WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Chukwuemeka Egbo

Case No. D2016-1808

1. The Parties

1.1 The Complainant is BASF SE of Ludwigshafen, Germany, represented by IP Twins S.A.S., France (the "Complainant").

1.2 The Respondent is Chukwuemeka Egbo of Simi Valley, California, United States of America ("United States"), self-represented (the "Respondent").

2. The Domain Name and Registrar

2.1 The disputed domain name <baasf.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 6, 2016. On September 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 7, 2016, 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.

3.2 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").

3.3 The Center received an informal email communication from the Respondent on September 7, 2016.

3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2016. The Respondent did not file a formal Response.

3.5 The Center appointed Ike Ehiribe as the sole panelist in this matter on October 14, 2016. 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

4.1 The Complainant, BASF, based in Germany, is said to be the largest chemical services company in the world and is listed on the Frankfurt, London and Zurich Stock Exchanges. The Complainant is said to comprise of subsidiaries and joint ventures in more than 80 countries, and operates six integrated production sites and 390 other production sites in Europe, Asia, Australia, the Americas and Africa.

The Complainant is said to have customers in over 200 countries and supplies products to a wide variety of industries, employing more than 112,000 people around the world. Therefore, it is said the Complainant is a well-known company in the field of chemicals and chemical services. The Complainant owns more than 1,500 trademark registrations for the mark BASF worldwide as is evidenced by annex 4 attached to the Complaint. Furthermore, the Complainant owns a number of United States and International trademark registrations registered before the Disputed Domain Name was registered by the Respondent including but not limited to:

i. BASF No. 0809060 registered May 31, 1966 in class 1 in the United States;

ii. BASF No. 3786543 registered May 11, 2010 in classes 1, 2, 3, 4, 5, 6, 7, 9, 16, 17, 18, 19, 22, 24, 27, 28, 31, 32, 35, 36, 37, 39, 41, 42, 44 in the United States.

4.2 The Respondent Chukwuemeka Egbo, appears to be based in the United States. According to the relevant WhoIs database the Respondent registered the Disputed Domain Name <baasf.com> on May 6, 2016.

5. Parties' Contentions

A. Complainant

5.1 The Complainant contends that the Disputed Domain Name is highly similar to the Complainant's BASF trademark and is likely to create confusion in the minds of the general public and Internet visitors. The Complainant argues that the only difference between the trademark and the Disputed Domain Name is the addition of the letter "a" and observes that all other letters of the Complainant's trademark BASF are contained and placed in the same order in the Disputed Domain Name. Furthermore, it is argued that the use of lowercase format and the addition of the generic Top-Level Domain ("gTLD") ".com" are not significant in determining confusing similarity. See CBS Broadcasting Inc.v.Worldwide Webs, Inc., WIPO Case No. D2000-0834. It is the Complainant's further contention that this is a clear case of typosquatting evidenced by the inclusion of the letter "a" in the dominant part of the Disputed Domain Name and as the Disputed Domain Name wholly incorporates the Complainant's trademark the Complainant has established the confusing similarity requirement in accordance with the Policy.

5.2 The Complainant also contends that the Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name as the Respondent is not commonly known by the Disputed Domain name. Secondly, the Respondent has failed to demonstrate an intention to use or the preparation to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Thirdly, the Respondent it is said, does not make a legitimate noncommercial or fair use of the Disputed Domain Name as the Disputed Domain Name resolves to a pay-per-click parking page displaying commercial links to products identical or similar to those of the Complainant. Fourthly, the Respondent has not been granted any authorization, licence or any right whatsoever, by the Complainant to use the Complainant's trademarks. The Complainant concludes the submissions in this regard by contending that since the Complainant's extensive use of its BASF trademark predates the creation of the Disputed Domain Name the burden is on the Respondent to establish any existing rights or legitimate interests it may have or had in the Disputed Domain Name following PepsiCO, Inc. v.Amilcar Perez Lista d/b/aCybersor, WIPO Case No. D2003-0174.

5.3 The Complainant further contends that the Respondent has registered the Disputed Domain Name in bad faith and has continued with bad faith use of the Disputed Domain Name for the following reasons. Firstly, it is asserted that the Respondent must have had the Complainant's name and trademark in mind when registering the Disputed Domain Name, therefore it is stated that the Respondent's choice of domain name cannot have been accidental and must have been influenced by the reputation and fame of the Complainant's mark. Secondly, it is stated that the Disputed Domain Name resolves to a parking page with pay-per-click commercial links and as the Disputed Domain Name is confusingly similar to both the Complainant's BASF trademark and legitimate domain name <basf.com> since it comprises solely of the Complainant's trademark, a substantial number of Internet visitors seeking information about the Complainant would be directed to the parking webpage under the Disputed Domain Name thereby increasing the ability of the pay-per-click commercial links to generate revenue. Thirdly, it is said that the Disputed Domain Name is offered for sale on Sedo at a price of USD 2,388 an amount that far exceeds the expenses of the Respondent for the registration of the Disputed Domain Name. Fourthly, the Complainant alludes to the Respondent's lack of active use of the Disputed Domain Name even without an attempt to sell or to contact the trademark owner as further evidence of bad faith following WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Further in support the Complainant relies on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Fifthly, it is argued that the Respondent's sole detention of the Disputed Domain Name, in an attempt to prevent the Complainant from reflecting its trademark and company name in a domain name, is strong evidence of bad faith use.

