WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Solvay S.A. v. IMS Marketing Services

Case No. D2000-0307

 

1. The Parties

The Complainant is Solvay S.A. a Belgian registered company of Rue de Ransbeek 310, 120 Brussels, Belgium. The Respondent is IMS Marketing Services of Ambachtslaan 144, NL-5506 AK Veldhoven, The Netherlands. The Complainant is represented by Mr. Eugene Dufrasne, head of the complainantís intellectual property department.

 

2. The Domain Name and Registrar

The domain name the subject of the complaint is "solvay.net". The Registrar of the domain name is Network Solutions Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

 

3. Procedural Issue

The complaint was filed with the WIPO Arbitration and Mediation Center on 18 April 2000 and assigned the case number D2000-0307.

On 25 April the Complainant was notified of a deficiency in its complaint in that: the complaint did not specify a method of communication for electronic-only case-related communications as required by the Rules, (paragraph 3(b)(iii)), the complaint does not include a submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction (paragraph 3(b)(viii)) and the complaint had not been signed by the Complainant or his authorised representative as required by the Rules (paragraph 3(b)(xiv)). The deficiency in the complaint was corrected by the Complainant by notice dated 27 April 2000. In the Panelís view the Complainant has in amending the complaint complied with the formal requirements set out in Rule 3.

Notification of the complaint and commencement of the administrative proceedings was given to the Respondent by notice dated 4 May 2000. The notification of complaint and commencement of administrative proceeding, corrective complaint and complaint deficiency notification were sent by email to the Respondent at the three email addresses given in the complaint. The hard copy of the document was also transmitted by courier and the panel has seen the courier receipt. The Panel is satisfied that Rule 2(a) has been complied with and that Notice of the complaint has been given to the Respondent in accordance with the Rules.

It appears that no response was received by the expiry of the twenty day deadline on 23 May. Notification of the Respondentís default was given on 25 May 2000 by fax sent to the Respondent on fax number 314 0255 6425, by email at the four addresses given in the complaint, by courier and by post. The Panel has seen a copy of the courier acknowledgement and postal receipt. The Panel is therefore satisfied that the notification of the Respondentís default was effectively given under the Rules.

In accordance with the Rules an Administrative Panel was appointed consisting of a single panelist Mr. Clive Duncan Thorne. The Panelist has submitted a statement of acceptance and declaration of impartiality and independence. The date scheduled for the Panelís decision is 19 June 2000. The Panel is unaware of any further submissions having been served by either the Respondent of the Complainant.

 

4. Factual Background

The complainant is a Belgian Societe Anonym trading under the name "SOLVAY". It has numerous registrations of the trade mark "Solvay" throughout the world. The Panel has seen annexed to the complaint "Annex C" a list of the registrations of the trade mark in almost 100 countries in a number of classifications. Copies of some of these trade mark registrations have also been annexed to the complaint. The registrations from the list exhibited as "Annex C" appear to have been filed upon various dates in different jurisdictions dating back at least from 1972. The Panel is therefore satisfied that the Complainant is well known throughout the world and has acquired a trading reputation under its corporate name SOLVAY and as a result of trading in numerous countries of the world using the trade mark "Solvay".

The history of the present dispute is as follows. On 22 December 1999 the Respondent reserved the domain name "solvay.net". On 24 January 2000 the Complainant received an email from the Respondent offering to sell the domain name "solvay.net" to the Complainant. The email which is annexed D1 to the complaint states as follows:-

"In the past, we have bought some domains, including www.solvay.net. Because Solvay needs this name for online sales and exclusivity (sic) we want to sell this name at a reasonable price. You can give us an offer (reasonable) and you are owner of the domain. We do not want to go to court and so we accept a normal price".

