WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Basf SE v. Sheng Yi Xiang

Case No. D2019-1728

1. The Parties

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

The Respondent is Sheng Yi Xiang, China.

2. The Domain Name and Registrar

The disputed domain name <basfhuaxue.com> 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 July 22, 2019. 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 July 24, 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. On the same day, the Center sent an email communication to the Complainant 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 in English an amended Complaint.

On July 24, 2019, the Center sent a communication to the Parties, in English and Chinese, 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 August 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2019.

The Center appointed Matthew Kennedy as the sole panelist in this matter on August 27, 2019. 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 and part of the BASF Group, which has customers in over 200 countries and operations around the world. The Complainant has obtained multiple trademark registrations for BASF in multiple jurisdictions, including international trademark registration number 909293, registered on October 31, 2006, designating multiple jurisdictions, including China, and specifying goods and services in multiple classes, including chemicals in class 1. That trademark registration remains current. The Complainant has also registered multiple domain names that include “basf” as their initial element, such as <basf.com>, which it registered on March 15, 1995 and uses in connection with an official website where it provides information about itself and its products.

The Respondent is an individual resident in Shanghai, China.

The disputed domain name was created on April 8, 2012. According to evidence submitted by the Complainant from the Internet archive, as early as October 2, 2016 and as recently as March 30, 2018, the disputed domain name resolved to a website in Chinese that prominently displayed the BASF trademark and offered for sale a range of the Complainant’s products. The website displayed a company profile of the Complainant’s BASF group but the contact details were those of a company named “上海锐富化工有限公司” (which can be translated as “Shanghai Ruifu Chemical Co. Ltd”). The website homepage displayed its address as “www.BASFhuaxue.com”. At the time of this proceeding, the disputed domain name does not resolve to any active website; rather, it is passively held.

The letters “huaxue” are a transliteration of the Chinese word “化学”, meaning “chemistry”.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s BASF trademark. The BASF trademark is reproduced within the disputed domain name.

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 and has acquired no trademark or service mark rights related to BASF. The Respondent formerly used the disputed domain name in bad faith. The Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s BASF trademark. The Respondent is not commercially linked to the Complainant.

The disputed domain name was registered and is being used in bad faith. It is clear that the Respondent had the Complainant’s name and trademark in mind when registering the disputed domain name. The Respondent’s choice of disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant’s trademark. The Respondent knowingly registered the disputed domain name and opened the corresponding website in an attempt to harm the Complainant’s business, impersonate it and benefit from its worldwide fame and reputation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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 Complainant is not in a position to conduct this proceeding in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint; and the Respondent has registered another domain name that resolves to a website in Chinese but with some English terms, which suggests that the Respondent is able to understand the English language in this proceeding. The Respondent did not comment on the language of the proceeding.

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 takes 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 notes that in the present proceeding the Complaint and the amended Complaint were filed in English. Despite having received the Center’s email regarding the language of the proceeding and notification of the Complaint in both Chinese and English, the Respondent did not express any interest in responding to the Complaint or otherwise participating in this proceeding. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice 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. The Panel would have accepted a Response in Chinese but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a 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.

A. Identical or Confusingly Similar

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

The disputed domain name wholly incorporates the BASF mark as its initial element. Although the disputed domain name also includes the letters “huaxue”, which is a transliteration of a Chinese word meaning “chemistry”, the BASF trademark remains clearly recognizable within the disputed domain name.

The disputed domain name also includes the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.

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 of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances set out above, the disputed domain name previously resolved to a website in Chinese that prominently displayed the BASF trademark and offered for sale a range of the Complainant’s products, also displaying a company profile of the Complainant’s BASF groups but the contact details of another company. The Respondent currently makes only passive use of the disputed domain name. Neither is a use in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.

As regards the second circumstance above, the name of the Respondent is “Sheng Yi Xiang”, not “basfhuaxue”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.

In summary, 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. The Respondent failed to rebut that case because he did not reply to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the Panel observes that the disputed domain name was registered several years after the Complainant obtained its trademark registration for BASF, including in China, where the Respondent is located. The disputed domain name incorporates the Complainant’s BASF trademark in its entirety, and combines it with a transliteration of a Chinese word meaning “chemistry”. This combination indicates an awareness by the Respondent that the Complainant is a chemical company. Further, the website to which the disputed domain name formerly resolved provided information regarding the Complainant and its products. The clear inference is that the Respondent was aware of the Complainant and targeted its BASF trademark at the time that he registered the disputed domain name. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith.

With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the evidence submitted by the Complainant demonstrates that the Respondent formerly used the disputed domain name in connection with a website that offered for sale the Complainant’s products and gave the false impression that it was affiliated with, or endorsed by, the Complainant. The Complainant submits that the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s BASF trademark, and that the Respondent is not commercially linked to the Complainant. The Panel observes that the Respondent’s website did not display any disclaimer clarifying that it lacked any relationship to the Complainant. This all leads the Panel to find that the Respondent formerly intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or of the products on his website, which are indicia of bad faith. In view of these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 <basfhuaxue.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: September 6, 2019