WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BASF SE v. Henning Krogh, Krogh Invest

Case No. D2017-2220

1. The Parties

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

The Respondent is Henning Krogh, Krogh Invest of Sandnes, Norway.

2. The Domain Name and Registrar

The disputed domain name <basf.gmbh> is registered with Domeneshop AS dba domainnameshop.com (the “Registrar”).

3. Procedural History

The Complaint was filed 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 12, 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.

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 November 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2017. On November 21, 2017, the Respondent submitted an informal email inquiring how to settle with the Complainant. Accordingly, the Center informed the Parties on the same day that if the Parties wished to explore settlement options, the Complainant should submit a request for suspension by November 28, 2017. The Complainant submitted a request for suspension on November 22, 2017. The Center notified the Parties on the same day that the proceeding was suspended until December 22, 2017. On December 19, 2017, the Complainant submitted a request to reinstitute this proceeding. On December 20, 2017, the Center informed the Parties that the proceeding was reinstituted, including that the new due date for Response was January 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2018.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on January 17, 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 the largest chemical company in the world and is listed on the Frankfurt, London and Zurich stock exchanges. The BASF Group comprises subsidiaries and joint ventures in more than 80 countries and operates numerous production sites in all the 5 continents. The Complainant, has customers located in over 200 countries and employs more than 112,000 people around the world.

The Complainant is the owner of more than 1500 BASF trademarks worldwide. Among those, the Complainant cites full details of the following trademarks:

- BASF, international registration No. 63874 of May 3, 1995, designating many countries worldwide, covering goods in classes 3, 5 and 30;

- BASF, international registration No. 909293 of October 31, 2006, designating many countries worldwide, including Norway, where the Respondent is located, covering goods and services in classes 1, 2, 3, 4, 5, 6, 7, 9, 10, 12, 16, 17, 18, 19, 22, 24, 25, 27, 28, 29, 30, 31, 32, 35, 36, 37, 39, 41, 42 and 44.

The disputed domain name was registered on January 23, 2017, and it resolves to the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the Complainant’s trademark BASF. The use of lower case letters and the addition of the generic Top-Level Domain (“gTLD”) “gmbh” have no impact in determining whether the domain name is identical or confusingly similar to the Complainant’s trademark. Since “gmbh” refers to the German word “Gesellschaft mit beschrankter Haftung”, which in English means “company with limited liability”, the Complainant argues that the average Internet user will likely believe that the disputed domain name is used by the Complainant to refer to its products or services in Germany.

According to the Complainant, the Respondent should be considered as having no rights or legitimate interests in the disputed domain name, since the Respondent is not commonly known by the disputed domain name and has acquired no trademark or service mark rights related to the term “BASF”. Moreover, the Respondent reproduces the Complainant’s trademark without authorization and has no business relationship with the Complainant. As the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.

The Complainant maintains that the BASF trademarks are so widely well known that it is inconceivable that the Respondent ignored the Complainant’s earlier rights when it registered the disputed domain name <basf.gmbh>. The Respondent’s choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant’s trademark. The Complainant argues that the trademark BASF is arbitrary and has no common or general meaning in any language and that the disputed domain name is not generic or descriptive. The term “basf” only refers to the Complainant, as it appears from an Internet search, which reveals as first result the Complainant’s website “www.basf.com”. Therefore the Respondent knew or should have known that by registering the domain name <basf.gmbh> he would have breached the Complainant’s earlier rights.

The Respondent used the disputed domain name to redirect Internet users to the Complainant’s official website. It is therefore clear that the Respondent wished to create the impression of an affiliation to the Complainant. However, since such affiliation does not exist, the use of the disputed domain name to redirect to the Complainant’s official website should be considered use in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy, in order to succeed in a UDRP proceeding, the Complainant must first prove that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.

The Complainant has proved that it is the owner of many BASF trademarks predating the disputed domain name, one of which extends its protection to Norway, which is the country where the Respondent is located.

The disputed domain name is identical to the Complainant’s trademark in that it reflects it entirely, while the new gTLD “.gmbh” could be disregarded since it is a technical requirement that does not have any bearing in the comparison between the two signs.

In consideration of the foregoing, the Panel is satisfied that the first condition under the Policy is met.

B. Rights or Legitimate Interests

The second condition to be proved in order to succeed in a UDRP proceeding, is that the Respondent lacks rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy).

While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.1).

In the instant case, the Complainant has argued that the Respondent has no business relationship whatsoever with the Respondent, that he is not known by the disputed domain name, and that he has not acquired any rights over the trademark BASF. The Complainant has provided copy of the search results made on the Google search engine for the term “basf”, showing that all relevant results refer to the Complainant.

The Complainant also provided the results of a trademark search conducted among trademark registrations in the name of “Henning Krogh” and of “Krogh Invest”, which did not reveal any trademark in the name of this individual and entity. Although the search conducted by the Complainant may not completely exclude the existence of trademark rights in the name of the Respondent, the Panel notes, on the one hand, that the Respondent had the opportunity to reply to the Complainant’s assertions but failed to do so and, on the other hand, that if the Respondent were the owner of a trademark BASF, it would most probably be considered an infringer of the Complainant’s rights, considering the high reputation that the trademark BASF enjoys.

Accordingly, the Panel is satisfied that the Complainant made at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third and last requirement to be proved under the Policy to succeed in a UDRP proceeding is that the Respondent registered and used the disputed domain name in bad faith.

The Panel agrees with the Complainant and with the other panelists, who in the past have decided other UDRP cases involving the trademark BASF, that this trademark is to be considered well known. Hence, it is not plausible that at the time the Respondent registered the disputed domain name he was not aware of the existence of this trademark. This is even more so considering that the term BASF is an invented term, deriving from the abbreviation of “Badische Anilin und Soda Fabrik”, the first name of the Complainant, when it was founded in 1865, and is strictly connected to the Complainant and to nobody else.

Where the disputed domain name refers to a trademark owned by a well-known German company, as is the case here, the gTLD “.gmbh” in the disputed domain name enhances the confusing similarity with the Complainant’s trademark as “.gmbh” could be viewed as a reference to the German word “Gesellschaft mit beschrankter Haftung”, which in English means “company with limited liability”. Therefore an Internet user confronted with the disputed domain name could easily believe that the disputed domain name is associated with the Complainant.

Moreover, the Respondent redirected the disputed domain name to the Complainant’s global website at “www.basf.com” as such misleading Internet users as to the origin of the disputed domain name, or as to the affiliation of the Respondent with the Complainant.

Moreover, immediately after having received the notification of the Complaint, the Respondent contacted the Center referring that it would have been sufficient to “ask for the domain name”, rather than spending “11 pages creating a complaint”. The Complainant thus asked for a suspension of the UDRP proceedings and offered the Respondent to settle the matter by returning a completed Standard Settlement Form.

Notwithstanding several reminders, the Respondent failed to reply and the Complainant had no other choice than to resume the suspended proceedings. It is clear from the Respondent’s behavior that there was no real intention to settle dispute amicably, and that the sole purpose of the Respondent was to unduly delay this UDRP proceeding.

For all reasons mentioned above, the Panel is satisfied that also the third and last requirement under the Policy is met and therefore concludes that the domain name <basf.gmbh> was registered and used in bad faith.

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.gmbh> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist
Date: January 26, 2018