The Complainant is Solvay SA of Brussels, Belgium, represented internally.
The Respondent is Name Redacted. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 9, 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 14, 2016.
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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was April 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2016. However, a letter by the Respondent was received by the Center on April 13, 2016.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 20, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is an international industrial company established in 1863. It is one of the ten largest chemical companies, listed on NYSE Euronext in Brussels and Paris, employs about 30,000 people in more than 53 countries, and generated nearly EUR 12 billion in pro forma net sales in 2014.
The Complainant owns numerous registrations of the trademark SOLVAY, inter alia European trademark registration no. 000067801 SOLVAY, registered on May 30, 2000 (hereinafter referred to as the “SOLVAY Mark”). In addition, the Complainant owns hundreds of domain names including its SOLVAY Mark, inter alia .
The disputed domain name was registered on January 28, 2016. Both parties agree that the name of the registrant of the disputed domain name is identical with the name of one of the Complainant’s employees and that the personal name of the Complainant’s employee as well as the address, which is the address of the Complainant’s affiliate in France, has been misused by an unknown third party in order to acquire credibility in the eyes of external contacts.
The owner of the disputed domain name (the “domain owner”) used the disputed domain name to send out emails to external companies and used the identity of the named Respondent and the Complainant’s corporate signature in such emails. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the SOLVAY Mark as it fully includes such mark and as the additional word “projets” is merely generic.
(2) The domain owner has no rights or legitimate interests in the disputed domain name as the Complainant has no business or connection with the domain owner, as the domain owner has never obtained any agreement, authorization or license justifying its registration and use of the SOLVAY Mark, as the domain owner is not commonly known by the disputed domain name, as there is no evidence that the disputed domain name is used in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use, and as the domain owner is not actively conducting any legitimate business related to the Complainant.
(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that the domain owner registered the disputed domain name using the identity of one of the Complainant’s employees and the address of the Complainant’s affiliate in France, that the disputed domain name was used in connection with phishing emails under an email address similar to the email addresses used by the Complainant’s employees and using the Complainant’s corporate logo and contact details in the email signature, and that it is therefore clearly proven that the disputed domain name was registered to target the Complainant and therefore in bad faith. With regard to bad faith use, the Complainant argues that the disputed domain name was used in connection with fraudulent activities, i.e. phishing attempts and identity fraud. B. Respondent
In his letter, the named Respondent stated that he did not register the disputed domain name, that his identity was misused, and that he has no control of the email address used in the Whois information of the disputed domain name. He provided evidence that he filed a criminal complaint with the French police authorities with regard to the fraudulent activities conducted by the domain owner. He states that he supports the Complainant in these proceedings in order to stop the fraudulent activities of the person misusing his identity. He requests that his name is rendered anonymous upon publication of the decision in order to safeguard his identity. 6. Discussion and Findings
First of all, the Panel decided to accept the Respondent’s statement despite of its late filing. The Respondent convinced the Panel that this is a case of identity theft and that he received the Complaint only after it was forwarded to him to his real business address by a colleague working at the Complainant’s affiliate address in Paris. Under the special circumstances of this case, it would be unfair to disregard the named Respondent’s statement, which, in addition, did not delay the present proceedings.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(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. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s SOLVAY Mark and is confusingly similar to such mark. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of hyphens or generic terms, such as “projets”.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark 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 customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the domain owner has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The registrant of the disputed domain name did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests on the registrant of the disputed domain name either. The registrant used the disputed domain name in connection with a phishing activity. Such use does not convey rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has met its burden under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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 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 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 its website or location.
The Panel is satisfied that the registrant registered the disputed domain name with full knowledge of the Complainant and its rights in the SOLVAY Mark as it used the disputed domain name in connection with fraudulent activities clearly targeting the Complainant, including the use of the Complainant’s corporate logo within the email signature used in emails sent from the disputed domain name.
As to bad faith use, the Panel finds that the disputed domain name was used by the registrant in an intentional attempt to benefit from the goodwill of the Complainant’s trademark for financial gain by using the disputed domain name in connection with emails creating the wrong impression to have been sent by the Complainant with the likely purpose of collecting data of the recipients of such communications (so-called “phishing”, cf. Hemmings Motor News Inc. v. Giacomo Pegorari,WIPO Case No. D2012-1807; Confédération Nationale du Crédit Mutuel v. Nicolas Pete,WIPO Case No. DBZ2009-0001; Banca Intesa S.p.A. v. Moshe Tal,WIPO Case No. D2006-0228; Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa,WIPO Case No. D2006-0614; Australia and New Zealand Banking Group Limited v. Bashar Ltd,WIPO Case No. D2007-0031; Confédération Nationale du Crédit Mutuel and Crédit Industriel et Commercial S.A. v. Trabaja Jayam, Zeb Fi Tarmatek,WIPO Case No. DLC2009-0002).
Therefore, the disputed domain name was registered and is being used in bad faith, and the Complainant has thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well. 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.
In addition, the Panel orders that the identity of the named Respondent shall not be disclosed in the decision published on the Internet in order to safeguard his identity (cf. Carrefour v. Name Redacted,WIPO Case No. D2015-1174).
Brigitte Joppich
Sole Panelist
Date: May 3, 2016
Full & Egal Universal Law Academy