WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. 祝龙堂 (Zhu Longtang), 路易达润滑油（北京）有限公司 (Luyida Lubricants (Beijing) Co. Ltd)

Case No. D2021-0110

1. The Parties

The Complainant is BASF SE, Germany, represented by IP Twins S.A.S., France.

The Respondent is 祝龙堂 (Zhu Longtang), 路易达润滑油（北京）有限公司 (Luyida Lubricants (Beijing) Co. Ltd), China, internally represented.

2. The Domain Name and Registrar

The disputed domain name <basfu.net> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2021, 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 January 18, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amended Complaint.

On January 18, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. 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 January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. The Response was filed in Chinese with the Center on February 15, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on March 12, 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.

4. Factual Background

The Complainant is a chemical company. Its corporate group operates six integrated production sites and 390 other production sites in Europe, Asia, Australia, the Americas, and Africa with customers in over 200 countries. It supplies products to a wide variety of industries. The Complainant holds multiple trademark registrations for BASF, including International trademark registrations number 638794, registered on May 3, 1995, and number 909293, registered on October 31, 2006, both designating multiple jurisdictions and specifying goods or goods and services in multiple classes. The Complainant’s Chinese name is 巴斯夫 (pronounced “bā sī fū”).

The Respondent 路易达润滑油（北京）有限公司 (Luyida Lubricant (Beijing) Co. Ltd) is a Chinese company; 祝龙堂 (Zhu Longtang) is its general manager. The Respondent is the holder of Chinese trademark registration number 4030364 for BASFU and device, registered on May 27, 2012, specifying industrial oil and grease, lubricating oil and lubricants (not including oil for fuel) in class 4.

The disputed domain name was registered on April 19, 2018. It formerly resolved to a blue webpage that displayed BASFU and a Chinese transliteration 巴斯孚 (pronounced “bā sī fú”), with BASFU also being the favicon. Later, the webpage displayed only its blue background. At the time of this Decision, the disputed domain name no longer resolves to any active website.

On July 11, 2019, Chinese State Intellectual Property Office (“SIPO”) declared invalid the Complainant’s trademark registration number 909293H for BASF, specifying goods in class 4, on the grounds of its similarity to the Respondent’s prior registration for BASFU and device, which is registered in respect of similar goods. The Complainant had applied for revocation of the Respondent’s trademark registration on grounds of non-use but on November 28, 2019 the Beijing Intellectual Property Court had ordered the Respondent’s trademark registration to be maintained. On June 24, 2020, the Beijing Intellectual Property Court confirmed SIPO’s decision to invalidate the Complainant’s trademark registration.

Neither Party has informed the Panel of any court proceedings regarding the disputed domain name.

5. Parties’ Contentions

A. Complainant

The disputed domain name is highly similar to the BASF trademark and likely to create confusion in the mind of the general public. The Complainant’s name in Chinese characters is 巴斯夫, pronounced “bā sī fū”. It must therefore be concluded that the signs are visually and phonetically extremely similar.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the disputed domain name, whether as an individual or a company. The Respondent has acquired no trademark nor service mark related to the BASF term. The Complainant has conducted trademark searches and found no BASF trademark or right owned by the owner of the disputed domain name. The disputed domain name resolves to a website where nothing aside from a blue background with a broken hyperlink are displayed. More importantly, the website includes a favicon that uses a presentation and a font that are almost identical to that of the BASF trademark: the letters are capitalized, spaced, and sized similarly, and share the same tinge of blue. The Respondent’s website formerly displayed the same logo on its homepage, accentuating the resemblance even more. The Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s BASF trademarks. Moreover, the Respondent is not commercially linked to the Complainant.

The disputed domain name was registered and is being used in bad faith. The BASF trademarks are so widely well known that it is inconceivable that the Respondent ignored the Complainant’s earlier rights on the term BASF. The Respondent’s website formerly displayed an image that included the abovementioned Chinese characters 巴斯夫, which leaves no doubt that the Respondent had them in mind when registering the disputed domain name as the expression “basfu” is their transliteration in English. The choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant’s trademark. Indeed, a simple search in an online search engine for BASF yields results only related to the Complainant. It is highly likely that the Respondent chose the disputed domain name because of its identity with or similarity to a trademark in which the Complainant has rights and legitimate interests.

B. Respondent

The Respondent is a company lawfully established in China that has validly registered Chinese trademark registration number 4030364 for BASFU in class 4 in 2012. The Complainant’s International trademark registration number 909293H for BASF in class 4 was invalidated in China by SIPO and SIPO’s decision has been confirmed on appeal by the Beijing Intellectual Property Court.

