The Complainant is Solvay Société Anonyme, Belgium, represented internally.
The Respondent is Registration Private, Domains By Proxy LLC, United States of America (“United States” or “US”) / Jeanne Gregori and Jeannie Gregory, United States.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 2021 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity1 and/or that all domain names are under common control; and/or file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current Complaint. The Complainant filed an amended Complaint on December 17, 2021.
On December 21, 2021, the Center noted that there appears to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.
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 December 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Response was filed with the Center on January 5, 2022.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 17, 2022. 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 BackgroundThe Complainant is a Belgian company which was established in 1863 and which has developed into an international industrial and chemical corporation. It is one of the ten largest chemical players worldwide, employs more than 23,000 people in 64 countries. Its net sales were EUR 8.9 billion in 2020.
The Complainant is the registered owner of numerous trademarks in many countries comprising the term “solvay” either alone or with other terms – see for example SOLVAY, European Union word mark registered on May 30, 2000 under No. 000067801; SOLVAY, European Union word mark registered on August 13, 2013 under No. 011664091; SOLVAY, international word mark registered on February 28, 2013 under No. 1171614; (these trademarks are referred to in this decision collectively as the “SOLVAY Trademark”). The term “solvay” was originally the family name of Ernest Solvay, the Complainant’s founder.
The Disputed Domain Names
The relevant webpage states (in the case of
“Solvay Safe™ is an independent, technology-based start-up which is beta testing its proof of concept for its software application development. If you are interested in joining the beta testing and are an authority with responsibility for the annual Trafficking in Persons reporting under the Trafficking Victims Protection Act (TVPA)”.
The relevant webpage states (in the case of
“Project Solvay® is an independent start-up international initiative with a mission to prevent human trafficking mainly through educational services, namely, training services, and development, production and post-production services in the field of documentary films, and development and dissemination of printed educational materials of others, all in the field of human rights and rule of law issues relating to preventing human trafficking and distribution of course and educational materials”.
All the webpages state “Please contact our Executive Director, Ms. Jeanne Gregori, Esq …..“ followed by the description “Jeannie Gregori, Esq2 . Managing Director”. A location in California is specified.
In March 2020, the Complainant became aware of trademark applications for the terms “SOLVAY SAFE” and “PROJECT SOLVAY” had been filed in the United States in the name of Jeanne M. Gregori in respect of services in class 42. These were filed after the dates the Disputed Domain Names were registered. The US local agent of the Complainant sent a letter via email in order to ask the Respondent to voluntary withdraw both trademark applications and immediately cease all use of both trademarks and all related domain names. The Respondent did not react to the email. The Complainant filed opposition and cancellation action against these trademark applications. The Respondent failed to take any substantive action and as a result the trademark applications were cancelled.
On April 20, 2021, the Complainant contacted the Respondent via email requesting transfer of the Disputed Domain Name
On December 15, 2021, the Respondent sent an email to the Complainant mentioning that she knew that the Complainant had filed the present Complaint which was “illicit” and that, based on this, the going price to buy the 4 domain names was now USD 500,000 (five hundred thousand dollars). She also mentioned in this email that the asked price was going up daily. The email also said that “I’ve already started the criminal process on actions taken”.
5. Parties’ Contentions A. ComplainantThe Complainant’s case can be summarised as follows.
a) The Disputed Domain Names are each similar to the SOLVAY trademark
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Names. They each resolve to a single webpage which does not amount to bona fide use.
c) The Respondent has registered and used the Disputed Domain Names in bad faith and cites various previous UDRP decisions which it says are relevant to the applicable principles. The Complainant says the Disputed Domain Names have never been put to substantive use and relies in particular upon the email correspondence described above as showing the Respondent must have registered them with the Complainant in mind.
B. RespondentThe Respondent has filed a Response which is in large measure rambling and unstructured and which does not explain clearly or fully the basis for the Respondent’s arguments. Given the difficult nature of this case (see discussion below) the Panel will set out the substance of the Response verbatim:
“Dear WIPO,
Your email is the first I have learned of the purported stated, Case No. D2021- 4171 originated by Complainant [individual’s name omitted] et al (‘Complainant’ or ‘Them’) named and included in your email.
