” and “-unternehmen” as the second elements. These second elements are all descriptive: “-deutschland” means Germany in German, “-service” refers to the provision of services and “-unternehmen” means “to undertake”, “company” or “companies” in German. The Panel therefore finds that these terms are all purely descriptive. The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662). The Panel concludes that the disputed domain names contain, each time, the entirety of the Complainant’s trademark, as their only distinctive feature. The addition of the descriptive elements does not avert the confusing similarity between the disputed domain names and the Complainant’s trademarks. Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel notes that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant's trademarks. Further, the Respondent is not commonly known by the disputed domain name. The Panel therefore considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply. Moreover, The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.
C. Registered and Used in Bad Faith
Given the strong reputation and fame of the Complainant’s trademarks, further confirmed by the prior UDPR decisions adduced by the Complainant, the registration of the disputed domain names which incorporates such trademarks in their entirety was clearly intended to mislead and divert consumers to the disputed domain names. Even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondent that the Complainant owned, and owns, trademarks in BASF and uses these marks extensively, including in the Respondent’s home jurisdiction China. Moreover, by registering the disputed domain names, which only differ from the Complainant’s official domain name by the addition of the descriptive terms “-deutschland”, “-service” and “-unternehmen”, the Respondent clearly intended to present itself, through the disputed domain names or the email addresses linked to them, as the Complainant, or as a certain department or entity within the company structure of the Complainant. In the Panel's view, these elements clearly indicate the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain names in bad faith.
As to use of the disputed domain names in bad faith, the disputed domain names all link to inactive websites. In this regard, the WIPO Overview 3.0, section 3.3, provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. Having regard to all elements of the case at hand, and in particular to the fact that the only distinctive element in each of the disputed domain names is the Complainant’s trademark, the high degree of distinctiveness and reputation of the Complainant’s trademarks, the evidence provided by the Complainant that the DNS records of the disputed domain names contain MX and SPF records, indicating that the disputed domain names have been used to set up and verify email addresses which are likely used to mislead the public and impersonate the Complainant, and the fact that the Respondent’s registration of the three disputed domain names, each following the same pattern of the “BASF trademark” + “hyphen” + “descriptive term”, constitutes a pattern of bad faith behavior, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.
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 names <basf-deutschland.com>, <basf-service.com>, and <basf-unternehmen.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: August 5, 2019