BASF Aktiengesellschaft and BASF Corporation v. MostDomains.com a/k/a Bryant Smith
Claim Number: FA0208000117331
Complainant is BASF Aktiengesellschaft and BASF Corporation, Mount Olive, NJ (“Complainant”) represented by Melissa L. Klipp, of Drinker Biddle & Shanley LLP. Respondent is MostDomains.com a/k/a Bryant Smith, Coral Springs, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <basfcorp.com>, registered with VeriSign.
On September 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 1, 2002; the Forum received a hard copy of the Complaint on August 1, 2002.
On August 5, 2002, VeriSign confirmed by e-mail to the Forum that the domain name <basfcorp.com> is registered with VeriSign and that Respondent is the current registrant of the name. VeriSign has verified that Respondent is bound by the VeriSign registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 26, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <basfcorp.com> domain name is confusingly similar to Complainant’s BASF trademark and corporate identity.
2. Respondent does not have any rights or legitimate interests in the <basfcorp.com> domain name.
3. Respondent registered and used the <basfcorp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds various trademark registrations for the BASF trademark, including, inter alia: Reg. No. 790,582 for the BASF mark registered on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) on June 8, 1965; Reg. Nos. 791,033 and 1,496,364. Complainant’s BASF registered mark is an acronym that represents Badische Anilin und Soda-Fabrik, and denotes various chemicals and related products.
Complainant and its affiliate, BASF AG, have used the BASF mark since as early as 1865 in Germany, and 1954 in the United States. Complainant has spent millions of dollars advertising and promoting its BASF mark and trade name in an effort to establish significant consumer brand recognition. Complainant had approximately $6.9 billion dollars in sales in 2001, while its affiliate, BASF AG, had sales in excess of $29 billion the same year. Complainant employs more than 14,000 people worldwide. Complainant also operates and maintains several websites that utilize the BASF mark, including <basf.com> and <basf-corp.com>.
Because of Complainant’s extensive efforts and significant marketing history, Complainant’s marks have gained a substantial amount of goodwill and name recognition among consumers and the members of the chemical industry. Complainant’s BASF mark is famous and recognized throughout the world.
Respondent registered the <basfcorp.com> domain name on July 22, 2002. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, implied or expressed, to use the trademark in a domain name or any other manner.
Prior to notice of this dispute, Respondent’s <basfcorp.com> domain name resolved to <floridadesigns.com>, a website that advertised Respondent’s website design and Internet marketing services. Complainant’s evidence indicates that Respondent typically operates and conducts business under the Florida Designs name, and not the WHOIS entry MostDomains.com. On July 25, 2002, Respondent contacted Complainant via e-mail and offered the domain name registration to Complainant in return for “an offer.”
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the BASF mark through registration with the USPTO and subsequent continuous use of the mark.
Respondent’s <basfcorp.com> domain name is confusingly similar to Complainant’s BASF mark. Not only does Respondent’s domain name incorporate Complainant’s distinguishable mark in its entirety, but includes the addition of “corp,” a common suffix of any incorporated business entity. In fact, Complainant operates in the United States under the BASF Corporation identity; thus, Respondent’s domain name reflects an actual circumstance that increases the possibility Internet users will be confused. Given the uniqueness and fame of the BASF mark, any consumer finding a domain address consisting of the BASF mark in its entirety would expect the website to be sponsored by, or affiliated with Complainant. See Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Brambles Industries Ltd. v. Geelong Car Co. Pty. Ltd., trading as Geelong City Motors, D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with Complainant’s business).
Accordingly, the Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant’s Submission contains reasonable assertions that Respondent does not have any rights or legitimate interests in the <basfcorp.com> domain name under Policy ¶ 4(a)(ii). Respondent did not respond to Complainant’s averments, thereby failing to produce any set of circumstances that could establish rights or legitimate interests in the subject domain name. Because Respondent failed to respond in this proceeding, it is proper for the Panel to accept all of Complainant’s reasonable allegations as true. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Moreover, Complainant’s Submission satisfies the initial prima facie burden Complainant must fulfill in order to succeed in a challenge under the Policy. Complainant’s assertions and evidence effectively shift the burden of production and persuasion to Respondent. In accordance with Paragraphs 14(a) and (b) of the Policy, the Panel may draw such inferences as it considers appropriate from Respondent failing to submit information to the Panel. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).
As stated in the Findings, in the telling period before initiation of this dispute Respondent used the <basfcorp.com> domain name to redirect Internet users to its Florida Designs website. Respondent’s opportunistic attempt to acquire Internet traffic and interest by using the recognition and fame associated with Complainant’s mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). To conclude otherwise would mean that Respondent could rely on intentional infringement to demonstrate a legitimate interest in the domain name, an interpretation that is contrary to the Policy. See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).
There is no evidence before the Panel that would suggest Respondent is commonly known by the second-level domain “basfcorp” or the <basfcorp.com> domain name pursuant to Policy ¶ 4(c)(ii). Furthermore, Complainant’s uncontested evidence indicates Respondent’s actual identity is Florida Designs, an entity with no apparent connection to the domain name. Respondent is not a licensee of Complainant, nor is Respondent authorized to use the BASF mark in any fashion. The fame of Complainant’s BASF mark creates the presumption that Respondent is not commonly known by a domain name that incorporates the BASF mark in its entirety. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
Lastly, Respondent’s infringement of Complainant’s mark is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). As stated, Respondent’s <basfcorp.com> domain name originally directed Internet users to another domain name, <floridadesigns.com>. Respondent presumably monetarily benefited from the diverted Internet traffic because the <floridadesigns.com> domain name resolved to a website that promotes Respondent’s web design and development services, thereby advertising Respondent’s business. Such infringing use is not legitimate, nor is it noncommercial. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Policy presents four circumstances that are considered evidence of registration and use of a domain name in bad faith. However, these four criteria are not exhaustive, and the Panel may consider the “totality of circumstances” in determining if Respondent registered and used the domain name in bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Evidence indicates that Respondent knew of Complainant’s BASF mark when he sought registration of the infringing domain name. Because of the famous and distinctive nature of Complainant’s mark, Respondent’s original use of the <basfcorp.com> domain name, and the BASF mark’s listing on the Principal Register of the USPTO, Respondent had at least constructive notice of Complainant’s rights in the BASF mark. Precedent has determined that constructive notice is all that is required when determining bad faith registration under Policy ¶ 4(a)(iii). Respondent’s intentional registration of a domain name that he knew to be confusingly similar constitutes bad faith registration. See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Complainant’s Submission includes evidence that reveals Respondent explicitly offered to sell its rights in the <basfcorp.com> domain name to Complainant. Respondent’s attempt to extort money for its infringing use of Complainant’s BASF mark in its domain name constitutes bad faith use pursuant to Policy ¶ 4(b)(i). Even in situations where Respondent fails to state a specific sales figure, a general intent to sell the domain name registration is enough to infer bad faith motivations, especially where Respondent initiates the sale. See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having failed to establish all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <basfcorp.com> domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: September 19, 2002
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