It is ridiculous for Complainant to claim they have exclusive rights to this particular combination of letters across the internet, or even claim exclusive right to these letters used as a name.
This name is used commonly, in multiple places on the internet having nothing to do with this organization. The short list included easily shows 28 different entities, people, places and businesses having this name, and which is not even an exhaustive search of the internet for this letter combination, shows the commonality of the name, ranging across a vast variety of sectors and places, from people, places, cities, MLS property listings, street/avenue names, sports, pharmaceutical, libraries, police, fire department, schools, brew pub, hospice, entertainment/tourism and including different regions in the world.
(And it is even more ridiculous, with a short search of the bad press the Solvay Chemical company generates, for them to assert the worry is that the use of the same set of letters, in the name of a humanitarian non-profit would somehow stain the name.)
Once they legislate and stop the use of the letter combination Solvay from all of these web listings, including the 28 listed below, which is not an exhaustive list as others using this same letter combination on the web exist, THEN they can come back and we can negotiate based on them having the sole right to this letter combination anywhere on the internet.
This claim is abusive and baseless. They Do Not Own The Rights to this letter combination, throughout the internet.
They do not, the town does not, the library does not, the brew pub does not, the school district does not, the pharmaceutical company does not, the high school basketball team does not, the village does not, the city in New York does not, the hotel does not, the Italian beach does not, the region in Italy does not, the hospice does not, the adhesives company does not, the US Inc EPA plant in Butte Montana does not; the website for sale does not, and, we stipulate, our humanitarian non-profit (stalled in development by COVID) and the technology does not.
While the humanitarian non-profit, stalled by COVID, includes collaborative workings with governments and diplomatic channels, such as between the U.S. and Egypt, and involving Egyptian Amb./Chair National Coordinating Committee (Illegal Migration/Human Trafficking) and U.S. Department of State, Foreign Affairs Ministry in Egypt; and relations among United Nations International Organization on Migration (UN IOM) and the American University in Cairo and select private industry international decision makers of global impact.
Not only have I not received proper notice, I do not agree to, or accept any purported jurisdiction by making this Response on this co called filing or case; based solely upon harassing and unilateral actions taken by Complainant against my property that apparently Complainant wants for whatever reason. While before, they used to their benefit, the turbulent times in the world caused by COVID, this is yet another attempt by Complainant to use COVID to their advantage, and to assert influence to a system that is meant to protect a person’s property rights, not to illicitly steal property rights.
Indeed, Complainant’s behavior escalated and this so called ‘complaint’ was filed immediately after my rejection of Ms [name redacted] 205-day late ludicrous and derisory offer to purchase my domains for a price which was not even close to the going rate. While I did thank her in my response for the laugh to cheer up an otherwise dreary season.
While Complainant has been told that I am accepting funding for Project Solvay and they are welcome to offer funding, I am also in collaborative negotiations involving my property rights, such that if Complainant’s actions frustrate my pending deal negotiations, I will hold Complainant liable for all damages without limitation.
I must say again this is an abusive and baseless claim by Complainant, clearly showing me their undue influence on a system developed purportedly to protect property rights, not to be used unilaterally for manipulative tactical benefit without due process to steal property rights surreptitiously, which is criminal in the United States.
Once Complainant legislates and stops the use of the letter combination Solvay from all of these web listings, including the 28 below stated herein, THEN they can come back and we can negotiate based on them having the sole right to this letter combination anywhere on the internet.”
The Response goes on to set out what is said to be a non-exclusive list of other persons using the name “solvay” (see further below).
6. Discussion and FindingsPreliminary Matters
Respondent Identity
The Panel notes this is a case where one Respondent (Registration Private, Domains By Proxy LLC) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Jeanne Gregori or Jeannie Gregory and references to the Respondent are to that person. It is clear from the Response that Jeanne Gregori and Jeannie Gregory are the same person and hence the Complainant’s submissions on this issue and the consolidation of several domain names into one complaint do not need separate analysis.
