The Complainant is Solvay SA of Brussels, Belgium, represented internally.
The Respondent is Domain Administrator of Beijing, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2015. On October 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2015, 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 October 22, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. October 23, 2015, the Complainant confirmed its request that English be the language of the proceeding by email to the Center. On October 22, 2015, the Respondent submitted a request that Chinese be 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 of the Complaint in English and Chinese, and the proceeding commenced on November 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2015. The Respondent did not file a Response by the due date. The Center notified the Respondent’s default on November 23, 2015.
On November 26, 2015, the Center noticed that an email address, which is different from the Respondent’s email address in the WhoIs record, as indicated in the Complaint to be associated with the Respondent was not copied when the Center formally notified the Respondent of the Complaint. Accordingly, the Center granted the Respondent five days until December 1, 2015 to indicate whether it wishes to participate in this proceeding.
The Center received a late Response on December 1, 2015 and an email on December 3, 2015 from the Respondent’s email address as indicated in the WhoIs record. The Center did not receive any further submissions from the email address which was not used in the Center’s Notification of the Complaint email dated November 2, 2015.
The Center appointed Sok Ling MOI as the sole panelist in this matter on December 14, 2015. 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, established in 1863 and headquartered in Brussels, is one of the world’s largest producers of essential chemicals. It offers a broad range of products in markets such as consumer goods, construction, automotive, energy, water and environment, and electronics. It is listed on NYSE Euronext in Brussels and Paris. The Complainant is part of the Solvay Group which employs close to 30,000 people in 117 sites in over 56 countries worldwide, generating EUR 9.94 billion in net sales in 2013.
The Complainant trades under its corporate name Solvay which is also used as a trade mark. The Complainant owns numerous registrations of the trade mark SOLVAY in almost 100 countries, many for decades. Among the registrations are:
Country
Trade Mark
Registration Number
Registration Date
United States of America (“USA”)
SOLVAY
1578435
January 23, 1990
China
SOLVAY
603946
November 26, 1992
China
苏威 (Transliteration of SOLVAY)
602477
April 8, 1993
China
SOLVAY
155140
March 15, 1982
China
SOLVAY
155142
March 15, 1982
Europe/Community Trade Mark (“CTM”)
SOLVAY
000067801
May 30, 2000
The Complainant registered the domain name on October 9, 2014. It also owns a large number of domain names containing the element “solvay”.
The disputed domain name was registered on October 10, 2014, long after the Complainant has registered its trade mark SOLVAY in the USA, China and Europe. As of the date of this decision, the disputed domain name does not resolve to any active website. 5. Parties’ Contentions A. Complainant
The Complainant’s trade name and trade mark SOLVAY enjoys a high degree of reputation in the relevant sector. The name SOLVAY originates from the individual founder of the Complainant company, Mr. Ernest Solvay, and has a high distinctiveness without any generic meaning.
A.1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
The disputed domain name wholly incorporates the Complainant’s trade mark SOLVAY. It is also virtually identical to the Complainant’s registered domain name , differing only by the addition of a hyphen between the words “solvay” and “mobile”.
A.2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent is not commonly known by the domain name and does not appear to own any trademarks or trade names corresponding to the disputed domain name, and so may not claim any rights established by common usage.
The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use Solvay in any domain name, nor is the Respondent an authorized dealer of the Complainant’s products.
A.3. The disputed domain name was registered and is being used in bad faith:
The Respondent (as Georg Jensen) contacted the Complainant with an offer to sell the disputed domain name at EUR 600, a sum that exceeds any reasonable cost associated with registering the disputed domain name (about EUR 26 for a two-year period). Previous UDRP panels have found such offer for sale at an unreasonably high cost to be grounds for findings of bad faith.
