WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bioline Agrosciences Limited v. Klaus Iwahn
Case No. D2020-3527
1. The Parties
Complainant is Bioline Agrosciences Limited, United Kingdom, represented by Cabinet Regimbeau, France.
Respondent is Klaus Iwahn, Germany.
2. The Domain Name and Registrar
The disputed domain name <basf-bioline.com> is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Registrar confirmed that the language of the Registration Agreement is German and the Center sent a Language of Proceedings email on December 29, 2020.
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 Respondent of the Complaint, and the proceedings commenced on January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. Respondent provided arguments to the Language of Proceedings email and sent additional emails once the case had been notified. However, the Respondent did not submit any Response. Accordingly, the Commencement of Panel Appointment on February 2, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 3, 2021. 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.
The Panel issued Panel Order No. 1 requesting Complainant to provide a translation of the Complaint to German. The Center duly transmitted said translation and notified Respondent that the due date for the Response is March 15, 2021. Respondent submitted a Response on March 15, 2021. The decision due date was extended to at least March 26, 2021.
4. Factual Background
Complainant is a subsidiary of Invivo Group, a French agricultural cooperative group. Complainant or its related entities are the proprietors of several trademark registrations, including the following:
- European Union (“EU”) Trademark No. 003265212 for BIOLINE (device mark), registered on December 15, 2004 for goods and services in classes 31 and 44;
- French trademark no. 4311777 for BIOLINE FRANCE (word mark), registered on March 3, 2017 for goods and services in classes 31, 35, 42, and 44;
- French trademark no. 4311788 for BIOLINE AGROSCIENCES (device mark), registered on March 3, 2017 for goods and services in classes 31, 35, 42, and 44;
- International trademark no. 1351490 for BIOLINE AGROSCIENCES (device mark), registered on March 22, 2017 for goods and services in classes 31, 35, 42, and 44.
An entity related to Complainant has registered various domain names comprising the BIOLINE mark, including <biolinesolution.com>, <bioline-solution.com>, and <biolinesolutions.fr>.
The disputed domain name was registered on January 2, 2020. It resolves to a landing page providing information in various languages, including English, stating “This domain is now reserved. As of now, no content has been uploaded.”
The record contains copies of Complainant’s cease-and-desist emails to Respondent dated June 15, 2020, September 15, 2020 and October 1, 2020. The record does not contain any response to these letters.
5. Parties’ Contentions
Complainant requests that the language of proceedings be English for the following reasons. Complainant is located in the United Kingdom and has no knowledge of the German language, and would therefore incur costs related to translation. The disputed domain name contains the English words “bio” and “line”, suggesting that Respondent has knowledge of languages other than German. The disputed domain name redirects to the home page of a web host provider displaying information in English. Finally, English is the native language of Complainant and the international language mostly used in business relationships.
Complainant’s contentions regarding the disputed domain name may be summarized as follows.
Under the first element, Complainant states that it is an international company owned by Invivo Group, a leading French agricultural cooperative group. Complainant is active in more than 30 countries, particularly in EU countries, and offers a range of products, solutions and services in the agriculture field. The disputed domain name is confusingly similar to Complainant’s mark since it includes the term “bioline” in its entirety, which is the sole verbal element of Complainant’s trademark and is also confusingly similar to marks owned by an entity related to Complainant. The addition of “basf” does not prevent the recognition of the “bioline” portion of the disputed domain name since “basf” has no specific meaning and is furthermore clearly dettached from the “bioline” element by a hyphen. Consumers are likely to conclude that the disputed domain name is simply an extension of Complainant’s business and will be misled into believing that the disputed domain name refers to Complainant. BASF is a world-leading chemical company which is active in the agricultural sector and is the holder of numerous registrations for the BASF trademark, including in the EU, and has registered the domain name <basf.com>. The addition of the third-party mark does not eliminate the impression that the disputed domain name is associated with Complainant’s prior rights.