The Complainant’s domain name is <basf.com>, which is completely different from the disputed domain name. Moreover, the Respondent only sells goods in the China. The Respondent has lawfully registered the disputed domain name with the Registrar and that registration remains valid.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is composed of Latin letters and that the Complainant is not able to communicate in Chinese so that conducting the proceeding in Chinese would cause a great deal of additional expense and delay due to translation of the Complaint.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint and amended Complaint in this proceeding were filed in English and the Response was filed in Chinese. Both parties have taken the opportunity to present their respective views of the matter in dispute and the Respondent has declined to comment on the issue of language. Therefore, the Panel considers that requiring either Party to translate its submission would create an undue burden and delay, whereas accepting the original version of both submissions will not cause unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, but that it will accept the communications as filed their original language without translation.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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 in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The burden of proof of each element is borne by the Complainant. Failure to prove any one of these elements will result in the Complaint being denied.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the BASF mark.

The disputed domain name wholly incorporates the BASF mark. The disputed domain name also contains the additional letter “u” after the mark. However, this additional letter does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark as the BASF trademark remains clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The disputed domain name also includes a generic Top-Level Domain (“gTLD”) (“.net”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has presented evidence showing that the Respondent has used the disputed domain name in connection with a webpage displaying BASFU in capital letters and a Chinese transliteration of that term. The evidence does not show that the disputed domain name was used to offer any goods or services for sale when it resolved to that webpage. At the time of this Decision, the disputed domain name no longer resolves to any active website. Neither use is a legitimate noncommercial or fair use of the disputed domain name that would create rights or legitimate interests for the purposes of the Policy. Further, the Respondent’s name is 路易达润滑油（北京）有限公司 which may be translated as “Luyida Lubricants (Beijing) Co. Ltd”. There is no evidence that the Respondent has been commonly known by the disputed domain name. Accordingly, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent’s arguments, it provides evidence that it is the holder of a Chinese trademark registration for BASFU and device, as described in Section 4 above. The Respondent’s trademark was registered in 2012, prior to the registration of the disputed domain name in 2018. The textual element of the Respondent’s mark (i.e.,“BASFU”) is very prominent in the mark and identical to the operative element of the disputed domain name. The figurative elements of that mark do not overtake BASFU in prominence and they cannot be reflected in a domain name for technical reasons.

The Panel considers that the Respondent’s trademark registration would ordinarily support a finding that the Respondent has rights or legitimate interests in the disputed domain name. See WIPO Overview, section 2.12.1. At the same time, that trademark registration does not automatically confer rights or legitimate interests on the Respondent for the purposes of the Policy where, for example, the overall circumstances demonstrate that the trademark was obtained primarily to circumvent the application of the Policy or otherwise to prevent the Complainant’s exercise of its rights, even if only in China. See WIPO Overview, section 2.12.2.

Neither Party directly addresses the possibility that the Respondent’s trademark registration was obtained primarily to circumvent the application of the Policy or otherwise prevent the Complainant’s exercise of its rights. Nevertheless, the Complainant does make certain allegations that might imply that is the case. First, the Complainant alleges that the Respondent’s webpage displayed the Complainant’s Chinese name 巴斯夫 (pronounced “bā sī fū”). However, the evidence shows that the Respondent displayed a similar but different transliteration, 巴斯孚 (pronounced “bā sī fú”), with a third character different from the Complainant’s Chinese name. Second, the Complainant alleges that the Respondent’s webpage favicon displayed BASFU almost identically to the BASF logo. However, while the evidence shows that the favicon is capitalized, its colors are different from the BASF logo provided by the Complainant and, in any case, color is not part of the Complainant’s logo. Accordingly, these allegations by the Complainant are not supported by the evidence.

The Panel has taken note of the circumstances of this case. On one hand, the Respondent’s webpage only displayed the textual element of its mark, which is very similar phonetically to the Complainant’s Chinese name, which is itself a transliteration of the BASF mark. There is no evidence on the record of this proceeding that the Respondent has used its trademark as registered, i.e., including the device. The Respondent has not explained why it chose that mark. The disputed domain name has also recently ceased to resolve to any active website. On the other hand, the Respondent registered its trademark in the jurisdiction in which it does business, i.e., China; it applied for the trademark in 2004 and obtained registration in 2012, 14 years and six years, respectively, before it registered the disputed domain name. It has also made some active use of the disputed domain name. The Respondent may have considered it unnecessary to submit evidence of use of its mark in this proceeding given the existence and validity of its trademark rights, particularly in circumstances where (i) the Complainant failed to disclose the existence of that trademark registration; and (ii) a court ordered that registration to be maintained when the Complainant applied for its revocation on grounds of non-use. In these circumstances, given the limited record in the present proceeding, the Panel does not find that the Respondent obtained its trademark primarily to circumvent the application of the Policy or otherwise to prevent the Complainant’s exercise of its rights.

Therefore, the Panel finds that the Respondent has rights or legitimate interests in respect of the disputed domain name. The Complainant has failed to satisfy the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Given the Panel’s findings under the second element in paragraph 4(a) of the Policy set out in Section 6.2B above, it is not necessary to consider the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Matthew Kennedy
Sole Panelist
Date: March 26, 2021