Evidence shows that the Respondent (as Georg Jensen) knew of the Complainant and its trade mark SOLVAY when he spontaneously wrote to the Complainant stating that “his client” has a domain name which could be “pretty useful” for the Complainant. Taking into account the large number of domain names containing the trade mark SOLVAY registered by or on behalf of the Complainant, the Respondent must have known of the Complainant’s rights in SOLVAY and must have registered the disputed domain name primarily for the purpose of selling or otherwise transferring the registration to the Complainant for valuable consideration. B. Respondent
The Respondent filed a formal Response in Chinese on December 1, 2015. As the Response was filed within the extended time period granted by the Center, the Panel accepts and considers the Response.
In its Response, the Respondent claims to have no affiliation with “Georg Jensen” except to say that it was previously approached by said Georg Jensen to sell the disputed domain name registration.
The Respondent argues that the Complainant has not succeeded in satisfying the requirements for each of the three elements under paragraph 4(a) of the Policy. First, the disputed domain name is not confusingly similar to the Complainant’s trade mark. Secondly, the term “Solvay” is a common surname and does not possess any technical or descriptive meaning. As such, the Respondent’s use is not restricted by the national trade mark laws of China and other countries. Thirdly, trademark rights do not automatically extend to rights in the domain name regime, and according to the ICANN policy, domain name rights are granted on the basis of “first-to-register” principles. Hence, the Respondent has rights and legitimate interests in the disputed domain name by virtue of registration. Fourthly, although the Complainant has registered a large number of domain names containing the Solvay word, this does not prevent others from registering similar domain names, as is evidenced by the co-existence of (owned by a Top500 enterprise), (owned by a multinational online jewellery organisation) and (the well-known Dutch electronics company). Fifthly, the Respondent claims that the website is still in the early planning stages before launch, and it therefore has a lawful and legitimate reason to use the disputed domain name.
The Respondent further cites the decision of Johnson & Johnson v. Widome Design,WIPO Case No. D2013-1281 as a precedent to rebut the Complainant’s contentions.
In conclusion, the Respondent requests that the Panel deny the remedies requested by the Complainant. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless 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.
Paragraphs 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding for the following reasons:
(a) The Respondent is active on the Internet as georg.jensen@[...].com. The Respondent initiated email contact with several of the Complainant’ employees offering to sell the disputed domain name. The email correspondence between the Respondent and the Complainant was entirely in English;
(b) Since the initiative to communicate in English was taken by the Respondent, it is reasonable to conclude that the Respondent is highly proficient in the English language and capable of answering the Complaint with a Response in English;
(c) The content at the website linked to the disputed domain name is partially in English. This shows the Respondent is promoting its services in English; and
(d) Conducting the proceeding in a language other than English could delay the proceeding, and would incur significant translation costs on the part of the Complainant and be unfair to the Complainant.
Based on the WhoIs record, the Respondent is known as “Domain Administrator”. There is no indication that the Respondent is a Chinese individual and not a native English speaker. In its email of December 3, 2015 and formal Response filled on December 1, 2015, the Respondent claims to have no affiliation with “Georg Jensen” except to say that it was previously approached by said Georg Jensen to sell the disputed domain name registration. The Respondent also categorically claims to have no knowledge of English and requests for Chinese to be the language of the proceeding. The Response was filed in Chinese in the name of “域名管理员：李力” (with the first five characters meaning “Domain Name Administrator”) and signed off as “李力”.
As the Complainant has not provided sufficient evidence to establish the relationship between Georg Jensen and the Respondent, the Panel is not inclined to accept the evidence (which evidence includes the image of the website containing English contents) relating to Georg Jensen for the purpose of establishing the English language proficiency of the Respondent. Even without considering such evidence, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) The disputed domain name contains Latin characters and not Chinese scripts;
(b) The Respondent states its name as “Domain Administrator” for the purpose of registering the disputed domain name;
(c) The Respondent’s email address is “solvaymobile@[...].com”;
(d) That the Respondent is aware of “Solvay” being a common surname suggests that the Respondent has sufficient knowledge of English;
(e) The Center has notified the Respondent of the proceeding in both Chinese and English;
(f) The Respondent has been given the opportunity to present its case in this proceeding; and
(g) the Center informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English and the Response as filed in Chinese; and (ii) English shall be the language of the proceeding and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in SOLVAY by virtue of its use and registration worldwide of the same as a trade mark. The disputed domain name incorporates the Complainant’s trade mark SOLVAY in its entirety. The addition of the descriptive word “mobile” does not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant’s trade mark. Additionally, the Panel notes in passing that the only difference between the disputed domain name and the Complainant’s registered domain name is that the disputed domain name does not have a hyphen between the words “Solvay” and “Mobile”. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant, or otherwise authorized or licensed to use the SOLVAY mark, or to seek registration of any domain name incorporating the SOLVAY mark. The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name.
