The Complainant is SOLVAY Société Anonyme, Belgium, internally represented.
The Respondent is Angel Perez Hernandez, Konibit Mexico Sa de CV, Mexico. 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 22, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2021, 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 29, 2021 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 amendment to the Complaint on February 1, 2021. 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 February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2021. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 11, 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 a Belgian chemical company founded in 1863 that operates under the trademark SOLVAY. The trademark SOLVAY was registered by the Complainant in several regions of the world, including the European Trademark Registrations numbers 000067801 and 011664091, obtained respectively on May 30, 2000 and on August 13, 2013; and the International Trademark Registration number 1171614, obtained on February 28, 2013. The Complainant is also the holder of the domain names The Respondent registered the disputed domain name The Panel accessed the disputed domain name on March 23, 2021, at which time the disputed domain name was pointing to a webpage reproducing the Complainant’s trademark and logo SOLVAY, together with the Mexican flag, as well as informing directions and contact information in Mexico. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of the SOLVAY trademark, which is registered in numerous countries on different continents. The mark is used at least since 2000. The disputed domain name incorporates the Complainant’s SOLVAY mark in its entirety and simply adds the country code of Mexico i.e. “mx”. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. In this case, the distinctive SOLVAY mark is clearly recognizable within the disputed domain name. Also, it is well established that the addition of generic Top-Level Domains (“gTLDs”) can be disregarded when comparing the similarities between a domain name and a trademark. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain name in order to shift the burden of production to the Respondent. A first indication that the Respondent has no rights or legitimate interest in the disputed domain name can be found in the fact that the Respondent is not commonly known by the disputed domain name. Furthermore, the Respondent has not acquired trademark or service mark rights and the Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. Finally, the disputed domain name refers to an active web page which intends to present the company as being part of the company group of the Complainant. The pictures, devices and tagline used on the contested webpage are the pictures, devices and tagline owned by the Complainant. This does not constitute a fair or good faith use of the disputed domain name. In view of the Complainant’s distinctive and well-known SOLVAY mark, it is inconceivable that any good faith use would be made by the Respondent. - The disputed domain name was registered and is being used in bad faith. At the time the Respondent registered the disputed domain name, the Respondent must have known the Complainant and its trademarks: the Complainant and its trademarks are well-known all over the world; a simple search on the Internet would have revealed the Complainant’s presence, reputation and trademarks; and previous panels have already acknowledged the well-known and distinctive character of the Complainant’s SOLVAY mark. Also, by registering the disputed domain name, the Respondent prevents the Complainant from reflecting its mark in a corresponding domain name. The effect of the registration is to affect the business of the Complainant by attracting Internet users looking for information about the Complainant or its marks and creating difficulties for Internet users. The disputed domain name currently refers to an active webpage which is using trademark, devices and tagline of the Complainant. Furthermore, the disputed domain name constitutes an imitation of the domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a 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; 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 Annex 5 to the Complaint shows trademark registrations for SOLVAY obtained by the Complainant as early as in 2000. The disputed domain name differs from the Complainants’ trademark SOLVAY by the mere addition of the suffix “mx” (common acronym for Mexico), as well as the gTLD “.com”. Previous UDRP decisions have found that the mere addition of descriptive/geographical terms to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc.,WIPO Case No. D2000-0927). It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; 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 at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name is linked to a webpage reproducing the Complainant’s trademark and logo, suggesting it is an official website for the Complainant’s operation in Mexico. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in 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 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 documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent in 2021, the trademark SOLVAY was already directly connected to the Complainant’s chemical products for decades. Besides the gTLD “.com”, the disputed domain name is comprised of the Complainant’s trademark SOLVAY and the common acronym for Mexico (“mx”). The Respondent (whose informed address is in Mexico) has not provided any justification for the registration of the disputed domain name containing a famous third-party trademark and a reference to such country. Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “solvaymx” could be a mere coincidence. Furthermore, the contents published at the Respondent’s website eliminate any doubts about the use of the disputed domain name in bad faith, presenting reproductions of the Complainant’s mark and logo, naturally suggesting it is its official website for Mexico. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy. 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 Rodrigo Azevedo
Sole Panelist
Date: March 26, 2021
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