Under the second element, Complainant states that Respondent has no connection with Complainant in any way, as Respondent is not an authorized dealer, distributor, or licensee of Complainant. Respondent is not known by the disputed domain name and has no known prior rights anywhere in the world. The registration of the BIOLINE mark predates the registration of the disputed domain name. Respondent is not using the disputed domain name, which is relevant in assessing that Respondent does not intend to do so. There is evidence that Respondent has no reason to use the disputed domain name except to divert Internet users. An email server has been configured on the disputed domain name, therefore, there might be a risk that Respondent is engaged in a phishing scheme.
Under the third element, Complainant states that it is an international company that belongs to Invivo Group, which is a leading French agricultural cooperative group whose INVIVO trademark has been acknowledged by a previous Panel as being well-known. The prior rights in BASF are held by a world leading chemical company that is active in the agricultural sector. It is therefore implausible that Respondent was unaware of Complainant’s rights, or of the BASF mark, when registering the disputed domain name. The span of time between Complainant’s prior rights and Respondent’s registration of the disputed domain name indicate bad faith, as does Respondent’s use of a privacy service. The domain name is being used in bad faith under the doctrine of passive holding due to several circumstances, namely, Complainant had registered its rights some years ago, Respondent is presumed to have had knowledge of these rights; Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name; any use of the disputed domain name would confuse the public; Respondent has attempted to shield his identity by using a privacy service. The configuration of email servers on the disputed domain name evidences bad faith. Respondent ignored Complainant’s cease-and-desist letter and reminders.
Complainant requests cancellation of the disputed domain name.
Respondent did not initially provide a Response to Complainant’s contentions. However, Respondent provided email correspondence in response to the Language of Proceedings email requesting that the language of proceedings be German, the language of the registration agreement. Respondent stated that he is a private individual and does not know sufficient English to participate in the proceedings; that his income is insufficient to cover the costs of translation, and that he will be representing himself in the proceedings due to financial constraints. Upon receiving the translation of Complaint, Respondent filed a Response that may be summarized as follows:
Respondent states that he is a master gardener and owner of a German business engaged in the business of marketing and distributing non-chemical agricultural products.
Under the first element, Respondent states that there is no likelihood of confusion with Complainant’s mark, since the EU trademark is registered as a device mark and the other marks of Complainant contain additional word elements. Respondent states that the BIOLINE mark is purely descriptive, and that numerous other marks are registered in Germany containing the elements “bioline” or “bio-line.” Complainant does not hold a registration for BIOLINE as a word mark, and it is not appropriate to permit Complainant to exercise a monopoly over the “bioline” element, and the design elements narrow the scope of protection for this mark. “Bio” and “line” are words having meaning in the English language and therefore lack distinctiveness.
Under the second element, Respondent states that he is the owner of a German company called Firma Öre Bio-Protect Biologischer Pflanzenschutz GmbH, registered to an address in Germany. He has registered the disputed domain name for business purposes, among them producing agricultural products and distributing the products of others. One of the companies whose products its officially distributes is BASF SE, a world-famous company that also produces non-chemical agricultural products. Through its agreement with BASF SE, Respondent’s company is charged with increasing market awareness of the products of this biological product line. The disputed domain name was registered to provide a separate website for these BASF “bio line” products.
Under the third element, Respondent states that the disputed domain name has not yet been used, therefore, only the registration should be considered. The disputed domain name was registered only for the use of Respondent, not for license or sale to third parties. The disputed domain name does not hinder the ability of Complainant to register its domains, since the disputed domain name also contains other elements, most notably the BASF mark, which is used because this company’s products are being offered. The disputed domain name contains purely descriptive elements to which Complainant cannot claim exclusivity. Respondent is not engaged in phishing or other schemes as proposed by Complainant.
Complainant requests cancellation of the disputed domain name.
6. Discussion and Findings
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Preliminary Issue – Language of Proceedings
Rule 11(a) provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition. See, for example, Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251.
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must consider all relevant circumstances, including whether Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) section 4.5.1).
In this case, the Panel noted Respondent’s request that the proceedings take place in German, and Respondent’s statements that he is a private individual and does not have sufficient knowledge of the English language to take part in the proceedings, nor resources to ensure a translation. The record contains Complainant’s cease-and-desist letters, in English, to Respondent, but no evidence that Respondent read them. There was no correspondence between the Parties that would demonstrate Respondent’s facility with English.
