Complainant is Solvay SA, Belgium, internally represented.
Respondent is Des Jo, United States of America. 2. The Domain Name and Registrar
The disputed domain name is The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 29, 2021. The Center appointed Gerardo Saavedra as the sole panelist in this matter on August 11, 2021. This Panel finds that it was properly constituted. This 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 Complainant, founded in 1863 and with registered offices at Brussels, Belgium, is engaged in the chemical sector. Complainant has rights over the SOLVAY mark for which it holds International Registration No. 1171614, registered on February 28, 2013, and European Union Registration No. 011664091, registered on August 13, 2013, with the European Union Intellectual Property Office (EUIPO), both in 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. Complainant also has rights over the S design mark for which it holds International Registration No. 1179250, registered on March 1, 2013, and European Union Registration No. 011664471, registered on April 6, 2016, with the EUIPO, both in 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 42.1 The disputed domain name was registered on May 30, 2021. Before the Complaint was filed, the disputed domain name was used as an email address. At the time the Complaint was filed the disputed domain name did not resolve to an active website since it returned an error message showing, among others, “This site can’t be reached”. 5. Parties’ Contentions A. Complainant Complainant’s assertions may be summarized as follows. Complainant is a global leader in chemicals that employs around 23,000 people in 64 countries and that in 2020 had net sales of EUR 8.9 billion. Complainant’s marks are used at least since 2013 and are well-known all over the world due to Complainant’s international presence and to its marketing investments. Complainant’s marks are used substantially, including on social media, and are ranked now in the top 10 most powerful and valuable Belgian brands. The disputed domain name incorporates Complainant’s SOLVAY mark in its entirety and simply adds the letters “al” followed by “-be”. The SOLVAY mark is clearly recognizable within the disputed domain name and thus the latter is confusingly similar to such mark in which Complainant has rights. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent has not acquired trademark or service mark rights and Respondent’s use and registration of the disputed domain name was not authorized by Complainant. In the absence of any license or permission from Complainant to use its widely-known mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. The disputed domain name refers to an inactive website. Complainant has been contacted by two external parties who reported having received emails from an email address linked to the disputed domain name. The SOLVAY and the S and design marks were also used in those emails, indicating a clear phishing or passing off attempt. Such use does not constitute a legitimate or fair use under the Policy. Respondent appears to intend to mislead the addressees of its emails and to let them believe that they are associated with Complainant. The use of the disputed domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on Respondent. Respondent registered and uses the disputed domain name in bad faith. At the time Respondent registered the disputed domain name, Respondent knew Complainant and its marks. The disputed domain name includes Complainant’s SOLVAY mark. Respondent could thus not reasonably ignore Complainant’s marks at the time of registration of the disputed domain name. Respondent creates potential confusion by targeting Complainant’s marks through the registration and use of the disputed domain name. The disputed domain name has been used in bad faith by Respondent since it is used fraudulently to contact people by email using Complainant’s SOLVAY mark and S and design mark. Respondent’s emails are clearly confusingly similar with Complainant’s official emails as the fraudulent email is using Complainant’s corporate signature. The contact details are however not Complainant’s employees’ details. These facts constitute a phishing attempt. After having responded to such email, individuals contacted Complainant, which shows there was confusion and they thought they were dealing with Complainant. Therefore, Respondent clearly uses the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with Complainant’s mark. Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to “decide a 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”. The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview 3.0). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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 It is undisputed that Complainant has rights over the SOLVAY mark. Since the addition of a generic Top-Level Domain (i.e. “.com”) in a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name identically reflects the SOLVAY mark, albeit followed by the characters “al-be”. It is clear to this Panel that the SOLVAY mark is recognizable in the disputed domain name and that the addition of such characters in the disputed domain name does not avoid its confusing similarity with said mark (see sections 1.7 and 1.8 of the WIPO Overview 3.0). Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name, and that it has not authorized Respondent to use its marks.2 Although there appears to be no active website associated with the disputed domain name, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). Complainant asserts that Respondent is using the disputed domain name as an email address for sending fraudulent emails. The evidence in the file shows that such email communications convey the impression that the sender is associated with Complainant. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.3 This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent. Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut. It is clear to this Panel that Respondent should have been aware of the existence of Complainant and its marks at the time it obtained the registration of the disputed domain name. Although there is no active website associated with the disputed domain name, the concept of a domain name “being used in bad faith” is not limited to a domain name with an active website on the Internet. The fact that the disputed domain name incorporates Complainant’s SOLVAY mark (albeit followed by irrelevant characters), conveying the impression that it is somewhat related to Complainant, coupled with the fact that Respondent has sought to impersonate Complainant through the email communications sent from an email address associated with the disputed domain name, which email communications reproduced the SOLVAY mark and the S and design mark, lead this Panel to conclude that Respondent registered and used the disputed domain name in bad faith.4 In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name. In sum, the overall evidence indicates that Respondent’s choice of the disputed domain name was deliberate for its substantial similarity with Complainant’s SOLVAY mark, and with the intention to impersonate Complainant and potentially disrupt Complainant’s business or deceive third parties, which denotes bad faith. In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name Gerardo Saavedra 1 Although Complainant provided a list of marks registered in several countries, Complainant did not supply any evidence of such mark registrations. Thus, in this case, on August 19, 2021, this Panel verified the mark registrations referred to above through “https://www.tmdn.org/tmview/#/tmview”. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 2 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”. 3 See Syngenta Participations AG v. Guillaume Texier, Gobain ltd,WIPO Case No. D2017-1147: “A registrant cannot acquire rights or legitimate interests by the use of a domain name as an email address from which to send phishing emails”. 4 See sections 3.3 and 3.4 of the WIPO Overview 3.0. See Accenture Global Services Limited v. Patel Holdings,WIPO Case No. D2016-0367: “[A]lthough the disputed domain name does not resolve to an active website, the Panel accepts the Complainant’s allegation and proof that the Respondent is making an illegitimate use of the disputed domain name through an email address associated with the same”. See also Yardi Systems, Inc. v. Abm Black,WIPO Case No. D2019-0057: “Respondent is not using the disputed domain name to resolve to a web site, but rather is using it for spear phishing, employing the disputed domain name in an email address […] This is classic bad faith registration and use”.
Sole Panelist
Date: August 25, 2021
Full & Egal Universal Law Academy