The Complainant is Solvay SA, Belgium, represented by Stephanie Missotten, Belgium.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / “SOLVAY SA” of Arles, France.1 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2016. On February 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 8, 2015.
The Center verified that the Complaint together with the amended 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 March 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2016.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 19, 2016. 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 an international industrial group within the chemistry sector and offers a broad range of products in markets such as consumer goods, construction, automotive, energy, water and environment, and electronics.
The Complainant holds a number of registered rights for the mark SOLVAY in around 100 countries, the earliest being registered at least as early as 1981, just as the Complainant operates several websites under domain names that contain the SOLVAY mark, including and .
The disputed domain name has been registered on February 12, 2016. While the disputed domain name does not resolve to an active website, the Complainant has submitted as evidence fraudulent email sent from the disputed domain name, discussed further infra. 5. Parties’ Contentions A. Complainant
The Complainant contends that (i) the disputed domain name is confusingly similar to the Complainant’s trademarks; that (ii) the Complainant has not authorized any activities by the Respondent, nor any use of its trademarks and that the Respondent has no rights or legitimate interests in the disputed domain name; and that (iii) the Respondent registered and is using the disputed domain name in bad faith, namely for sending fraudulent emails. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark SOLVAY because it contains the mark in its entirety with the addition of the generic term “group” as prefix. The generic Top-Level Domain “.com” does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted this and both the absence of any reply to the Complainant as cited above and the way that the Respondent has been and is using the disputed domain name (i.e., to send fraudulent emails) does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that 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 trademark 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 its web site 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 Web site or location or of a product or service on the Respondent’s web site or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the extent of use of the Complainant’s trademark, the distinctive nature of the mark and the Respondent’s unauthorized use of the name of the Complainant as “Registrant Name” it is obvious to the Panel that the Respondent registered the disputed domain with knowledge of the Complainant and the Complainant’s mark.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The Complainant has furnished evidence that the Respondent is using the disputed domain name actively to send fraudulent emails inter alia to customers of the Complainant. The disputed domain name is thus used as “return address” in emails, and, in addition, the Respondent is using the identity of one of the Complainant’s employees as the name of the sender of the said emails. It is thus obvious to the Panel that the Respondent is using the disputed domain name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are therefore fulfilled in this case. See inter alia DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135.
Under these circumstances, the Panel need not address the additional arguments that were presented in the Complaint in support of the claim of bad faith registration and use of the disputed domain name by the Respondent. 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.
Knud Wallberg
Sole Panelist
Date: April 28, 2016
1 The Panel has placed this name in quotation marks to indicate its findings that an unknown third-party has made unauthorized use of the Complainant’s name when registered the disputed domain name in an attempt at impersonation. The Complainant is not the underlying registrant of the disputed domain name.
Full & Egal Universal Law Academy