B. Respondent

5.4 The Respondent did not file a response within the time frame specified in the Rules. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove that: (i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark of the Complainant; (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.

6.2 As is expressly stated in the Policy, the Complainant must establish the existence of each these three elements in any administrative proceeding.

A. Identical or Confusingly Similar

6.3 The Panel finds that the Complainant's ownership of trademark rights in the BASF trademark is established as detailed in the trademark registrations above. In addition, other UDRP panels have confirmed the worldwide fame of the Complainant's trademark. See in this regard BASF SE v. Jim Welsh, WIPO Case No. D2010-2000. The Panel finds that the Disputed Domain Name <baasf.com> is clearly confusingly similar to the Complainant's trademark BASF. As is manifestly indicated, the Disputed Domain Name wholly incorporates the Complainant's trademark; therefore, the mere addition of the gTLD ".com" does nothing to prevent a finding of confusing similarity where a confusing similarity enquiry is necessary. The Panel therefore finds, following other UDRP decisions, that where as in this case a disputed domain name wholly incorporates a complainant's trademark, the requirement of confusing similarity would be satisfied without more. See in this regard Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. Furthermore, as the Complainant contends, this is a clear case of typosquatting evidenced by the addition of the letter "a" in lower case to the Complainant's trademark. In this regard previous UDRP panels have consistently considered typosquatting as rendering disputed domain names to be confusingly similar to the relevant mark in question. See in this instance, Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 directing the transfer of <edmundss.com> to the complainant.

6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

6.5 The Panel also finds that the Respondent has failed to furnish any evidence of circumstances to establish that there exists any rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant contends, the Respondent has not provided any evidence of authorization, license, or permission, from the Complainant authorising the Respondent to utilize or create the Disputed Domain Name containing the Complainant's trademark. There is also no evidence to show that the Respondent is affiliated or associated with the Complainant or commonly known by the Disputed Domain Name. As held in previous UDRP decisions the burden of production shifts to the Respondent to establish the existence of any rights or legitimate interests in the Disputed Domain Name, where as in this case, a prima facie case has been established by the Complainant. See in this regard, PepsiCo Inc. v. Amilcar Perez Lista d/b/a/Cybersor, supra, and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. In this particular instance, the Complainant has adduced unchallenged evidence which demonstrates that the web page to which the Disputed Domain Name resolves to is a pay-per-click parking page of commercial links to products similar to those of the Complainant. The Panel finds that such unauthorized conduct cannot be described as a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Disputed Domain Name within the meaning of the Policy.

6.6 The Panel is therefore satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

6.7 Turning to the question of bad faith registration and use, the Panel also finds that the Respondent registered the Disputed Domain Name in bad faith and has continued to engage in bad faith use. The Complainant has advanced five main reasons in support of this finding which are as follows. Firstly, the Complainant argues that the Respondent knew or ought to have known that when registering and using the Disputed Domain Name, the registration and subsequent usage would be in violation of the Complainant's prior rights. It is also submitted that the Respondent's choice of domain name is not accidental and must have been influenced by the fame of the Complainant's trademark since a simple online search would confirm that all results relate to the Complainant at "www.basf.com". Secondly, the Disputed Domain Name resolves to a parking page with pay-per-click commercial links which demonstrates that the Respondent intended to create the Disputed Domain Name for financial gain to be derived from the confusion in the minds of Internet visitors who may be seeking information about the Complainant in connection with chemical goods and services. Thirdly, the Disputed Domain Name is offered for sale on Sedo.com at a price of USD 2,388 which far exceeds the expenses of the Respondent for the registration the Disputed Domain Name, which in itself is indicative of a blatant attempt on the Respondent's part to exploit the fame of the Complainant's trademark for financial gain. Fourthly, it is submitted that the sole detention of the Disputed Domain Name by the Respondent in an attempt to prevent the Complainant from reflecting its trademark and company name in a domain name is by itself a strong indication of bad faith use. Fifthly, as stated in section 5.4 above the Panel has drawn adverse inferences from the failure of the Respondent to rebut the contentions of the Complainant in this proceeding.

6.8 The Panel accepts the Complainant's contention and supporting evidence of the Respondent's conduct in the present proceeding and is satisfied that the Respondent registered the Disputed Domain Name in bad faith and engaged in bad faith use.

7. Decision

7.1 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 <baasf.com> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Date: November 7, 2016