Alleged Lack of Jurisdiction
The Respondent is mistaken in asserting that she is not subject to the jurisdiction conferred by the Policy. The relevant agreements she entered into when registering each of the Disputed Domain Names included a contractual agreement to submit to this jurisdiction in the event a complaint under the Policy was filed. See for example clause 6, “Dispute Resolution Policy” of the registration agreement at annex 2 to the Complaint. The Panel concludes that it has jurisdiction to determine this complaint.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant is the owner of the SOLVAY trademark.
Each Disputed Domain Name includes the term SOLVAY in its entirety.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is recognizable within the disputed domain name, the disputed domain name is considered to be confusingly similar to the mark (WIPO Overview 3.0 at section 1.7).
It is also established that the addition of other terms (here “project” or “safe””) to a disputed domain name would not prevent a finding of confusing similarity between the domain name and the mark (WIPO Overview 3.0 at section 1.8).
It is well established that the Top-Level Domain (“TLD”), in this case “.com” or “.org”, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0 at section 1.11.
Accordingly, the Panel finds that each Disputed Domain Name is similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate rights or legitimate interests in a domain name:
i. before any notice to you of the dispute, your 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. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate non-commercial 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.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the SOLVAY trademark. The Complainant has prior rights in the SOLVAY trademark which precede the Respondent’s registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Response asserts that the Respondent is engaged in a “humanitarian non profit activity” which has been “stalled by covid”. Each of the webpages to which the Disputed Domain Names resolve (see above) appear to refer to some form of activity directed at combating human trafficking. However, the Respondent (who is a qualified lawyer) has not taken any steps to explain to the Panel what this is all about and no evidence has been provided. It does not appear that any of the Disputed Domain Names has ever been used beyond resolving to the webpages described above and there is no evidence the Respondent has sought to develop whatever the supposed project was. Given that two of the Disputed Domain Names were registered in 2017 the Panel is not persuaded that the covid pandemic provides an adequate explanation of why nothing has been done. The Response says: “While the humanitarian non-profit, stalled by COVID, includes collaborative workings with governments and diplomatic channels, such as between the U.S. and Egypt, and involving Egyptian Amb./Chair National Coordinating Committee (Illegal Migration/Human Trafficking) and U.S. Department of State, Foreign Affairs Ministry in Egypt; and relations among United Nations International Organization on Migration (UN IOM) and the American University in Cairo and select private industry international decision makers of global impact”. The Panel really does not know what this is talking about but if the Respondent had been undertaking particular activity with any of these organisations the Panel would have expected to see specific evidence detailing the same.
Overall the Panel concludes that the conclusory statements made by the Respondent, without supporting evidence, do not support a finding that any of the factors under paragraph 4(c) apply and are insufficient to amount to evidence of rights or a legitimate interest.
Accordingly the Panel finds the Respondent has no rights nor any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel has not found resolving this issue straightforward given the circumstances of this case. There are factors pointing both ways. The critical question is what was in the Respondent’s mind when she registered each of the Disputed Domain Names. Although the Complainant is clearly a very large and successful chemical company operating on a world-wide basis there is no evidence that it is a household name with any reputation outside the chemical industry, and no evidence that the Respondent would necessarily have known of it beforehand. If the Respondent’s motives were entirely opportunistic and directed at the Complainant, then combining the term “solvay” with the word “safe” or “project” does not seem to the Panel to be the easiest or most obvious way of forming a domain name likely to be of interest or value to the Complainant. It also seems odd if this was the Respondent’s motive that the Disputed Domain Names have been linked to webpages which describe some sort of idea about a project directed at preventing human trafficking – again hardly an obvious way to target the Complainant. There is also no evidence that the Disputed Domain Names have ever been used in any way that has anything to do with the Complainant - whilst the correspondence that has taken place does not paint a particularly attractive picture of the Respondent’s motives it is important to note that correspondence was initiated by the Complainant.
