WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Basf SE v. Zhao Ke

Case No. D2011-1910

1. The Parties

The Complainant is Basf SE of Ludwigshafen, Germany, represented by Hogan Lovells International LLP, Germany.

The Respondent is Zhao Ke of China.

2. The Domain Name and Registrar

The disputed domain name <basf-usa.com> is registered with Hangzhou E-Business Services Co., Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2011. On November 3, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 9, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On November 10, 2011, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2011.

The Center appointed Yijun Tian as the sole panelist in this matter on January 12, 2012. 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

A. Complainant

Complainant, Basf SE, is a company incorporated in Ludwigshafen, Germany. It is the largest chemical company in the world. Basf SE and its subsidiaries (the “Basf Group”) employ about 105,000 people in 170 countries worldwide.

Complainant has registered a large number (more than 1,500) of national, Community and International trademarks reflecting the term BASF, including international trademarks registrations (e.g. in China since 1995), trademarks registration in the United States (since 1987), and Community Trademark registrations (since 1998). (Annex D to the Complaint).

B. Respondent

Respondent registered the disputed domain name <basf-usa.com> on March 15, 2011, which are long after Complainant operated web sites with the registration of the BASF trade marks in the U.S. (since 1987).

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights;

The disputed domain name incorporates Complainant’s trademark BASF in whole. In previous UDRP cases, this has been held to be sufficient to establish that a domain name is confusingly similar to Complainant’s registered trademarks.

The addition of the term “usa” cannot exclude the likelihood of confusion with Complainant’s trademarks.

Complainant is also doing business in the USA, it rather increases the likelihood of confusion as Internet users, when visiting “www.basf-usa.com”, will expect to see the official U.S. website of Complainant.

The fact that the disputed domain name has a different capitalization in comparison with Complainant’s trademark BASF has got no effect in this case, since “this distinction does not change the likelyhood of confusion”.

In the light of Complainant's registered trademarks and the goodwill and reputation of the mark BASF, the registration of the disputed domain name <basf-usa.com> is a misrepresentation by implying that the disputed domain name is somehow connected with, associated with or authorized by Complainant, while, in fact, it is not.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name;

Presently, the disputed domain name is used for a domain name parking page on which the disputed domain name is offered for sale. (Annex E to the Complaint).

Respondent does not show any rights or legitimate interests with respect to the disputed domain name.

Respondent does not use the disputed domain name for a bona fide offering of goods or services and are not making a legitimate noncommercial or fair use of it.

Respondent is not, and never has been, a representative or licensee of Complainant, nor is Respondent otherwise authorized to use the mark BASF and/or the name “Basf USA”.

Respondent was not commonly known by the names “Basf” and/or “Basf USA” prior to the registration the disputed domain name.

(c) The disputed domain name was registered and is being used in bad faith.

(i) The disputed domain name has been registered in bad faith.

The disputed domain name was registered by Respondent on March 15, 2011 (Annex A to the Complaint). By the time of the registration of the disputed domain name, Complainant’s trademark BASF had already been registered and used for many years.

BASF is a famous trademark enjoying protection on a global basis. The disputed domain name was registered with these trademarks in mind.

Respondent is offering the disputed domain name for sale. The disputed domain name has only been registered by Respondent with the purpose to benefit from the famous trademark of Complainant.

(ii) The disputed domain name has also been used in bad faith.

Complainant first learned of Respondent’s registration of the disputed domain name when it received an e-mail on September 20, 2011 with which the disputed domain name was offered for sale. (Annex F to the Complaint). Respondent tried to sell the disputed domain name to Complainant, thus taking profit of the worldwide fame of the BASF mark.

The disputed domain name was only registered for the purpose of selling it to Complainant. Complainant sent a cease and desist letter to Respondent. (Annex G to the Complaint). Respondent replied e-mail on the same day, asking them to make an offer for the disputed domain name via the website at “www.basf-usa.com”. (Annex G to the Complaint).

The website that is hosted under the disputed domain name has never been used for purposes other than offering the disputed domain name for sale. The disputed domain name has not only been offered for sale directly to Complainant and via the website hosted under “www.basf-usa.com”, but it is also offered for sale on the domain trading platform SEDO. (Annex E to the Complaint).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreements for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Complainant would be disadvantaged by having to have the Complaint translated into Chinese.

