The Complainant is Rhodia Operations SAS, France, internally represented.
The Respondent is Name Redacted1 . 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2020. On October 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 12, 2020 to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 12, 2020. The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. On November 23, 2020, the Center received an email communication from [Name Redacted]. On November 27, 2020, the Center received another email communication from [Name Redacted] regarding identification of the Respondent, to which it replied. No further communications from [Name Redacted] were received by the Center and no substantive Response was filed. On December 15, 2020, the Center informed the Parties that it would proceed to appoint the Panel. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on January 9, 2021. 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 Rhodia Operations SAS, which is a company member of Solvay Group, a global leader in chemicals that was founded in 1863 and is now listed on the European Stock Exchange (Euronext). The Complainant has its registered offices in Aubervilliers and is registered at the Commercial Registry since December 19, 2000. Entities of the group to which belongs the Complainant own numerous trademark registrations, amongst which: - French word trademark RHODIA, No. 548371 registered on February 28, 1989 in classes 03, 09, 10, 11, 17, 22, 23, 24, 25, 26, 27 and 34; - International word trademark RHODIA, No. 186890 registered on August 12, 1995 in classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34; - International word trademark RHODIA, No. 661187 registered on March 8, 1996 in classes 01, 02, 03, 04, 05, 07, 09, 10, 22, 23, 24, 25, 27, 29, 30, 31, 34, 37, 40 and 42; - International word trademark RHODIA, No. 170326 registered on July 13, 1993 in classes 23 and 24. Entities of the group to which belongs the Complainant also own several domain names including the term “Rhodia”, amongst which: - The Complainant itself owns the following domain names including the term “Rhodia”: - The disputed domain name In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below. The Complainant first argues that the disputed domain name is identical or confusingly similar to the RHODIA trademark, since it incorporates the RHODIA mark in its entirety, which is clearly recognizable, and simply adds the descriptive term “operations”. The Complainant also underlines that the disputed domain name is identical to the trade and commercial name of the Complainant, which has been registered on December 19, 2000. The Complainant then considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not commonly known by the disputed domain name. The Complainant adds that the Respondent has been granted no license nor any permission from the Complainant to use the RHODIA trademark, so that no bona fide or legitimate use of the disputed domain name could reasonably be claimed. The Complainant further states that the disputed domain name is not linked to any active website. The Complainant finally asserts that the disputed domain name was registered and is used in bad faith, since the Respondent could not reasonably have been unaware of the Complainant and the RHODIA trademark at the time of the registration, and that by registering the disputed domain name, the Respondent prevented the Complainant from reflecting the RHODIA trademark in a corresponding name. The Complainant also reminds that the disputed domain name does not resolve to an active website and that the Respondent did not answer to the Complainant’s emails, claiming that it is impossible to imagine any plausible legitimate use of the disputed domain name, and that it cannot even be excluded that the Respondent will use the disputed domain name for fraudulent activity. For all these reasons, it is requested that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions, apart from the emails mentioned in the Procedural History above, stating that he had been victim of an identity theft following the loss of his ID and that he did not himself register the disputed domain name. 6. Discussion and Findings A. General remarks Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements: (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 disputed domain name has been registered and is being used in bad faith. The Panel will use the word “Respondent” to refer to the person who actually registered the disputed domain name, as it seems possible that a false identity has been used. B. Identical or Confusingly Similar According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. First of all, the Panel wishes to remind that regarding the first element that has to be proved by the Complainant, prior UDRP panels have considered that a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company is considered to have rights in this trademark under the Policy (see section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Complainant is an affiliate of the RHODIA trademark’s owner, whose rights have been demonstrated. Consequently, the Panel deems that the Complainant should be considered to have rights in the RHODIA trademark. Then, the Panel notices that the disputed domain name is composed of (i) the RHODIA trademark, to which has been added the term “operations”, with a hyphen between these terms, and (ii) the generic Top-Level Domain (“gTLD”) “.com”. The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. The Panel also wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview 3.0). Here, the Panel notes that the disputed domain name includes the RHODIA trademark in its entirety. Moreover, the Panel concurs with the opinion of several prior UDRP panels which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or meaningless, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0). Regarding the disputed domain name, the Panel finds that the addition of the generic term “operations” to the RHODIA trademark does not prevent a finding of confusing similarity. Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, 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 prima facie 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). According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not commonly known by the disputed domain name and has not been licensed nor permitted in any way by the Complainant to use the RHODIA trademark. Moreover, the disputed domain name does not resolve to any active page, which does not represent any bona fide offering of goods or services. The Panel also notes that the Respondent did not reply to the Complainant’s contentions. In the circumstances, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the 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 the respondent’s website or location. First of all, the Panel notes that the disputed domain name was registered after the registration of numerous RHODIA trademarks. Moreover, the Panel finds that the Respondent added the term “operations” to the RHODIA trademark when registering the disputed domain name, resulting in the disputed domain name being composed of the exact trade and commercial name of the Complainant. Such circumstances suggest that it is unlikely that the Respondent did not know the Complainant, the RHODIA trademark and the Complainant’s activities when registering the disputed domain name. Furthermore, the Panel reminds that the fact that the disputed domain name is not resolving to any active webpage does not prevent a finding of registration and use in bad faith, and that, on the contrary and as underlined by the Complainant, passive holding can evidence bad faith registration and use. Consequently, the Panel considers that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii). E. Redaction It appears likely that, in registering the disputed domain name, the actual registrant of the disputed domain name used the name and contact information of a third party as mentioned in the Procedural History above. In the absence of certainty as to the identity of the actual registrant, this third person has been named as the Respondent in these proceedings. Nevertheless, the inclusion of the name of this person in published copies of the decision or information about it may unfairly suggest that this individual registered the disputed domain name in bad faith. The Panel will therefore order that this name be redacted from published copies of the decision or information about it, in accordance with the previous decisions in HDR Global Trading Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted,WIPO Case No. DCC2019-0006, Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788 and Accenture Global Services Limited v. Registration Private, Domains By Proxy, LLC / Name Redacted,WIPO Case No. D2019-1601. 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 Christiane Féral-Schuhl 1 On the basis of the case file presented to the Panel, it seems that Respondent is not the true holder and registrant of the Domain Name. In light of a potential identity theft, the Panel, therefore, has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Domain Name, which includes the name of the registrant according to the Registrar’s WhoIs database. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520.
-
-
-
-
-
-
-
Sole Panelist
Date: January 22, 2021
Full & Egal Universal Law Academy