Against this the Respondent has failed to give any explanation at all as to how or why she came to choose the term “solvay” as the operative part of each of the Disputed Domain Names. It is not an ordinary English word and it does not, so far as the Panel can see, provide an obvious abbreviation for any terms which might be relevant to some sort of project directed at combating human trafficking. The Panel thinks the issue as to how and why the Respondent chose “solvay” clearly calls for an explanation from the Respondent.
All the Respondent has done is to say the Complainant does not have a monopoly on the term “solvay” and lists what she says are 28 examples of other uses. If this list is examined it is apparent that it represents significantly less than 28 examples – several them relate to the Complainant or its subsidiaries. Several more relate to or derive from a town of that name in New York State (and include the fire department of the town, the police service of the town and so on). There are however clearly several examples of other businesses using the name – for example a Solvay business school in Brussels, a London based brewery which says it is “Belgian born”, a hotel in Belgium and so on. The Complainant’s name derives from the surname of its founder. It seems likely to the Panel that these other businesses (which seem predominantly to have a Belgian connection) probably also derive their names in a similar manner from a person of that name. The evidence does not establish that the name is common or well known. On the available evidence the Complainant’s size and reputation is many orders of magnitude bigger that any of the other businesses that have been identified. Nothing in this evidence supports a finding that the Respondent chose to include “solvay” as a term in each Disputed Domain Name because it was common or well known.
The Panel finds it difficult assess the significance of the email correspondence that has occurred. As mentioned above the correspondence was initiated by the Complainant. It seems to have resulted in correspondence which is angry or annoyed and which is written in somewhat sarcastic tones. The Respondent does however ask for significant sums of money - USD 40,000 for each Disputed Domain Name and then, once the Complaint was filed USD 500,000 for all four Disputed Domain Names
A further factor is that (absent any credible explanation from the Respondent - and none has been offered) the Panel finds it difficult to believe the Respondent did not become aware of the Complainant once she decided to register the Disputed Domain Names. As discussed above the Panel does not think the evidence means the Respondent would necessarily have been aware of the Complainant beforehand but if the Respondent independently coined the term “solvay” then the most cursory of Internet searches at that time would have revealed the existence of a large multinational chemical company of that name. What did the Respondent do at the time - the Panel does not know because the Respondent has not bothered to tell the Panel. Again the Panel thinks this calls for an explanation from the Respondent.
It also seems significant to the Panel that the Respondent was not, when challenged, prepared to defend her application for trademarks for the term “solvaysafe” and “projectsolvay”. The Complainant clearly relied upon this evidence and the Respondent has failed to explain why she allowed her trademark applications to lapse.
In the present circumstances the Panel cannot clearly determine which, if any, of the factors set out above under paragraph 4(b) of the Policy may apply. However, the Panel notes that in any event this list is non exhaustive and takes the view that the acquisition of the Disputed Domain Name with knowledge of the Complainant’s trademark can depending on the case circumstances create a presumption of bad faith. In the present case the Panel concludes, not without some hesitation, that the Complainant has presented a sufficient case to raise an inference that it is more likely than not that this was the case. It may be that had the Respondent provided a more detailed and coherent explanation of what she had done, and why, with appropriate supporting evidence, she would have rebutted that inference. However she has not done so. She is a practicing lawyer. She may not be familiar with the Policy and its operations but she ought to have realised that it was incumbent on her to provide a clear account of her actions and she has not done so. If she was in any doubt as to what was required she should have realised that she needed appropriate specialist advice. Her failure to provide a proper explanation combined with the facts that (i) the Disputed Domain Names have never been put to any substantive use and (ii) her demands for payment for the Disputed Domain Names culminating in a figure of USD 500,000; lead the Panel to conclude it is more likely than not that she registered and used each of the Disputed Domain Names in bad faith.
Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names
Nick J. Gardner
Sole Panelist
Date: January 31, 2022
1 Note that it became clear from the Response that there was no dispute about this issue so the Panel does not propose to address it in any detail.
2 The Panel understands the term “Esq” in this context to be a United States usage which indicates that the person concerned is a practicing lawyer who has passed state bar exams.