(b) Already Annexes F and H to the Complaint show that the e-mails sent by Respondent to Complainant and Complainant's representative were written in English. Right after Complainant's representatives filed the Complaint, Respondent sent two further e-mails to Complainant's representatives in English language with which he asked for a payment of USD 3500 and EUR 3500, respectively.

(c) Respondent is obviously able to understand the Complaint even if the same is written in English language and is also able to file counter-arguments in English.

(d) The translation of the Complaint into Chinese is therefore not needed. It would only incur substantial further cost for Complainant and cause an undue delay of the proceedings.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) further states: “in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company incorporated in Germany, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes English word “usa”. (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047; see also AB Electrolux v. zhutao, Ma Yun, WIPO Case No. D2011-1651).

On the record, Respondent appears to be Chinese individuals and are thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <basf-usa.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) Respondent’s website at the disputed domain name appear entirely in the English language, and appears to have been directed to Internet users in worldwide (particularly English speakers) rather than Chinese speakers; (see Annex E to the Complaint); (c) in Respondent’s e-mail communication that Respondent is sufficiently capable of communicating in English. (See Annexes F and H to the Complaint; Email attachments to the Language Request of the Complainant); (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; and (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

(i) the disputed domain name registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the BASF mark acquired through registration. The BASF mark has been registered worldwide including in USA and China (see Annex D to the Complaint), and Complainant has a widespread reputation in chemical industry in the world.

The disputed domain name <basf-usa.com> comprises the BASF mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of “-” and the term “usa” to the mark BASF. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKTDataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

Mere addition of the suffix “-usa” to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers who visit the website at the disputed domain name <basf-usa.com> are likely to be confused and may falsely believe that <basf-usa.com> is operated or authorized by Complainant for selling Basf-branded products in China (see ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; See also Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho, WIPO Case No. D2011-1237).

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the BASF mark.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has been commonly known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the BASF mark globally, including BASF Mark registration in USA since 1987 and international registration covering China (see Annex D to the Complaint) which long precede Respondent’s registrations of the disputed domain name (March 15, 2011).

According to Complainant, Complainant is a world’s leading chemical company more than 160 subsidiaries and joint ventures and operates more than 380 production sites in Europe, Asia, Australia, America and Africa. Moreover, Respondent is not an authorized dealer of Basf branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Basf” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the BASF mark or to apply for or use any domain name incorporating the BASF Mark.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on March 15, 2011. The disputed domain name is identical or confusingly similar to Complainant’s BASF mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling the disputed domain name to Complainant. (See Annexes F and H to the Complaint; E-mail attachments to the Language Request of the Complainant).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed 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 on-line 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.

The Panel concludes that the circumstances referred to in paragraph 4(b)(i)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the BASF mark with regard to its products. Complainant has registered its BASF mark internationally, including registration in USA (since 1987) and international registration covering China.

Based on the information provided by Complainant, Complainant is a world’s leading chemical company more than 160 subsidiaries and joint ventures and operates more than 380 production sites in Europe, Asia, Australia, America and Africa. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in March 2011). The Panel therefore finds that the disputed domain name are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).”

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s BASF mark.

b) Used in Bad Faith

Complainant has adduced evidence to prove that “Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name”. Complainant has also adduced evidence to prove that by using a confusingly similar domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website”.

Complainant claimed that “the disputed domain name was only registered for the purpose of selling it to the Complainant”. Complainant first learned of Respondent’s registration of the disputed domain name when it received an e-mail on September 20, 2011 with which the disputed domain name was offered for sale. (Annex F to the Complaint). After Complainant sent a cease and desist letter to Respondent (Annex G to the Complaint), Respondent replied e-mail on the same day, asking them to make an offer for the disputed domain name via the website at “www.basf-usa.com”. (Annex G to the Complaint). The disputed domain name has not only been offered for sale directly to Complainant and via the website hosted under the disputed domain name <basf-usa.com>, but it is also offered for sale on the domain trading platform SEDO. (Annex E to the Complaint).

To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the BASF mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved. In other words, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the BASF mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the webpage of the disputed domain name, potential partners and end users are led to believe that the disputed domain name is either Complainant’s sites or the sites of official authorized partners of Complainant, which they are not. Moreover, Respondent did not respond formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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-usa.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: February 7, 2012