WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE. v. huang jian (黄健)
Case No. D2019-1323
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 name <basf-gmbh.com> is 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 name. On June 12, 2019, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name, 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, each 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 name, which was registered on May 30, 2019. The disputed domain name directs to an inactive webpage and has been used for phishing activities.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for BASF, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is 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 name is not linked to an active website. However, the Complainant contends that the disputed domain name’s DNS records contain MX and SPF records, indicating that the disputed domain name was used in verifying and setting up an email address. The Complainant claims that such email address was used in sending out phishing emails. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain name.
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 Agreement 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 name is 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 name; and
(iii) the disputed domain name has been registered and is 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 name.
Moreover, as to confusing similarity of the disputed domain name with the Complainant’s marks, the disputed domain name consists of the combination of two elements, which are the Complainant’s BASF trademark and the addition of “-gmbh”. “Gmbh” is the common German abbreviation of “Gesellschaft mit beschränkter Haftung”, which is one of the types of limited liability companies under German law. The Panel therefore finds that this term is a purely descriptive abbreviation. According 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 name contains the entirety of the Complainant’s trademark, as its only distinctive feature. The addition of the descriptive abbreviation “-gmbh” does not avert the confusing similarity between the disputed domain name and the Complainant’s trademarks. Accordingly, the Panel rules that the disputed domain name is 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 name. 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 widespread fame of the Complainant’s trademarks, further confirmed by the prior UDPR decisions adduced by the Complainant, the registration of the disputed domain name which incorporates such trademarks in their entirety was clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name 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 name, which only differs from the Complainant’s official domain name by the addition of the descriptive term “-gmbh“, the Respondent clearly intended to present itself, through the disputed domain name or the email address linked to it, as the Complainant, or at least as closely linked to 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 name in bad faith.
As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name’s DNS records contain MX and SPF records, indicating that the disputed domain name was used in setting up and verifying an email address linked to the disputed domain name. The Complainant claims that such email address was used in spreading phishing emails, and provides evidence of receipt of an email, in German, sent by the email address “[…]@basf-gmbh.com” dated June 3, 2019, containing a request for personal information (birth date and a copy of an identity document or passport), on behalf of the purported human resources department of the Complainant. The Panel accepts this as clear evidence of a phishing attempt by the Respondent, through an email address linked to the disputed domain name. In this regard, the WIPO Overview 3.0, section 3.4 provides: “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information […].” On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name 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 name <basf-gmbh.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: August 5, 2019