WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Xiao Ma Yi Cai Da Xiang

Case No. D2016-2555

1. The Parties

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

The Respondent is Xiao Ma Yi Cai Da Xiang of Changzhou, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <basf.世界> (<basf.xn--rhqv96g>) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2016. 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 December 19, 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.

On December 19, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On December 20, 2016, 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 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 both Chinese and English of the Complaint, and the proceedings commenced on December 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2017.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 23, 2017. 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 that supplies products to a wide variety of industries in over 200 countries and employs more than 112,000 people around the world. The Complainant has major activities in Asia, including China. The Complainant owns multiple trademark registrations for BASF worldwide. These include International Registration number 638794, registered on May 3, 1995 and specifying goods in classes 3, 5 and 30, and International Registration number 909293, registered on October 31, 2006 and specifying goods and services in multiple classes. Both these registrations designate multiple jurisdictions, including China, and they remain in effect. The Complainant operates its official website at the address “www.basf.com” where it provides information about itself and its products.

The Respondent is the registrant of the disputed domain name and located in Jiangsu, China. The disputed domain name was created on February 18, 2016. At the time of filing the Complaint, the disputed domain name was parked at a page displaying links to other websites, many of them related to the Complainant and its products. A message at the top of the page indicated that the disputed domain name was for sale. The Registrar’s website indicated that the disputed domain name was being auctioned but only participating bidders could view the prices bid. At the time of this decision, the disputed domain name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its BASF trademark. The addition of a Top-Level Domain (“TLD”) is not significant in determining whether a domain name is identical or confusingly similar to the mark. In any event, the TLD “.世界” is a generic word which does nothing to minimize the confusing similarity.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The disputed domain name resolves to a pay-per-click parking page of commercial links to products identical or similar to those of the Complainant. The current page offers the disputed domain name for sale. Therefore, it appears clear that the Respondent had in mind commercial gain from the disputed domain name. 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 Complainant argues that the disputed domain name was registered and is being used in bad faith. The BASF trademark is so well known that it is inconceivable that the Respondent was unaware of the Complainant’s earlier rights to that term. The Respondent had the Complainant’s name and trademark in mind when registering the disputed domain name. A simple online search yields results only related to the Complainant. The BASF trademark has no common or general meaning in any language, and the disputed domain name is not generic or descriptive. The Respondent also owns other domain names reproducing trademarks that are well known in their respective fields. The disputed domain name resolves to a parking page with pay-per-click commercial links and the disputed domain name is offered for sale.

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 Respondent owns several other domain names containing English words and that the Complainant is not able to communicate in Chinese. The Respondent did not comment on the language request.

Paragraph 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 in this proceeding was filed in English. The Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Analysis and Findings

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.

A. Identical or Confusingly Similar

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

The disputed domain name wholly incorporates the Complainant’s BASF trademark, which is the dominant element of the disputed domain name.

The only additional element is the TLD suffix “.世界”. A TLD suffix is generally disregarded in assessing the confusing similarity of a domain name to a trademark. The Panel does not consider that this particular TLD suffix, which means “world” in Chinese, does anything to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Hugo Boss Trade Mark Management Gmbh & Co. Kg, Hugo Boss AG v. He Lao Shi, He Lao Shi, WIPO Case No. D2016-0141 (regarding <boss.世界>).

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

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.”

The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s BASF trademark. The Complainant informs the Panel 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.

As regards the first and third circumstances above, the disputed domain name was previously parked at a page displaying links to other websites. Many of the links were generated based on the trademark value of the Complainant’s mark. That does not create a right or legitimate interest in the disputed domain name for the purposes of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. The disputed domain name no longer resolves to any active website, which is neither an offering of goods or services nor a legitimate noncommercial or fair use for the purposes of the Policy. Accordingly, the Panel does not find that the Respondent’s use falls within the first or third circumstances of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Xiao Ma Yi Cai Da Xiang”, which is a transcription of a Chinese phrase meaning “small ants step on elephants”. The name bears no resemblance to “Basf”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) 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 did not rebut that case because it did not respond to the Complaint.

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, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

The Respondent registered the disputed domain name in 2016, years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. BASF is not a dictionary word. The Complainant has made extensive use of its BASF trademark. The top search result for the term “basf” in the Baidu Internet search engine is the Complainant’s official website. The disputed domain name incorporates the Complainant’s BASF trademark in its entirety as its only element besides the TLD suffix. The disputed domain name was formerly used to attract Internet users to a parking page displaying links to other websites, where many of the links were based on the trademark value of the Complainant’s mark. This all gives the Panel reason to believe that the Respondent was aware of the Complainant and its BASF trademark at the time that it registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.

The disputed domain name was formerly used to attract Internet users to a parking page displaying links to other websites, where many of the links were based on the trademark value of the Complainant’s mark. The disputed domain name operated by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the parking page. This use was intentional and either for the Respondent’s own commercial gain, if it was paid to direct traffic to the other websites, or for the commercial gain of the operators of the linked websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra.

At the time of the decision, the Respondent makes only passive use of the disputed domain name but that does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This change in use of the disputed domain name after the commencement of this proceeding is itself an indicator of bad faith. Given this circumstance and those described in Section 6.2B, the Panel finds 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 <basf.世界> (<basf.xn--rhqv96g>) be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: January 31, 2017