WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Basf SE v. Fei Hu Wang, Wang Fei Hu

Case No. D2019-1729

1. The Parties

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

The Respondent is Fei Hu Wang, Wang Fei Hu, China.

2. The Domain Name and Registrar

The disputed domain name <hnbasf.net> is registered with Flancrestdomains.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed 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 August 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and confirming that the language of the Registration Agreement is English.

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 of the Complaint, and the proceedings commenced on August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2019.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 4, 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 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 China.

The disputed domain name was created on April 2, 2019. It resolves to a website displaying pay-per-click (“PPC”) links to gaming websites and pornographic content.

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 letters “hn” may be understood as an abbreviation for Hunan Province, China.

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 uses 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 domain name. The Respondent’s choice of domain name cannot have been accidental and must have been influenced by the fame of the Complainant’s trademark. The disputed domain name resolves to a website displaying PPC links and pornographic content which are inherently damaging to the Complainant’s corporate image. The Respondent has registered a large number of domain names, some of which reproduce or are confusingly similar to third party trademarks, such as <mescedes.com>, which is highly similar to the MERCEDES trademark.

B. Respondent

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

6. Discussion and Findings

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. Although the disputed domain name also includes the letters “hn” as its initial element, the BASF trademark remains clearly recognizable within the disputed domain name. Accordingly, the addition of the two letters “hn” does not prevent a finding of confusing similarity between the disputed domain name and the BASF trademark.

The disputed domain name also includes the generic Top-Level Domain (“gTLD”) suffix “.net”. 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 Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s BASF trademark, in connection with a website that displays PPC links to gaming websites and pornographic content. The Complainant submits that the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s BASF trademark. Accordingly, the Panel finds that the Respondent is not making a use of the disputed domain name 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 “Fei Hu Wang” or “Wang Fei Hu”, not “hnbasf”. 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. The fourth of these 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] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

With respect to registration, the disputed domain name was registered long after the Complainant registered its BASF trademark, including in China where the Respondent is resident. The Complainant had already acquired a considerable reputation in its BASF trademark by the time that the Respondent registered the disputed domain name, due to the Complainant’s extensive use of that trademark in the chemical sector, among others. The disputed domain name wholly incorporates the BASF trademark, adding only the letters “hn” and a gTLD suffix, which is a technical requirement of registration. Nothing in the content of the website to which the disputed domain name resolves indicates that the disputed domain name was chosen for any reason other than that it incorporated the BASF trademark. Therefore, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s trademark and registered it in the disputed domain name in bad faith.

With respect to use, the Respondent uses the disputed domain name in connection with a website that displays PPC links to gaming websites and pornographic content. It appears designed to attract Internet users by creating a likelihood of confusion with the Complainant’s BASF mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. This use is intentional and either for the Respondent’s own commercial gain, if he is paid to direct traffic to other websites, or for the commercial gain of the operators of those 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, WIPO Case No. D2007-0267. Therefore, the Panel finds that the Respondent is using the disputed domain name in bad faith.

Accordingly, 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, <hnbasf.net>, be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: September 8, 2019