On 3 February 2000 the Complainant collected certain information regarding the Respondent and attempted to access "www.solvay.net" and in so doing reached the web site of IMS Marketing Services, the owner of the domain name and present Respondent. The Complainant noted on this occasion that the Respondent was offering numerous domain names on which some of them corresponded to well known trade marks like "RAYBAN", "CHRISTIANDIOR" and "POLAROID".

Evidence came to the Complainant that on 21 February a private individual, a Mr. Pierre Drijvers had offered to buy the domain name from the Respondent. The same day the Respondent responded to Mr. Drijvers that the name was still for sale for a price of 6,500 Euro. The Complainant has drawn the Panelís attention to the fact that the Respondent did not express any concern as to whether or not he had a legitimate interest in the buyer to acquire the domain name.

On 23 February 2000 the Complainant sent a registered letter and email "Annex D5" requesting transfer of the domain name to the Complainant. The Respondent "Annex D6" responded the same day and indicated that its:-

"Our goal with the domain www.solvay.net is to build a web site with the theme Sunny Vacation Experiences (sic) (-----). We are always prepared to sell a domain at a certain price if we can make enough profit."

 

5. Parties Contentions

The Respondent, who has the burden of proof in the administrative proceedings submits:-

(i) The domain name "solvay.net" is identical to trade mark registrations owned by the Complainant and corresponds to the corporate name of the Complainant.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name "solvay.net".

(iii) The domain name "solvay.net" has been registered and used in bad faith.

In the absence of a response from the Respondent there are of course no submissions to counter the Complainantís submissions. The Panel therefore has no alternative but to determine the case on the basis of the Complainantís submissions only and to determine whether the Complainant has established its complaint.

(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Panel accepts that the Complainant trades as Solvay S.A. and that it has numerous trade mark registrations for "Solvay". The Panel therefore finds that the domain name "solvay.net" is identical to the trade mark "Solvay".

(ii) The Respondent has no rights or legitimate interest in respect of the domain name.

In support of this submission the Complainant asserts that the Respondent has no corporate name, no company and no products nor any kind of services using the name "SOLVAY". It is true that no evidence of use of the domain name "solvay.net" has been adduced by the Respondent. It should be noted that the Respondentís email of 24 January 2000 (Annex D1) states that "Solvay needs domain name for online sales and exclusivity". The Panel regards this as an admission that the Respondent has no rights nor legitimate interests in respect of the domain name. The Panel also accepts that as can be seen from "Annex C" that the Complainant has Benelux registrations for the trade mark "SOLVAY". The Panel takes the view that the Respondent has imputed knowledge of the existence of these trade mark rights. The Panel therefore finds that the Complainant has proved that the Respondent has no rights or legitimate interest in respect of the domain name.

(iii) The domain name has been registered and used in bad faith.

The Complainant submits that bad faith on the part of the Respondent is proved by the fact that the Respondent has registered the domain name with the primary purpose of selling it to the Complainant and in particular relies upon the following facts:-

(a) The fact that the Respondent has spontaneously offered the name to the Complainant for purchase.

(b) The short period of time between the domain name registration and the offer to the Complainant.

(c) The fact that the states price of 6,500 Euro would exceed normal out of pocket expenses.

(d) The fact that the Respondent has at no time contested the Complainantís trade marks and despite the cease and desist letter reiterated its offer of sale.

(e) The fact that the domain name was offered for sale to the world at large.

In accordance with paragraph 4(b)(i) of the Rules the Panel finds that this evidence shows 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 trade mark or service mark ------ for valuable consideration in excess of documented out of pocket costs". The Panel therefore finds that the Complainant has succeeded in proving that the domain name has been registered and is being used in bad faith.

It follows and the Panel finds that the Complainant has proved its three submissions in accordance with paragraph 4(a) of the Rules and that accordingly the Complainant has succeeded in its complaint.

 

 

6. Decision

In accordance with paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy the Panel requires that the domain name "solvay.net" be transferred to the Complainant.

 


 

Clive Duncan Thorne
Presiding Panelist

Dated June 19, 2000