WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Zhou Yu (周瑜)
Case No. D2019-2790
1. The Parties
The Complainant is BASF SE, Germany, represented by IP Twins S.A.S., France.
The Respondent is Zhou Yu (周瑜), China.
2. The Domain Name and Registrar
The disputed domain name <basfpharm.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 November 14, 2019. On November 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 22, 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 November 25, 2019.
On November 22, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 25, 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 November 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2019.
The Center appointed Joseph Simone as the sole panelist in this matter on January 16, 2020. 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, BASF SE, is one of 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, the Americas and Africa.
The Complainant is currently expanding its international activities with a focus in Asia. Between 1990 and 2005, the Complainant invested EUR 5.6 billion in major Chinese hubs like Nanjing and Shanghai.
The Complainant owns a large number of trademark registrations for BASF including the following:
3, 5, 30
May 3, 1995
1, 2, 3, 4, 5, 6, 7, 9, 10, 12, 16, 17, 18, 19, 22, 24, 25, 27, 28, 29, 30, 31, 32, 35, 36, 37, 39, 41, 42, 44
October 31, 2006
The Complainant also holds domain names incorporating the BASF trademark including <basf.com>, <basf.asia>, <basf.in> and <basf.org>.
The disputed domain name <basfpharm.com> was registered on December 11, 2018. It currently does not resolve to an active website. According to screenshots from the Complainant’s submission, the disputed domain name previously resolved to an English-language website about a chemical company “Basfpharm” and its products. After the Complainant filed a removal request with the Registrar, the content was removed.
5. Parties’ Contentions
The Complainant’s main arguments are as follows:
1. The disputed domain name is identical or confusingly similar to its trademark BASF.
The trademark BASF is reproduced identically at the front of the disputed domain name. It is followed by the term “pharm”, which may easily be understood as short for “pharma”, “pharmaceuticals”, or “pharmacy”. As chemistry and chemical products are at the core of the Complainant’s business, the addition of “pharm” does not reduce the likelihood of confusion.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant never granted an authorization, licence or any right to the Respondent to use the Complainant’s trademarks. To the best of the Complainant’s knowledge, the Respondent has not acquired any trademark or service mark related to the BASF term. All BASF marks are owned by companies of the BASF Group, and the mark is so widely well known that reproducing it in a business or company name as the Respondent did on its website, can be for no other purpose than to create an impression of affiliation with the Complainant. It cannot be relied on to demonstrate a legitimate interest in the disputed domain name.
The Respondent’s use of the dispute domain name to offer goods and/or services is not bona fide or fair use, as it only increases the likelihood of confusion with the Complainant by offering goods and/or services that are protected by BASF trademarks.
3. The disputed domain name was registered and is being used in bad faith.
The Complainant’s registered trademarks for BASF far predate the registration of the disputed domain name and are extremely well known. Along with the fact that the disputed domain name contains the term “pharm”, corresponding to the Complainant’s products, this indicates that the Respondent was aware of the Complainant or its rights when registering the dispute domain name.
The Respondent is using the disputed domain name to sell identical and similar products to those covered by BASF trademarks. By creating a likelihood of confusion with the Complainant, the Respondent is attempting to compete with the Complainant, harm the Complainant’s business, and benefit from its worldwide fame and reputation.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
In accordance with paragraph 11 of the Rules:
“[…] the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Therefore, the default language of the proceeding shall be Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the main reason that prior to the commencement of proceedings, the disputed domain name resolved to a fully English language website, including content on chemical components and their categories. This suggests the Respondent is well able to understand English. On the other hand, the Complainant cannot communicate in Chinese, therefore it would cause additional expense and delay to require translation of the Complaint.
The Panel agrees that the Respondent can understand English or has access to good interpretation services. In addition, the Respondent was notified of each step of the proceedings in both Chinese and English, and did not respond regarding the choice of language, or submit a response. Therefore, there is no reason to require the Complainant to re-submit the Complaint in Chinese.
Accordingly, the Panel shall conduct the proceedings in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant has shown that it owns trademark registrations for BASF, therefore it possesses rights to the mark.
The disputed domain name is composed of “basfpharm” in which the Complainant’s trademark appears at the front, followed by the term “pharm”. As the Complainant contends, the term “pharm” is commonly recognized as the root term of derivatives such as “pharma” and “pharmaceuticals”. The Complainant’s trademark BASF is recognizable within the disputed domain name, and the addition of the term “pharm” does not prevent a finding of confusing similarity under the first element. Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).
The Complainant submits it has no affiliation with the Respondent and has never authorized the Respondent to use its trademarks or register the disputed domain name. There is also no evidence that the Respondent is commonly known by the disputed domain name. In this regard, the use of a domain name and a corresponding trade name on a website does not automatically vest rights or legitimate interests in the disputed domain name. In this case, the trademark BASF is so well known in relation to the chemical industry that the Respondent would have to show that he had a pharmaceutical business that predated the Complainant and/or its rights. There is nothing to indicate this is the case, therefore the establishment of a website advertising pharmaceuticals under the pretense of a company called “Basfpharm” is for no other reason than to imitate the Complainant.
In the absence of any evidence presented by the Respondent otherwise, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under the final element of the Policy, the Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant is one of the largest chemical producers in the world, with a global production and distribution capacity which extends to China, therefore, the Complainant and its trademark BASF can be considered well known. Against this background, the Panel infers the Respondent had actual knowledge of the Complainant and its rights when registering the disputed domain name containing “basf” and “pharm”, particularly in the context of the website set up under the disputed domain name.
Prior to the Complainant’s request to the Registrar to remove the content, the disputed domain name resolved to an English-language website advertising what purported to be a “high-tech chemical group” called “Basfpharm”. The company introduction stated it is engaged in the research, development and production of fine chemicals and other products, and was followed by an extensive list of “recommended products”, comprised of different chemical formulations. The presentation of the company and its business clearly implied an affiliation or presented a real risk of confusion with the Complainant.
Furthermore, although this content has been removed, there is still a real likelihood that consumers looking for the Complainant would mistakenly find the Respondent’s website, thereby interfering with the Complainant’s business. There is also a danger that the content could reappear and deceive consumers into purchasing unauthorized medical products which do not comply with the international quality and safety standards that the Complainant adheres to.
Considering all the circumstances, it is clear that the Respondent is riding on the reputation of the Complainant, and intends to interfere with the Complainant’s business. Therefore, the Panel concludes the disputed 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 disputed domain name <basfpharm.com> be transferred to the Complainant.
Date: January 29, 2020