WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. Domains By Proxy, LLC / José Fernando
Case No. D2020-1142
1. The Parties
The Complainant is BASF SE, Germany, represented by IP Twins S.A.S., France.
The Respondent is Domains By Proxy, LLC, United States of America (“the United States”) / José Fernando, Brazil.
2. The Domain Name and Registrar
The disputed domain name <agrega-basf.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2020. On May 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2020, 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 May 18, 2020, 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 19, 2020.
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 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2020.
The Center appointed Peter Burgstaller as the sole panelist in this matter on June 20, 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 disputed domain name <agrega-basf.com> was registered on April 24, 2020 by the Respondent.
The Complainant is one of the largest chemical companies in the world and owner of a great variety of registered trademarks containing the mark BASF in numerous jurisdiction internationally, especially the International word trademark BASF with Registration No. IR 638 794 (registered on May 3, 1995 with its basic registration in Germany on March 31, 1995, Registration No 394 07 371) and Registration No IR 909 293 (registered on October 31, 2006 with its basic registration in Germany on August 4, 2006, Registration No 306 29 281.5/01), designating the United States and many other countries around the world (Annex 4, 5, 13, and 14 to the Complaint).
The Complainant runs a loyalty program in Brazil under the name “agrega” and the domain name <agrega.basf.com.br>.
There is no evidence put forward by the Complainant that the disputed domain name actively resolves to a website.
5. Parties’ Contentions
The Complainant is the largest chemical company in the world and is listed on the Frankfurt Stock Exchange, London Stock Exchange, and Zurich Stock Exchange. The Complainant’s 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, America, and Africa.
The Complainant has customers in over 200 countries and supplies products to a wide variety of industries, employing more than 112,000 people around the world; it owns more than 1,500 trademark rights for BASF worldwide; BASF is a famous trademark.
The disputed domain name <agrega-basf.com> is highly similar to the BASF trademark of the Complainant and likely to create confusion in the mind of the general public. “Agrega” is a loyalty program launched by the Complainant in Brazil; the addition of this term to the BASF trademark not only does nothing to diminish the risk of confusion, but rather increases the risk of confusion on the part of the Internet user of average attention. The Complainant runs the loyalty program “agrega” in Brazil under the domain name <agrega.basf.com.br>.
The Respondent has no rights or legitimate interests in respect of the disputed domain name: the Respondent is not commonly known by the disputed domain name; the Respondent has acquired no trademark or service mark related to the BASF term; the Respondent reproduces the Complainant’s trademark without any license or authorization from the Complainant; the Respondent’s use of the disputed domain name or preparation to use the disputed domain name demonstrate no intent to use it in connection with a bona fide offering of goods or services; the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s BASF trademarks.
The disputed domain name was registered and is being used in bad faith: The Complainant’s BASF trademark registrations significantly predate the registration date of the disputed domain name. Since the BASF trademarks are so widely well known, it is inconceivable that the Respondent must have known and been aware of the Complainant’s BASF trademarks when registering the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed 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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s non-generic/-descriptive, famous and throughout the world well-known registered trademark BASF since it entirely contains this trademark and only add the term “agrega” together with a hyphen.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that suffixes such as a generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element see section 2.1 of the WIPO Overview 3.0 ).
When considering all of the evidence put forward by the Complainant (especially with regard to the Annexes to the Complaint), as well as the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks BASF in a domain name or in any other manner, it is undeniably for this Panel that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g., Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
The disputed domain name was registered on April 24, 2020; the Complainant has a great variety of registered trademark rights in the mark BASF since 1995 in numerous jurisdictions around the world. The Complainant is one of the world’s largest chemical companies and operates subsidiaries, joint ventures and numerous productions sites around the world. The Complainant also runs a loyalty program in Brazil under the name “agrega” and the domain name <agrega.basf.com.br>.
The Complainant’s trademark BASF is well known and has widespread recognition worldwide for many years if not decades.
Moreover, there are recognized legitimate uses of privacy/proxy registration services, but where it appears that respondent employs a privacy/proxy service merely to avoid being notified of a UDRP proceeding filed against it, UDRP panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference.
In the present case however, the Respondent did not file a Response; moreover, the facts of the present case lead this Panel to the conclusion that the Respondent merely employed a privacy/proxy service to hide its identity from potential disputes. In such cases, the use of a privacy/proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant is also an indication of bad faith (see section 3.6 of the WIPO Overview 3.0).
The Panel is convinced that it is inconceivable that the Respondent has registered the disputed domain name without knowledge or being aware of the Complainant’s rights; this is especially supported by the fact that the BASF trademark is non-descriptive/-generic and the Respondent used a preffix to the Complainant’s trademark, which refers to the Complainant’s loyalty program in Brazil (“agrega”).
These facts lead the Panel to the conclusion that the disputed domain name was registered with full knowledge of the Complainant’s rights and as such in bad faith by the Respondent.
Although there is no evidence that the disputed domain name is being actively used, previous UDRP panels have found that bad faith use under paragraph 4(a)(iii) of the Policy does not necessarily require a positive act on the part of the respondent – inaction is within the concept of paragraph 4(a)(iii) of the Policy (see especially Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ladbroke Group Plc v Sonoma International LDC, WIPO Case No. D2002-0131).
This Panel also concludes that the present passive holding of the disputed domain name, constitutes a bad faith use, putting emphasis on the following:
- the Complainant’s trademarks are famous with strong reputation and are well known globally;
- the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;
- the nature of the disputed domain name falsely suggests an affiliation with the Complainant;
- the disputed domain name incorporates the Complainant’s trademark BASF, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site); and
- there is no conceivable plausible reason for good faith use with regard to the disputed domain name.
Taking all these facts and evidence into consideration this Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of 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 <agrega-basf.com> be transferred to the Complainant.
Date: July 4, 2020