In its Response, the Respondent claimed that the term “Solvay” is a common surname and does not possess any technical or descriptive meaning. The Respondent asserted that the rights of domain name is on the basis of “first-to-register”. Yet, the Respondent fell short of explaining the purpose for its registration of the disputed domain name. The Respondent has not provided any evidence of its use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it is providing a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name was registered on October 10, 2014 and more than a year has passed without any concrete use being shown for the disputed domain name and website. The disputed domain name has been held “passively” since its registration on October 10, 2014. The Respondent’s explanation that the website is still in the early planning stages is not supported by evidence and is unconvincing.
There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “Solvay”. On the other hand, the Complainant’s trade mark is widely known and has a strong Internet presence. In the circumstances, the Panel makes the inference that the Respondent was aware of the Complainant’s mark when it registered the disputed domain name.
The Respondent claims that ICANN policy grants domain name registration rights on the basis of “first-to-file” principles and consequently the Respondent has legitimate interests in the disputed domain name by virtue of its registration. In this regard, the Respondent’s understanding of the UDRP is misconceived. The respondent is required to show rights or legitimate interests in order to defend its registration of a domain name that incorporates a trade mark. This, the Respondent has failed to do. Merely citing examples of other third party domain names incorporating famous trade marks (e.g., ) co-existing with domain name registrations of the rights owners (), does nothing to aid the Respondent’s case.
The Respondent has therefore failed to rebut the Complainant’s prima facie case.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
As mentioned above, given that the Complainant has not provided sufficient evidence to establish the relationship between Georg Jensen and the Respondent, the Panel is not inclined to accept the evidence relating to Georg Jensen (including the offer to sell the disputed domain name to the Complainant). The determination of bad faith will therefore be based on other evidence before the Panel.
The Panel notes that the disputed domain name does not resolve to any active website, and there is no conclusive evidence that the Respondent (Domain Administrator) has attempted to sell the disputed domain name or initiated contact with the Complainant. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2.
The Complainant has a strong Internet presence and has had a business presence in China for decades. A cursory Internet search would have disclosed the SOLVAY trade mark and its use by the Complainant. Thus a presumption arises that the Respondent was aware of the Complainant’s SOLVAY trade mark and related domain names when it registered the disputed domain name. Registration of a domain name incorporating a widely-known trade mark, without any legitimate interest or genuine intent to use the same for legitimate purpose, is indicative of bad faith.
The Panel notes that the disputed domain name was registered only one day after the Complainant registered its domain name . The disputed domain name was then held passively for more than a year. Such length of time renders the Respondent’s explanation for the inactive passive holding of the disputed domain name (i.e., that the website is still in the early planning stages) unconvincing. Given the near identity of the two domain names and given this Panel’s above finding that the Respondent lacks rights or legitimate interests in the disputed domain name, it is reasonable to determine that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name and/or to disrupt its business.
The Respondent refers to the decision in Johnson & Johnson v. Widome Design, supra to rebut the inference of bad faith. However, each decision is based on its own unique facts and this Panel is not bound by the earlier UDRP panel decision but makes its findings on the present case file.
The Panel notes that efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details. In fact, the Respondent had provided its name as “Domain Administrator” for the purpose of registering the disputed domain name, while in the Response added the Chinese name “域名管理员：李力”. This suggests that the Respondent had attempted to conceal its identity. This Panel infers bad faith from such deliberate attempts at identity concealment.
Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: January 10, 2016
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