The Panel noted Complainant’s statements regarding the cost and delay that would be incurred due to translation. However, the Panel found that, where the language of the registration agreement is German and there was no evidence available at the time that Respondent understands English, in the interests of fairness to both parties such a translation must be provided. Accordingly, this Panel ordered Complainant to translate the Complaint into German stating inter alia the following:
The Panel is at the same time mindful that the Respondent may have requested the translation to delay the proceedings and expose the Complainant to additional costs and without any legitimate justification for having registered the disputed domain name. In that light, the Panel notes that the requested translation need not be “official” or “certified” and in the Complainant’s discretion may employ readily available public translation resources.
Upon reviewing the Response, in which – despite his claim to not understand English – Respondent provides English-language excerpts of case law from the EUIPO and bases its claim to the disputed domain name on Respondent’s company’s commercial activities in global markets, the Panel holds that the proceedings may proceed in English and this Decision shall be rendered accordingly.
B. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the BIOLINE mark through registrations in France, the EU and internationally. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.
In comparing Complainant’s BIOLINE mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s BIOLINE mark in its entirety. Complainant’s trademark is recognizable within the disputed domain name. The Panel is aware that BASF, a mark of a third party, is also found in the disputed domain name. According to previous Panel decisions, however, the existence of another mark does not avoid a finding of confusing similarity to Complainant’s mark under the first element. See, for example, Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142, <chevron-texaco.com> and WIPO Overview 3.0, section 1.12.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Respondent challenges the distinctiveness of the BIOLINE mark. However, the arguments provided concerning the distinctiveness of the word “bioline” are not relevant to the first element, since the distinctiveness of Complainant’s mark is not a subject of this proceeding. See WIPO Overview 3.0, section 1.1. The Panel holds that Complainant has proved that it holds relevant trademark rights that support a finding of standing to file the complaint. The fact that Complainant’s EU trademark contains design elements is not relevant to finding whether Complainant has such standing. See WIPO Overview 3.0, section 1.2.3.
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
The circumstances stated in the Complaint, the Amended Complaint and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s well-established BIOLINE mark with the mark of a third party, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by a trademark owner. See WIPO Overview 3.0, section 2.5.2.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent’s arguments do not prove rights or legitimate interests. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the BIOLINE mark with the permission of Complainant. By his own admission, Respondent’s company is called Firma Öre Bio-Protect Biologischer Pflanzenschutz GmbH. This is clearly distinguishable from the disputed domain name. The asserted commercial relationship with BASF SE does not confer rights or legitimate interests in the disputed domain name, which also reflects the mark of Complainant. See generally also WIPO Overview 3.0, section 2.8.1.
Finally, the exceptions for noncommercial use cannot apply, since Respondent states that the disputed domain name has been registered specifically for commercial purposes. See WIPO Overview 3.0, section 2.4.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Complainant’s rights in the BIOLINE mark predate the registration of the disputed domain name by more than a decade. It is not credible that Respondent, by his own admission engaged in the field of agricultural products for many years, was unaware of Complainant’s mark when he registered the disputed domain name. The Panel finds that the addition of the third-party mark BASF, a large company that is active in many sectors, including agriculture, is a deliberate choice to appropriate the marks of these specific companies.
Considering these circumstances, the Panel finds that such a registration supports an inference of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.
The Panel finds that Respondent has demonstrated bad faith by passive holding of the disputed domain name. In particular, the Panel finds that Complainant has provided sufficient evidence that its BIOLINE mark has a strong reputation in the agricultural sector, Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name, Respondent had concealed his true identity by using a privacy service, and especially noting the third party mark in the same industry which the Respondent has not shown has given permission for such use there is no way to avoid an impression that one or both of the mark owners had consented to such use. Such a finding is consistent with previous UDRP decisions, such as WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows. See also WIPO Overview 3.0, section 3.3.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 <basf-bioline.com> be cancelled.
Date: March 26, 2021