WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solvay S.A. v. Long-Van Nguyen-Sauvage
Case No. D2015-0690
1. The Parties
The Complainant is Solvay S.A. of Brussels, Belgium, represented internally.
The Respondent is Long-Van Nguyen-Sauvage of Parid, France.1
2. The Domain Name and Registrar
The disputed domain name <solvay.paris> is registered with French Connexion SARL dba Domaine.fr (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2015. On April 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2015.
The Center appointed J. Nelson Landry as the sole panelist in this matter on May 28, 2015. 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 was established in 1863 and developed as an international, industrial and chemical corporation and is presently one of the ten largest chemical players worldwide. It employs about 26,000 people in 119 business sites located in more than 50 countries.
The Complainant is the registered owner of hundreds of trademarks comprising the term “solvay” alone or with other chemical terms such as “bariumstrontium”, “fluor”, minerals and organics, amongst numerous other terms (herein the “SOLVAY Trademark”). The term “solvay” was originally the family name of Ernest Solvay, the Complainant’s founder. These SOLVAY Trademark registrations are in at least 90 countries or jurisdictions, in particular registered in Benelux in 1971, France in 1993, United States of America in 2000, and European Union in 2005.
The Complainant has no business connection or relation with the Respondent and has never authorized or licensed the Respondent to register the disputed domain name.
According to the Complainant, the Respondent’s use of the disputed domain name is limited to a parking page at the address of the disputed domain name where one may read “This domain name has been registered by Domaine.fr”, with the equivalent in French and therefore represents that the website is not active.
The new generic Top-Level Domain (“gTLD”) extension “.paris” became available to the public in December 2014, the Respondent registered the disputed domain name on January 28, 2015, along with 13 other domain names including <danone.paris>, <michelin.paris>, <pacorabanne.paris>, <arcelormittal.paris> and <sanofi.paris>.
5. Parties’ Contentions
The Complainant represents that it has been in operation since 1863 and is the owner of several SOLVAY trademark registrations. The Complainant further represents that the disputed domain name incorporates its SOLVAY Trademark in its entirety with the new gTLD extension “.paris ”, clearly suggesting the Complainant. The Complainant submits that the element “solvay” in the disputed domain name is identical to the Trademark SOLVAY as well as the corporate name and Solvay trade name and thereby, the disputed domain name is likely to mislead the public as to the relationship between the Complainant and the Respondent.
The Complainant states that its SOLVAY Trademark originates from the name of the Complainant company’s founder, Mr. Ernest Solvay, whose Trademark has for over a hundred years achieved a high level of distinctiveness, and is not a generic term. The Complainant further states that it has no business connection with the Respondent and has never authorized or licensed the Respondent to either any use of its SOLVAY Trademarks or to register the disputed domain name.
According to the Complainant, it did not find any evidence that the Respondent is commonly known by the term “solvay” or the disputed domain name, as it appears from his profile on Linkedln. The Complainant therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name which was registered on the same date as 13 other domain names incorporating well known corporate names and trademarks.
The Complainant further submits that the website at the disputed domain name as well as many other domain names registered on the same day by the Respondent including <bfmtv.paris>, <michelin.paris> and <pacorabanne.paris>, simply resolve to a parking page stating “This domain name has been registered by Domaine.fr”, along with the same statement in French.
The Complainant contends that the disputed domain name is currently parked and not being fairly used for any activity and constitutes a classic example of passive holding, and as held in UDRP decisions “raises the probability of the Respondent using it in a manner that is contrary to the Complainant’s legal rights”. See Intesa Sanpaolo S.p.A. v. Igor Venediktow – Labintech Limited., WIPO Case No. D2015-0021 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. According to the Complainant, the numerous registrations of domain names by the Respondent in various fields of activities incorporating well known French companies or their respective trademarks with the new gTLD extension “.paris” demonstrates that the Respondent is engaged in a very specific pattern of serial cybersquatting, specialized in the new extension “.paris” and thus has acted in bad faith.
The Complainant finally submits that the Respondent by its registration of the disputed domain name prevents the Complainant from reflecting its own mark in that corresponding domain name should it so wish. See Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. Hyper.Directory, Inc. WIPO Case No. D2014-1315. The Complainant thus concludes its submission that the Respondent has registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
In demonstrating its existence for more than a century with its activities in association with the SOLVAY Trademark in more than 52 countries while employing 3,600 people, all contributing to generate net sales in excess of EUR 10 billion in 2014, the Complainant has clearly demonstrated that it has rights in its SOLVAY Trademark registered in dozens of countries, including France where the Respondent resides, and that its SOLVAY Trademark is highly distinctive with significant goodwill associated therewith.
The Panel finds that the disputed domain name incorporates the whole of the Complainant’s SOLVAY Trademark to which it is identical, taking in consideration that it is well established in UDRP decisions that the presence of a gTLD suffix does not in any way diminish the likelihood of confusion between a disputed domain name and a complainant’s trademark.
The first criterion of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant has met its prima facie burden that the Respondent has no rights or legitimate interests in respect of the disputed domain name in its unchallenged statement of the absence of any business relationship with the Respondent, and the absence of any agreement or license authorizing the Respondent to use its SOLVAY Trademark and register the disputed domain name.
According to the Complainant there is no evidence of the Respondent being commonly known by the term “solvay” or the disputed domain name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second criterion of the Policy has been met.
C. Registered and Used in Bad Faith
Upon considering the elaborate evidence of the Complainant’s centennial existence and extensive use of its SOLVAY Trademark, its registrations in at least 90 countries and the presence of hundreds of domain names incorporating the SOLVAY Trademark registered by the Complainant, the Panel has no hesitation in considering highly justified that the Complainant would have soon in 2015 proceeded to register the disputed domain name to join its substantial portfolio of domain names on the one hand, and concludes that the rapid registration thereof by the Respondent is preventing the Complainant to benefit from this opportunity created in December 2014, on the other hand.
The Panel observes and finds clear evidence of cybersquatting behavior by the Respondent in his registration of numerous domain names, including the disputed domain name, on the same day, within a few weeks of the availability of the new gTLD extension “. paris” when said extension became available only in December 2014.
The disputed domain name registration and behavior in the present circumstances clearly demonstrates the Respondent’s bad faith behavior which the Panel finds cannot be other than bad faith in registering the disputed domain name and directing it to a parking page. Such bad faith by the Respondent is further confirmed by the fact that in so registering the disputed domain name, the Respondent clearly prevents the Complainant from registering same in addition to its large group of various domain names incorporation its SOLVAY Trademark along or with other terms in association with numerous gTLD suffixes such as “.com”, “.net”, and descriptive chemical terms as put in evidence by the Complainant.
The Panel finds that the disputed domain name was registered and is used in bad faith by the Respondent.
The third criterion of the Policy has been met.
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 <solvay.paris> be transferred to the Complainant.
J. Nelson Landry
Date: June 2, 2015
1 The Panel notes that the publicly-available WhoIs lists the Respondent’s location as “Parid, France”; however, the Panel believes that this may be a typographical error, with the Respondent actually being located in Paris, France.