The Complainant is SOLVAY Société Anonyme, Belgium, represented by Petillion, Belgium.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Enges Okor, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2020, 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 January 14, 2020 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 January 14, 2020. 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 January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on February 21, 2020. 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 was founded in 1863. It is a global leader in the chemicals industry. The Complainant’s group has its registered offices in Brussels and employs around 24,500 people in 61 countries. It is listed on the European Stock Exchange and its net sales for 2018 amounted to EUR 10,3 billion. The Complainant is the registered holder of the following trademark registrations for the sign SOLVAY (the “SOLVAY trademark”): - the European Union Trade Mark SOLVAY with registration No. 000067801, registered on May 30, 2000 for goods in International Classes 1, 3, 4, 5, 7, 9, 10, 12, 17, 19, 20 and 31; - the European Union Trade Mark SOLVAY with registration No. 011664091, registered on August 13, 2013 for goods and services in International Classes 1, 2, 3, 4, 5, 7, 9, 10, 12, 17, 19, 22, 23, 24, 25, 30, 31, 34, 35, 36, 37, 39, 40 and 42; and - the International trademark SOLVAY with registration No. 1171614, registered on February 28, 2013 for goods and services in International Classes 1, 2, 3, 4, 5, 7, 9, 10, 12, 17, 19, 22, 23, 24, 25, 30, 31, 34, 35, 36, 37, 39, 40 and 42, designating numerous jurisdictions including the United States where the Respondent resides. The disputed domain name was registered on November 11, 2019. It currently does not resolve to an active website. However, according to evidence submitted by the Complainant, the disputed domain name used to resolve to a registrar parking page containing pay-per-click links. 5. Parties’ Contentions A. Complainant The Complainant submits that as a result of its international presence and marketing investments, the SOLVAY trademark has become one of the top 10 most powerful and valuable Belgian brands and is well-known all over the world. In 2019, its value was estimated at EUR 847 million. According to the Complainant, the disputed domain name is identical or confusingly similar to the SOLVAY trademark. The disputed domain name incorporates the SOLVAY trademark in its entirety with the addition of a hyphen, so it contains sufficiently recognizable aspects of the SOLVAY trademark and can be considered as a case of typosquatting. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not commonly known by it and has not acquired any relevant trademark or service mark rights. The Complainant adds that it has not authorized the Respondent to register and use the disputed domain name. The disputed domain name refers to a registrar parking page containing pay-per-click links, some of which directly relate to the Complainant’s business. According to the Complainant, this does not constitute a fair or good faith use of the disputed domain name. The Complainant maintains that in view of the distinctive and well-known SOLVAY trademark, no good faith use of the disputed domain name by the Respondent is conceivable. The Complainant contends that the disputed domain name has been registered and is being used in bad faith. According to it, the Respondent could not have been unaware of the Complainant and its rights in the SOLVAY trademark at the time when it registered the disputed domain name, because the Complainant and its trademarks are well-known all over the world, including in the United States where the Respondent resides, and a simple search on the Internet would have revealed the Complainant’s presence, reputation and trademarks. The Complainant adds that previous panels acting under the Policy have acknowledged that the SOLVAY trademark is distinctive and well-known. The Complainant points out that the disputed domain name refers to a registrar parking page containing pay-per-click links, some of which relate to the Complainant’s business in the polyvinyl chloride resins industry, where the Complainant states to be one of the key players. According to the Complainant, this may affect the Complainant’s business by attracting visitors looking for information about the Complainant, and shows that the Respondent uses the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the SOLVAY trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on its website. According to the Complainant, it cannot be excluded that the Respondent uses or will use the disputed domain name for fraudulent activity such as phishing, since the disputed domain name incorporates the Complainant’s SOLVAY trademark in its entirety with the addition of a hyphen, which may confuse Internet users to believe that an email address linked to the disputed domain name is connected to the Complainant. As a further argument in this regard, the Complainant points out that the Respondent is hiding its identity behind a privacy service and has provided false contact information to the Registrar. The Complainant also states that on November 21, 2019, it tried to contact the Respondent by email, but received no response. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark 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 Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” The Respondent has however not submitted a Response in this proceeding and has not disputed the arguments of the Complainant and the evidence that it has put forward. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the SOLVAY trademark for the purposes of the Policy. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name. As discussed in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. The disputed domain name incorporates the SOLVAY trademark in its entirety with the addition of a hyphen between the two syllables of the trademark. This addition does not prevent a finding of confusing similarity between the disputed domain name and the SOLVAY trademark, because the latter is easily recognizable in the disputed domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to the SOLVAY trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it is not commonly known by it and has not acquired any relevant trademark or service mark rights, and the Complainant has not authorized the Respondent to register and use the disputed domain name. The Complainant points out that the disputed domain name refers to a registrar parking page containing pay-per-click links, some of which directly relate to the Complainant’s business, which according to the Complainant does not constitute a fair or good faith use of the disputed domain name. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not submitted any explanation of its choice of the disputed domain name or arguments in support of the existence of any rights and legitimate interests in it. It has not denied the allegations of the Complainant or disputed the evidence submitted by it. The disputed domain name is confusingly similar to the SOLVAY trademark and Internet users may regard it as associated to the Complainant. According to the undisputed evidence in the case file, it has resolved to a parking webpage featuring pay-per-click links, some of which relate to the polyvinyl chloride resins industry, where the Complainant submits to be one of the major players. As discussed in section 2.9 of the WIPO Overview 3.0, the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. In view of the above, the Panel concludes that it is more likely than not that the Respondent has targeted the Complainant’s SOLVAY trademark with the registration of the disputed domain name in an attempt to capitalize on the reputation of this trademark by confusing and attracting Internet users seeking the Complainant’s products and exposing them to third party pay-per-click links related to the Complainant’s business. In the Panel’s view, such conduct does not appear as legitimate and does not give rise to rights or legitimate interests in the disputed domain name on the Respondent. Therefore, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The disputed domain name is confusingly similar to the SOLVAY trademark. As discussed in section 6.B above, it has resolved to a parking webpage featuring pay-per-click links, some of which relate to the polyvinyl chloride resins industry, where the Complainant submits to be one of the major players. As discussed in section 3.5 of the WIPO Overview 3.0 with respect to “automatically” generated pay-per-click links, UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name. Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith. In view of the above and in the lack of a denial by the Respondent of any of the arguments and evidence brought forward by the Complainant, the Panel concludes that the Respondent must have been aware of the goodwill of the Complainant’s SOLVAY trademark when it registered the disputed domain name, and that the posting of pay-per-click links related to the Complainant’s business on the parking webpage to which the disputed domain name has resolved represents an attempt to capitalize on the reputation and goodwill associated with the SOLVAY trademark by attracting Internet users seeking the Complainant’s products and confusing them as to the source or affiliation of these links – a conduct for which the Respondent is responsible, being the registrant of the disputed domain name. It is also notable that the Respondent has provided false contact details to the Registrar, as confirmed by the evidence in the case file. Taking the above into account, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 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 Assen Alexiev
Sole Panelist
Date: March 6, 2020
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