BASF SE v. Whois Privacy Protection Service by MuuMuuDomain/ TETSUO GOSHOZONO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Tetsuo Goshozono

Case No. D2016-1854

1. The Parties

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

The Complainant has named two Respondents: Whois Privacy Protection Service by MuuMuuDomain of Fukuoka, Japan and Tetsuo Goshozono of Kagoshima, Japan. Whois Privacy Protection Service by MuuMuuDomain is a privacy domain name registration service. The Registrar has confirmed that the registered owner of the disputed domain name is Tetsuo Goshozono. Accordingly, the Panel will treat Tetsuo Goshozong as the sole Respondent.

2. The Domain Name and Registrar

The disputed domain name <basf-it-s.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2016. On September 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2016, 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. The Center sent an email communication to the Complainant on September 15, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 16, 2016. On September 15, 2016, the Center transmitted an email to the Parties in both English and Japanese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.

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 of the Complaint in both English and Japanese, and the proceeding commenced on September 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 20, 2016.

The Center appointed Haig Oghigian as the sole panelist in this matter on October 27, 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

As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.

The Complainant is the one of the largest chemical companies in the world and is listed on the Frankfurt Stock Exchange, London Stock Exchange, and Zurich Stock Exchange. The BASF Group comprises subsidiaries, affiliated companies and joint ventures in numerous countries in Europe, Asia, Australia, the Americas and Africa.

The Complainant has owned numerous trademark rights for BASF marks all over the world, including Japan and United States of America ("United States"), for a number of years before the registration of the disputed domain name. According to the evidence provided by the Complainant, the first trademark registration of BASF is United States registration number 0809060 on May 31, 1966. The BASF mark is used in connection with chemical goods and services offered by the Complainant in many countries.

The disputed domain name was registered on May 2, 2015, and resolves to an inactive website.

5. Parties' Contentions

A. Complainant

The Complainant requests transfer of the disputed domain name.

The Complainant argues that the disputed domain name is identical or highly similar to the Complainant's registered trademark, BASF. The disputed domain name fully incorporates the Complainant's trademark, and the addition of "-it-s.com" does not mitigate the likelihood of confusion between the disputed domain name and the Complainant's trademark.

The Complainant asserts that 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 the BASF mark. The Respondent reproduced the Complainant's trademark without any license or authorization from the Complainant, nor did it use the disputed domain name in connection with a bona fide offering of goods or services. Further, the Complainant contends that since the adoption and extensive use by the Complainant of the trademark BASF predates the registration of the disputed domain name by the Respondent, the burden is on the Respondent to establish rights or legitimate interests in the disputed domain name.

The Complainant further claims that the disputed domain name was registered and is being used in bad faith. Since the BASF mark is so well-known, the Respondent knew or should have known that, when registering and using the disputed domain name, it would do so in violation of the Complainant's trademark rights. The Complainant sees no possible way whatsoever that the Respondent would use the disputed domain name in connection with a bona fide offering of products or services as any use of the BASF trademark would amount to trademark infringement and damage to the repute of the trademark. The Complainant's trademark is arbitrary and has no common or general meaning in any language, and the disputed domain name is not generic or descriptive. Lastly, the Complainant asserts that the disputed domain name used to be owned by a subsidiary of the Complainant, BASF Business Services GmbH, and the disputed domain name was registered a month after the disputed domain name was allowed to lapse by the subsidiary.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Although the language of the Registration Agreement for the disputed domain name is Japanese, the Complainant in its Complaint requests that the administrative proceeding be conducted in English.

Paragraph 11(a) of the Rules provides that in principle 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". There are a number of rulings by UDRP panels that paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition.

See for example General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334, and SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400.

Despite the Center's notification to the Respondent in both Japanese and English on September 15, 2016, the Respondent made no objection regarding the language of the proceeding, nor did it submit any Response by the due date. The Panel notes that the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.

The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese, and further that English is a neutral language for both of the Parties and would not give the Complainant unfair advantage over the Respondent.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.

6.2. Substantive Matters

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

(i) The domain name is identical or confusingly similar to a trademark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.

It is established that the addition of other descriptive and generic terms does not mitigate the confusing similarity between the disputed domain name and the complainants' trademark. See for example Cantor Fitzgerald Securities, Cantor Index Limited v. Mark Mark, Chen Xian Sheng/Whois Protect, WIPO Case No.D2014-0125, and J. Choo Limited v. Weng Huangteng, WIPO Case No. D2010-0126.

Further, it is recognized that the incorporation of a trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.

The Panel notes that the Complainant has owned in many countries, including Japan, the trademark rights in the BASF mark since a number of years before the registration of the disputed domain name. The Panel further finds that the disputed domain name <basf-it-s.com> reproduces the Complainant's trademark BASF in its entirety, with the addition of the element "-it-s", and the generic Top-Level Domain ".com".

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:

- Use of or demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;

- An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

- Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The Panel finds that the Complainant was made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, therefore the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cyberson, WIPO Case No. D2003-0174.

There is no evidence to show that the disputed domain name has been or is used in connection with a bona fide offering of goods or services prior to notice of the dispute, nor is there evidence to suggest that the Respondent has been or is commonly known by the disputed domain name.

No evidence has been submitted that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name, the BASF mark, or any mark confusingly similar thereto. The Respondent has failed to rebut the Complainant's prima facie showing.

Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that the BASF mark has acquired extensive international reputation in connection with chemical goods and services offered by the Complainant, and that the BASF mark's reputation indicates that the Respondent was or should have been aware of the BASF trademarks prior to registering the disputed domain name. See Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517, and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

Further, given that the Respondent has never been authorized by the Complainant to use the BASF mark, the fact that the Respondent has registered the disputed domain name previously registered by a subsidiary of the Complainant, incorporating the famous BASF mark, establishes bad faith registration. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163., and PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562. Moreover, the Panel cannot conceive of any bona fide use that the Respondent could make of the disputed domain name, and in the absence of any response to the Complaint, considers the Respondent's passive holding of the disputed domain name to amount to bad faith use within the meaning of the Policy.

Therefore, the Panel is satisfied that the Complainant has established bad faith as required by paragraph 4(a)(iii) 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-it-s.com> be transferred to the Complainant.

Haig Oghigian

Sole Panelist

Date: November 15, 2016

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