BASF SE v. Tang Man Feng (唐满凤)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Tang Man Feng (唐满凤)

Case No. D2017-2217

1. The Parties

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

The Respondent is Tang Man Feng (唐满凤) of Yongzhou, Hunan, China.

2. The Domain Name and Registrar

The disputed domain name <cdbasf.info> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2017. On November 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2017, 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 20, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On November 20, 2017, 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 English and Chinese of the Complaint, and the proceedings commenced on November 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2017.

The Center appointed Francine Tan as the sole panelist in this matter on January 3, 2018. 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 one of the largest chemical companies in the world, with operations in more than 80 jurisdictions across Europe, Asia, Australia, the Americas and Africa. It is listed on the Stock Exchanges of Frankfurt, London and Zurich. The expansion of its business worldwide has seen investments of EUR 5.6 billion between 1990 and 2005, in major Chinese hubs such as Nanjing and Shanghai.

The Complainant owns more than 1,500 trade mark registration rights for the trade mark BASF. Its international registrations include International Registration Nos. 638794 of May 3, 1995 and 909293 of October 31, 2006. The BASF trade mark has been found to be well-known by UDRP panels (see e.g., BASF SE v. Jim Welsh, WIPO Case No. D2010-2000 and BASF SE v. jin liu/liujing,WIPO Case No. D2014-1889).

The Complainant also holds numerous domain name registrations incorporating the BASF trade mark e.g., <basf.com>, <basf.asia>, <basf.in>, and <basf.org>.

The disputed domain name was registered on June 13, 2017. It resolves to a website showing pornographic content in the Chinese language.

5. Parties’ Contentions

A. Complainant

The disputed domain name is almost identical or confusingly similar to the BASF trade mark in which the Complainant has rights. It fully incorporates the BASF trade mark of the Complainant, with the addition of the term “cd” and the Top-Level Domain (“TLD”) “.info”. The term “cd” is a descriptive term, being an abbreviation for “compact disc”. The distinctive component of the disputed domain name is “basf” which corresponds to the Complainant’s BASF trade mark. The addition of a non-distinctive generic term does not lessen the confusion between the disputed domain name with the Complainant’s trade mark as the term describes the products and services provided by the Complainant under its BASF trade mark. The Complainant specializes in the fabrication and distribution of compact disks. Moreover, the letters “cd” may be understood to be the country code for Congo. The element “cd” may therefore be understood to be an indicator of the origin of the BASF products or services offered on the associated website. The TLD is irrelevant and not considered when assessing the identity and confusing similarity of a domain name with a complainant’s trade mark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name and has not acquired any trade mark rights in the term “basf”. The disputed domain name was registered without any license or authorization from the Complainant, and neither is there any commercial link between the Parties. The Respondent has not made preparations to use the disputed domain name in connection with a bona fide offer of goods or services.

The disputed domain name was registered and is being used in bad faith. The BASF trade mark is so well-known that it is inconceivable that the Respondent was not aware of the Complainant’s earlier rights in the trade mark BASF. The Respondent’s choice of the disputed domain name cannot have been accidental but was in fact influenced by the fame of the BASF trade mark. Internet search engine searches show search results which relate only to the Complainant. Moreover, it is not conceivable how the Respondent would be able to use the disputed domain name in connection with a bona fide offering of goods or services. Any use of the BASF trade mark would amount to trade mark infringement, and damage the reputation of the trade mark. The Complainant’s BASF trade mark is arbitrary and has no meaning in any language, and neither is it descriptive. The act of using a well-known trade mark to attract Internet users to a pornographic website is evidence of bad faith registration and use. The Respondent’s registration of the disputed domain name was therefore in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

The registration agreement was in Chinese but the Complainant requested for English to apply. The Complainant pointed out that the disputed domain name was registered under a TLD which has a meaning in English, “.info”, and this indicates that the Respondent knows of the meaning of this word in the English language when registering the disputed domain name and associating it with the Complainant’s trade mark. On the other hand, the Complainant is not able to communicate in Chinese, and to have the Complainant translated into Chinese would involve additional expense and cause a delay.

The Respondent did not respond on the issue of the language of the proceeding.

Paragraph 11(a) of the Rules stipulates that: “[u]nless 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”. Paragraph 10(c) of the Rules stipulates that “the Panel shall ensure that the administrative proceeding takes place with due expedition”.

Considering the choice of the disputed domain name which relates to an English-language TLD, the combination of the well-known abbreviation “cd” to signify “compact disc” and letters “basf” which correspond to the Complainant’s well-known trade mark, the Panel is persuaded that the Respondent is sufficiently familiar with the English language, and would not be prejudiced by the Panel’s decision in this regard. If the Respondent had any concern or objections in this regard, it could have raised these to the Center, but did not. Neither did it choose to respond in Chinese in this entire proceeding. To require the Complainant to have the Complaint and annexes translated into Chinese would invariably lead to a delay in the proceeding, which is not merited in the circumstances of this case.

The Panel therefore concludes that it would be appropriate for English to be the language of the proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the BASF trade mark in which the Complainant has shown to have rights. The (i) TLD “.info”, which is a technical requirement of domain names has no relevance to the issue of identity or confusing similarity; and (ii) the addition of the letters “cd” which is the abbreviation of “compact disc” and denote some of the goods and services offered by the Complainant has no relevance in relation to the issue of confusing similarity with the Complainant’s well-known BASF trade mark.

The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not authorize the Respondent to use the BASF trade mark or to register the disputed domain name. There is no evidence that the Respondent has been known by the name “basf”, or that there has been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. In fact, BASF is such a well-known trade mark that it is indeed inconceivable for the Respondent to be able to assert any rights or legitimate interests in the disputed domain name. The Respondent did not respond in the proceeding and even if it did, considering the nature of the Respondent’s webpage to which the disputed domain name resolves, the Panel does not envisage any possible finding of the Respondent having rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

In view of the fame of the Complainant’s mark, even in China, where the Respondent is located, it is highly unlikely that the Respondent was not aware of the Complainant and its BASF trade mark at the time it registered the disputed domain name. The fame of the BASF trade mark and the Respondent’s silence in this proceeding are also indicative that the Respondent’s bad faith. Internet users may type in the disputed domain name and expect to find a website of the Complainant or endorsed by the Complainant relating to its related products or services. Such use of the disputed domain name described above under Section 4 constitutes bad faith registration and use (see e.g., Ty, Inc., Complainant v. O.Z. Names, Respondent, WIPO Case No. D2000-0370; and Six Continents Hotels. Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022). The Panel concludes, in the words of the panel in Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860 that:

“such conduct of the Respondent, given that the Domain Name itself has no pornographic or erotic connotations, evinces an intention to either attract the attention of the Complainant, disrupt the Complainant’s business, or to damage the Complainant’s reputation. The Panel does not have enough evidence before it to determine which of these motivations was held by the Respondent. However, the Panel is satisfied that whatever the motivation of the Respondent, the diversion of the Domain Name to a pornographic site and the subsequent random diversions to sites unrelated to the Respondent, are certainly consistent with the finding in the previous paragraph that the Domain Name was registered and is being used in bad faith”.

The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.

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 <cdbasf.info> be transferred to the Complainant.

Francine Tan

Sole Panelist

Date: January 8, 2018

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