Decision for dispute CAC-UDRP-108321

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant is the owner of various BASF trademarks, such as:

Hong Kong Registered Trademark Number 300751851 in respect of the mark BASF, registered since November 11, 2006 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.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

Founded in 1865, the Complainant is a German company organized into 11 divisions, which are grouped into six segments, namely, Chemicals, Materials, Industrial Solutions, Surface Technologies, Nutrition & Care, and Agricultural Solutions. The Complainant has subsidiaries and joint ventures in more than 80 countries and operates six integrated production sites and 390 other production sites in Europe, Asia, Australia, the Americas and Africa. The Complainant has customers in more than 190 countries. Its products are sold online and via selected department stores worldwide. The Complainant is particularly known for its role in the development of magnetic recording tape, used for multiple audio, video and data applications.

In addition to its portfolio of BASF trademarks, the Complainant and its subsidiaries maintain a portfolio of corresponding registered domain names, the most relevant of which for present purposes are <basf.hk> (registered on November 13, 2006), and <basf-east-asia.com.hk> (registered on July 31, 1998).

According to the Complainant, it maintains a corporate presence in Hong Kong, where the Respondent is based. The Complainant’s Hong Kong subsidiary was incorporated on December 20, 1977 and remains active today under its Chinese name.

The disputed domain names were each registered on January 21, 2025. The websites associated with the disputed domain names (since disabled by the host) were broadly similar in appearance, each referencing the Complainant’s BASF trademark and providing an invitation to register by e-mail or telephone (thus harvesting sensitive personal details of the user) along with advertisements for fraudulent investment schemes.

Complainant:

The disputed domain names are confusingly similar to the Complainant’s BASF trademark, which is contained in its entirety therein together with non-distinctive elements. The addition of the gTLD in each case is merely instrumental to Internet use and is not able to affect the confusing similarity between each of the disputed domain names and the Complainant’s said mark.

The Respondent is not a licensee or authorized agent of the Complainant or otherwise authorized to use the Complainant’s trademarks, in which the Complainant has prior rights preceding the registration of the disputed domain names by decades. The Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain names. The Respondent is not commonly known by the disputed domain names as an individual, business, or other organization, and the Respondent's last name is not the same as BASF or the disputed domain names. The Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute. The disputed domain names have been used in an unlawful manner to attract bona fide users by collecting sensitive data from them through impersonation of the Complainant. The Respondent’s conduct demonstrates that it did not intend to use the disputed domain names in connection with any legitimate purpose. The Respondent’s use cannot be considered legitimate or fair because it is attempting to deceive unaware Internet users by impersonating the Complainant and benefitting from the reputation of the Complainant’s trademark to trade on the Complainant’s fame for commercial gain. At a minimum, the Respondent intended the disputed domain names to suggest a relationship, endorsement, or affiliation with the Complainant that the Respondent does not have. The Respondent’s use of the disputed domain names demonstrates that it has targeted the Complainant.

Given the use within the disputed domain names and on the corresponding websites of the Complainant’s intensively deployed, and globally reputed trademark, which long predates the disputed domain names, the Respondent could not have been unaware of the existence of said mark. The use of such a well-known trademark in a domain name creates a presumption of bad faith on its own under the Policy. The Respondent’s sole purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant’s said mark by confusing Internet users seeking products under said mark and leading them to websites that are not linked to the Complainant’s official website by intentionally creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of said websites. The fact that the host of the disputed domain names decided to suspend them upon receipt of the Complainant’s notice of infringement is an additional circumstance demonstrating bad faith.

Respondent:

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Complainant has demonstrated to the Panel’s satisfaction that it has UDRP-relevant rights in its BASF trademark by virtue of the registered trademark specified in the Complainant’s rights section above. The said mark is repeated in its entirety in each of the disputed domain names.

In cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see, for example, section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (WIPO Overview 3.0, section 1.8). Here, the Panel considers that the Complainant’s mark is fully recognizable in each of the disputed domain names based upon a straightforward side-by-side comparison. The additional elements are of no consequence. The generic Top-Level Domain in respect of each disputed domain name, namely “.vip”, is typically disregarded for the purposes of the comparison under the first element analysis of the Policy. In all of these circumstances, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in respect of which the Complainant has rights.

With regard to the second element of the Policy, the Complainant asserts that the Respondent is not a licensee or authorized agent of the Complainant or otherwise authorized to use the Complainant’s trademarks, in which the Complainant has prior rights preceding the registration of the disputed domain names by decades. The Complainant also states that the Respondent is not an authorized reseller of the Complainant, is not commonly known by the disputed domain names, and has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. The Panel notes the terms of the Complainant's evidence that the disputed domain names each originally pointed to broadly similar web pages featuring the Complainant’s well-known trademark and seeking sensitive personal data of Internet users while also promoting allegedly fraudulent financial services under the guise of the Complainant’s identity (a matter the Respondent has not denied despite this being a serious allegation which calls for a response).

The Panel finds that the Complainant’s assertions and evidence, taken together, are sufficient to constitute the requisite prima facie case that the Respondent has no rights and legitimate interests in the disputed domain names (see, for example, section 2.1 of the WIPO Overview 3.0). In particular, the Panel accepts that the disputed domain names impersonate the Complainant, seek sensitive personal information under the guise of Complainant’s identity, and promote financial investment schemes unconnected to the Complainant. Internet users will mistakenly believe that the disputed domain names and any associated websites emanate from the Complainant due to the disputed domain names containing the Complainant’s trademark, which also featured on each of the associated websites before these were taken down. Such potential activity cannot give rise to rights or legitimate interests in the disputed domain names.

The Respondent has not replied to the Complainant’s allegations and evidence in this case and has failed to set out any alleged rights or legitimate interests which it might have claimed in the disputed domain names. There are no submissions or evidence on the record which might serve to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

With regard to the third element of the Policy, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Panel accepts the Complainant’s submission that the Complainant’s BASF mark is well-known (see also, for example, the panel’s comments in BASF SE v. Van Diemen, CAC Case No. 108182). The Panel finds that the disputed domain names intentionally reference such well-known mark, as do the formerly associated websites. In these circumstances, it is entirely reasonable to infer that the disputed domain names were registered by the Respondent with knowledge of the Complainant and its rights, and with an intent to target these. Therefore, they were registered in bad faith. The disputed domain names have been used in connection with the harvesting of sensitive personal data and the promotion of allegedly fraudulent financial investment schemes. The Respondent used the presence of the Complainant’s well-known mark in the disputed domain names to generate traffic to said websites and to wrongfully provide reassurance to Internet users that they could disclose their personal data there on the incorrect assumption that the data custodian was the Complainant. Likewise, for the same reason, Internet users would have been encouraged to view the financial schemes on the websites associated with the disputed domain names as sponsored or endorsed by the Complainant when they were not. This demonstrates to the Panel’s satisfaction that the disputed domain names are targeting the Complainant’s rights unfairly and are being used in bad faith.

In all of these circumstances, the Panel considers that the Complainant has made out a sufficient case of registration and use in bad faith. The Respondent has not filed a Response in this case and therefore has made no rejoinder to the Complainant’s assertions of bad faith registration and use. No explanation has been presented by the Respondent that might have suggested that its actions regarding the disputed domain names were in good faith, and the Panel has been unable to identify any conceivable good faith motivation which the Respondent might have put forward for its registration and use of the disputed domain names.

In all of these circumstances, the Panel finds that the disputed domain names have been registered and are being used in bad faith.