WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BASF SE v. WhoisGuard Protected, WhoisGuard, Inc. / Haibin Yu
Case No. D2017-2400
1. The Parties
The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Haibin Yu of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <basf.space> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2017. On December 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 December 8, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 8, 2017.
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 December 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 2, 2018.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on January 22, 2018. 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 listed on the Frankfurt, London and Zurich stock exchanges. The BASF Group comprises subsidiaries and joint ventures in more than 80 countries and operates numerous production sites worldwide. The Complainant has customers located in over 200 countries and employs more than 112,000 people around the world.
The Complainant is the owner of more than 1,500 BASF trademarks worldwide. Among those, the Complainant cites full details of the following trademarks:
- BASF, international registration No. 638794 of May 3, 1995, designating many countries worldwide, including China, where the Respondent is located, covering goods in classes 3, 5 and 30;
- BASF, international registration No. 909293 of October 31, 2006, designating many countries worldwide, including China, where the Respondent is located, covering goods and services in classes 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 and 44.
5. Parties' Contentions
The Complainant contends that the disputed domain name fully incorporates the Complainant's trademark BASF. Generic Top-Level Domains ("gTLD") are usually disregarded in determining the identity or confusing similarity, but even if taken into account, the gTLD ".space" would not undermine the confusing similarity of the disputed domain name with the Complainant's trademark, since it is a generic word.
The Complainant contends that the Respondent lacks rights and legitimate interests in the disputed domain name, since the Respondent is not commonly known by the disputed domain name and has acquired no trademark or service mark rights related to the term "basf". Moreover, the Respondent reproduces the Complainant's trademark without authorization and has no business relationship with the Complainant.
According to the Complainant, the Respondent has only been using the disputed domain name for a parking page with pay-per-click commercial links. To the best of the Complainant's knowledge, the Respondent has not intended, or made preparations, to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant maintains that the BASF trademark is so widely well known that it is inconceivable that the Respondent ignored the Complainant's earlier rights when it registered the disputed domain name <basf.space>. The Complainant argues that the trademark BASF is arbitrary and has no common or general meaning in any language and that the disputed domain name is not generic or descriptive. The term "basf" only refers to the Complainant, as it appears from an Internet search, which reveals as the first result the Complainant's website "www.basf.com". Therefore, the Respondent's choice of the disputed domain name was not accidental and must have been influenced by the fame of the Complainant's trademark.
The Complainant further contends that any possible use of the disputed domain name by the Respondent could not be in connection with a bona fide offering of goods or services. Any use of the BASF trademark would amount to trademark infringement and would damage the reputation of the trademark.
Moreover, the sole detention of the disputed domain name by the Respondent is an attempt to prevent the Complainant from reflecting its trademark and company name in a corresponding domain name, and is evidence of bad faith. The passive holding of the disputed domain name does not as such prevent a finding of bad faith. The Panel must examine all circumstances of the case in order to evaluate registration and use of a domain name in bad faith in light of the Policy requirements. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the concealment of the registrant's identity.
The Complainant points out that the Respondent used a well-known privacy service to mask its identity. The use of this privacy service is further evidence of bad faith. Moreover, the WhoIs details associated with the disputed domain name are incorrect.
In light of all the circumstances of the subject case, the Complainant concludes that the Respondent registered and used the disputed domain name <basf.space> in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, in order to succeed in a UDRP proceeding, the Complainant must first prove that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
The Complainant provided details of two BASF trademarks predating the disputed domain name, extending protection also to China, which is the country of residence of the Respondent Haibin Yu.
The disputed domain name is identical to the Complainant's trademark in that it reflects it entirely, while the gTLD ".space" does not have any impact in the evaluation of the first UDRP condition as it is a mere technical requirement that can be disregarded.
In consideration of the foregoing, the Panel is satisfied that the first condition under the Policy is met.
B. Rights or Legitimate Interests
The second condition to prove in order to succeed in a UDRP proceeding, is that the Respondent lacks rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy).
While the overall burden of proof rests with the complainant, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1).
In the instant case, the Complainant has argued that the Respondent has no business relationship with the Respondent, that it is not known by the disputed domain name, and that it did not acquire rights over the trademark BASF. The Complainant has provided copy of the search results made on the Google search engine on the term "basf", showing that all relevant results refer to the Complainant.
The Complainant also provided the results of a trademark search conducted among trademark registrations in the name of WhoisGuard, Inc., which did not reveal any BASF trademark in the name of this entity. The Complainant did not provide the results of a trademark search conducted in the name of Haibin Yu, which is the name of the Respondent whose identity was concealed by the Privacy Service, but the Panel takes the view that the Respondent does not own any trademark or service mark right on the term "basf", since the Respondent failed to supply any evidence to this effect, and since the Complainant would probably not tolerate any trademark registration of a sign corresponding to its well-known BASF trademark by an unauthorized third party.
The Complainant states that "the domain name has not been used in any way whatsoever but for a parking page with pay-per-click commercial links". The Complainant has not supplied any evidence of use of the disputed domain name <basf.space> to lead to a website containing pay-per-click links. In accordance with paragraph 10 of the Rules, the Panel has conducted some limited searches to ascertain the way the disputed domain name is effectively used. According to the Panel's findings, at least at the time of writing this Decision, the disputed domain name does not redirect to an active website. Therefore, the Panel could not find any evidence of legitimate, noncommercial or fair use of the disputed domain name which could confer rights or legitimate interests to the Respondent. Moreover, the Respondent failed to supply any argument in support of its rights and legitimate interests in the disputed domain name.
For all the aforesaid reasons, the Panel is satisfied that the Complainant made at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The third and last requirement to be proved under the Policy to succeed in a UDRP proceeding is that the Respondent registered and used the disputed domain name in bad faith.
The Panel agrees with the Complainant and with other UDRP panelists, who in the past have decided other UDRP cases involving the trademark BASF, that this trademark is to be considered well known. Hence, it is not plausible that at the time the Respondent registered the disputed domain name it was not aware of the existence of this trademark. This is even more so considering that the term BASF is an invented term, deriving from the abbreviation of "Badische Anilin- und Soda-Fabrik", the first name of the Complainant, when it was founded in 1865, and is strictly connected to the Complainant and to nobody else.
As to use in bad faith, the Panel notes that the disputed domain name does not redirect to an active website and that the Respondent concealed its identity by employing a privacy service. Moreover, the contact details provided by the Respondent at the time of the registration of the disputed domain name are incorrect.
While passively holding a domain name should not automatically be considered use in bad faith, UDRP panels should make a global evaluation of all circumstances of the case to determine whether or not the Respondent is acting in bad faith. In the instant case, the Respondent registered a domain name identical to the Complainant's well-known trademark, concealed its identity by using a privacy service, and provided contact details, which are evidently false. Moreover, the Respondent failed to reply to the Complaint notwithstanding it had the opportunity to do so.
Considering all the aforementioned circumstances and the fact that the Complainant's trademark enjoys wide reputation, any good faith use of the disputed domain name by the Respondent seems implausible.
The Panel is therefore satisfied that also the third and last requirement under the Policy is met and therefore concludes that the disputed domain name <basf.space> 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 <basf.space> be transferred to the Complainant.
Date: January 27, 2018