The Complainant is Solvay Société Anonyme, Belgium, represented by Petillion, Belgium.
The Respondent is John Smith, 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 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. The Respondent submitted email communications on January 21, 2020, January 24, 2020, January 25, 2020, January 28, 2020, February 4, 2020, February 8, 2020, February 11, 2020 and February 12, 2020. On February 14, 2020, the Complainant submitted a Supplemental Filing. The Respondent submitted two further emails on, respectively, February 15, 2020 and February 18, 2020. The Center appointed Warwick A. Rothnie 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. After appointment of the Panel, the Respondent submitted a further email on February 22, 2020. 4. Factual Background The Complainant was founded in 1863 in Belgium. It and its associated group of companies manufacture and supply a wide range of chemical products around the world. In 2018, the Complainant’s corporate group employed some 24,500 employees at 115 different sites in 61 countries around the world. Group net sales were EUR 10.3 billion. The Complainant operates a website from “www.solvay.com”. It also has a Facebook page at “www.facebook.com/solvaygroup”, with some 58,000 followers. It operates a Twitter account at “twitter.com/solvaygroup” with some 32,000 followers. According to BrandFinance, the value of the Complainant’s brand in 2018 was EUR 872 million and in 2019, EUR 847 million; making it the ninth most valuable Belgian brand in 2018 and tenth most valuable in 2019. Amongst other things, it has secured registered trademarks for SOLVAY including: (a) European Union Trademark (“EUTM”) No. 000067801, which was filed on April 1, 1996 and registered on May 30, 2000 in respect of a very wide range of goods in International Classes 1, 3, 4, 5, 7, 9, 10, 12, 17, 19, 20 and 31; (b) EUTM No. 011664091, which was filed on March 18, 2013 and registered on August 13, 2013 in respect of a very wide range of 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; (c) United States Registered Trademark No. 2,770,637, which was filed on September 26, 2000 and registered on October 7, 2003 in respect of goods in International Classes 1, 5, 17 and 31; (d) United States Registered Trademark No. 4,774,612, which was filed on February 28, 2013 and registered on July 21, 2015 in respect of 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. The disputed domain name was registered on November 29, 2019. According to the Respondent, he “bought” it at an auction of abandoned domain names. It has not resolved to an active website. On December 13, 2019, a representative of the Complainant sent the Respondent an email notifying that it considered the disputed domain name infringed the Complainant’s intellectual property rights and requesting its transfer to the Complainant. No response was received to that email, although it appears that the only email address for the Respondent available to the Complainant at that time was inactive. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. As noted above, the Complainant has submitted a Supplemental Filing in response to the numerous emails submitted by the Respondent. Following receipt of that Supplemental Filing by the Center, the Respondent has submitted two further emails and a third email after appointment of the Panel. Needless to say, none of these documents has been requested by the Panel. Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case. Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear. The Complainant’s Supplemental Filing does address matters raised in the Respondent’s emails including, in particular events occurring after the Complaint was filed. The Respondent has submitted three further emails in response to the Complainant’s Supplemental Filing and so cannot be said to have been denied an opportunity, either to object to its admissibility or to address any matters raised in the Supplemental Filing. In his emails, the Respondent does not identify any prejudice he may suffer if the Complainant’s Supplemental Filing be admitted. In addition, the Complainant’s Supplemental Filing and the Respondent’s first two emails were submitted before the Panel’s appointment. The Complainant’s Supplemental Filing is concise and to the point. The Respondent’s emails are even more succinct. It cannot be said, therefore, that the burden imposed on the Panel by the reception of these materials would prejudice the Panel’s obligation to conduct the proceeding with due expedition, having regard to the duty to treat the parties equally and give them a fair opportunity to present their respective cases. In light of these considerations, the Panel will admit the materials into the record of this administrative proceeding. A. Identical or Confusingly Similar The Complainant has proven ownership of at least the registered trademarks for SOLVAY identified in section 4 above. Disregarding the website Top Level Domain element of the disputed domain name as a functional requirement of the domain name system (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11), therefore, the disputed domain name is identical to the Complainant’s trademark. Accordingly, the Complainant has established the first requirement under the Policy. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] 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] (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 consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1. It is plain from the Complaint and the Respondent’s emails that the Complainant has not authorised the Respondent to register or use the disputed domain name. Nor is there any other association or affiliation between the Complainant and the Respondent. The disputed domain name is not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. In addition, there is no evidence that the disputed domain name is being used in connection with any good faith offering of goods or services or other, legitimate noncommercial or fair use. The Panel notes that “Solvay” appears to be an invented term, not an ordinary dictionary or descriptive term. The Panel also notes that the Complainant has been using its trademark for a very long period before the Respondent registered the disputed domain name only very recently. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent says he “bought” the disputed domain name at an open auction for abandoned domain names where “millions” of other names were also offered and so has the lawful right to it. The Respondent also states that he registered the disputed domain name because it is an abbreviation or acronym related to climate change. In the Respondent’s words: “… the lettering of SOLVAY stands for something else as it addresses climate change down south note as each individual letter represents the world we live in today in the United States, it just so happens SOLVAY, is an abbreviation. Since your latest fiasco I had to open two additional domains “.com” / “.net” in reference to the true meaning of my original intentions as you are holding up my future progressions on my initiative. The reason I said in my previous email that I loved the name as the letters were a perfect fit for me to address climate change by drawling [sic] attention to it once I have time to do so as I am extremely busy individual.” First, it should be pointed out the disputed domain name, like all domain names under the ICANN system, is registered subject to, amongst other things, the Policy. See in particular clause 9 of the Registration Agreement. The Policy expressly provides for the cancellation or transfer of a domain name which has been registered in breach of the Policy’s conditions. The fact that the Respondent purchased the disputed domain name at an auction of abandoned domain names, therefore, does not give the Respondent an absolute and unfettered right to the disputed domain name. The Respondent’s rights to the disputed domain name are subject, amongst other things, to the obligations under the Registration Agreement including the Policy. Secondly, the Panel is unable to accept that the term “Solvay” has a meaning or is derived in some way from “climate change down south”. The Respondent has not provided any explanation and /or evidence of what “Solvay” is an abbreviation for that relates to climate change or how that term is derived from something that has the claimed meaning. Moreover, the Respondent has not provided any evidence of use, before the disputed domain name was registered, by any community or otherwise in public of the term “Solvay” having the meaning asserted by the Respondent. As noted above, and so far as the Panel is aware, the term “Solvay” is not an ordinary dictionary word and, in this context, has significance only as the Complainant’s trademark. In these circumstances, the Complainant has established a sufficient prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. The Complainant relies on its very longstanding and widespread use of its trademark to contend that the Respondent must have been aware the disputed domain name was identical to the Complainant’s trademark and did so to take advantage of that. In its Supplemental Filing, the Complainant points out that the Respondent offered to transfer the disputed domain name to the Complainant for USD 13.2 million, far in excess of any reasonable “out of pocket” expenses. This conclusion is reinforced, according to the Complainant, by the fact that no use is being made of the disputed domain name and, according to the Complainant, there is no conceivable use that could be made of the disputed domain name which did not infringe the Complainant’s rights. The Respondent disputes these matters. As noted above, the Respondent contends that he registered the disputed domain name for some climate change-related activity. The Respondent denies registration with intent to sell and says that he only discussed possible purchase by the Complainant in response to requests and pressure from the Complainant. The Panel has reviewed the email chains submitted by the Respondent as evidence supporting his claims. On January 15, 2020, the Center acknowledged receipt of the Amended Complaint from the Complainant by email. The Center’s email was also copied to the Respondent. In reply to that email, on January 19, 2020, the Respondent emailed the Center denying a number of allegations in the Amended Complaint. In the course of that email, the Respondent stated that he had been in discussions with the Registrar, about the Complaint. The Respondent’s email then stated: “…. Also [the Registrar] stated if Solvay is interested in purchasing the so called Solvay.Website name to let [the Registrar] know this and at that point in time you could have them reach me if this ever was the case as such by you wanting to aquire [sic] that name ….” Later that day, the Respondent copied this email to one of the Complainant’s representatives. In the text of the email to the Complainant’s representative, the Respondent invited the Complainant to “feel free to contact [the Respondent] at any time”. The Respondent concluded the email as follows: “…They [the Registrar] told me if you are interested in buying it to contact them and to contact me as well if that is your intentions. Unfortunately I am not looking to be accused of your false accusations. Contact me anytime and I will email you back at anytime to help you in your business etc.” The Complainant replied on January 20, 2020 unsurprisingly asking: “…. We understand that you would be willing to transfer this domain name. If so, can you let us know under which conditions?” Then followed a series of exchanges in which the Respondent stated that pricing depended on the value of the business. The Respondent first pointed out that prices he had observed online ranged in price from USD 20,000 to “well over one million depending on how big the company is etc..” In response to a request for clarification, the Respondent stated that he envisaged a lump sum sale component plus a royalty percentage based on the amount of business being carried out through the website or a (presumably, larger) lump sum alone. The Panel agrees with the Complainant that a fair reading of the email exchanges after the Complaint was filed indicate that the Respondent invited the Complainant to make an offer to buy the disputed domain name. The emails from the Respondent also demonstrate a keen desire to derive benefit from the value of the disputed domain name – for example the proposal for a royalty on sales through the website. If someone is the legitimate holder of a domain name, there is no reason in principle why that person cannot charge a high price reflecting the perceived value of the domain name for its transfer. The position is different here. For the reasons set out in section 5B above, the Panel has found that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent’s demand for a payment in the order of millions of dollars for transfer of the disputed domain name, therefore, is not based on any value the Respondent has developed in the disputed domain name. Rather, as the term “Solvay” is an invented or coined term and not descriptive, the value of the disputed domain name lies in its significance as the Complainant’s trademark. Seeking to take advantage of the trademark significance of the disputed domain name in this way constitutes bad faith under the Policy. In these circumstances, therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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, Warwick A. Rothnie
Sole Panelist
Date: March 6, 2020
Full & Egal Universal Law Academy