WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler
Case No. D2016-1357
1. The Parties
The Complainant is Solvay SA of Brussels, Belgium, internally represented.
The Respondent is Domain Privacy Service Fbo Registrant of Orem, Utah, United States of America ("United States") / Mary Koehler of Muskego, Wisconsin, United States.
2. The Domain Name and Registrar
The disputed domain name <solvaycom.com> is registered with FastDomain, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 4, 2016. On July 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2016, 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 July 6, 2016 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 amended Complaint on July 7, 2016.
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 July 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 4, 2016.
The Center appointed James Bridgeman as the sole panelist in this matter on August 8, 2016. 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 leading global producer of essential and specialist chemicals and offers a broad range of products in markets which include consumer goods, construction, automotive, energy, water and environment, electronics and aerospace composite materials.
The Complainant owns and uses the SOLVAY trademark in connection with its chemical business and holds a large portfolio of registrations for the SOLVAY mark in numerous jurisdictions across the world. In addition, the Complainant is the registrant of <solvay.com> and other Internet domain names incorporating "solvay".
The Complainant's portfolio of registered trademarks includes the following:
- United States trademark SOLVAY, registration number 1171614, registered on February 28, 2013 for goods and services in international classes 01, 02, 03, 04, 05, 07, 09, 10, 12, 17, 19, 22, 23, 24, 25, 30, 31, 34, 35, 36, 37, 39, 40, 42;
- United States trademark SOLVAY, registration number 76/135353 registered on October 7, 2003 for goods and services in international classes 01, 05, 17, 31;
- United States trademark SOLVAY, registration number 954872, registered on April 28, 2009 for goods and services in international classes 04, 09.
The Respondent held the disputed domain name registration by means of a privacy service.
In the absence of any Response or other communication from the Respondent, there is no information available about the Respondent except for that provided in the Complaint, the WhoIs and the registrant details provided by the Registrar when contacted by the Center to verify the registrant details for the purposes of this Complaint.
The disputed domain name was registered on March 22, 2016 and resolves to a hosting provider's parking page as submitted by the Complainant.
5. Parties' Contentions
The Complainant relies on its rights in the abovementioned portfolio of registered trademarks and its long established rights in the extensive use of the SOLVAY corporate name, trade name and trademark in its global chemical business. The Complainant's group, with headquarters in Brussels, employs approximately 30,900 employees in 53 countries. In 2015 it generated pro forma net sales of EUR 12.4 billion.
The Complainant submits that it widely uses the SOLVAY mark in connection with its global chemical business and consequently the name and mark have acquired and enjoy a significant reputation and goodwill.
The Complainant submits that the disputed domain name <solvaycom.com> is composed of the Complainant's corporate name, trade name and registered trademark SOLVAY in combination with "com" which could be taken to refer either to the word "communication" or to the generic Top-Level Domain ("gTLD") which appears again in the gTLD extension in the disputed domain name and which refers to commerce.
The Complainant submits that the similarity of the disputed domain name and the SOLVAY mark clearly suggests a connection between the disputed domain name and the Complainant and will cause the public to associate the disputed domain name with the Complainant.
The Complainant states that its highly distinctive SOLVAY mark originates from the family name of Mr. Ernest Solvay who founded the Complainant and is not a generic term.
The Complainant states that it has no business connection with the Respondent, and the Respondent has never obtained any agreement, authorization or license justifying the Respondent's registration and use of SOLVAY mark. The Complainant argues that therefore, the Respondent has no right to register and use the disputed domain name.
The Complainant has produced evidence annexed to the Complaint that the disputed domain name resolves to a website that contains only the statement: "BlueHost – Affordable, Reliable Web Hosting Solutions" and a number of links that resolve in turn to other links.
The Complainant submits that the disputed domain name was registered and is being used in bad faith by the Respondent because the incorporation of the element "solvay" in the disputed domain name is likely to mislead the public to believe that there is a relationship between the Complainant and the Respondent. The Complainant submits that in such circumstances, the Respondent's intentional use of Complainant's corporate name is indicative of malice on the part of the Respondent.
The Complainant submits that it has been established in several prior decisions under the Policy that, "passive holding of a domain name is in violation of the Policy and constitutes bad faith". Several decisions has already been rendered against the Respondent (e.g., Sanofi v. Christopher Gill / Domain Privacy Service FBO Registrant, Bluehost.com, Blushost Inc, WIPO Case No. D2014-1124; Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan, WIPO Case No. D2014-2227).
On April 26, 2016, the Complainant sent an email to the WhoIs listed Admin contact of the disputed domain name stating the registrant lacked intellectual property rights on the name SOLVAY and requesting the transfer of the disputed domain name to the Complainant. The request remained unanswered as of the date of the Complaint.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4 of the Policy requires the Complainant to establish that:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its rights in the SOLVAY mark which it has acquired through ownership of the above-mentioned global portfolio of trade mark registrations including the above-mentioned registrations in the United States where the Respondent is based and its world-wide use of the mark in connection with the goods and services it produces in its global chemical business.
Having compared both the disputed domain name and the mark, this Panel accepts the Complainant's submission that the disputed domain name, which is a combination of the Complainant's SOLVAY mark and "com" is confusingly similar to the Complainant's SOLVAY mark.
The term "solvay" is the first and dominant element of the disputed domain name. It has no generic or descriptive meaning and is identical to the Complainant's well-established and globally recognized SOLVAY mark and name. The element "com" typically would be recognized as having a reference to communications or commerce and so in the circumstances of the present case, does not serve in any way to distinguish the disputed domain name from the Complainant's mark. The term "com" is repeated in the gTLD ".com" which in the circumstances of this case can be ignored for the purposes of comparison, but this Panel notes that the repetition of the element "com" in both the domain name itself and in the gTLD does not alleviate the dominance of the "solvay" element within the domain name and does not avoid a finding of confusing similarity.
In the circumstances this Panel finds that the disputed domain name is confusingly similar to the Complainant's mark and the Complainant is entitled to succeed in the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name, arguing that the disputed domain name is confusingly similar to the Complainant's name and mark; that there is no evidence of any active use of the disputed domain name by the Respondent; that the confusing similarity of the disputed domain name and the Complainant's mark is likely to create an incorrect impression of an association with the Complainant, its mark and business; that the Complainant has no association with the Respondent or the disputed domain name; and that the Complainant has not given any right or licence to the Respondent to use its name and mark in the disputed domain name or otherwise.
In such circumstances it is well established that the burden of production shifts to the Respondent. The Respondent has not filed any Response or other communication.
This Panel finds that the Complainant has made an unrebutted prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name and is therefore entitled to succeed in the second element of the test in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
On the evidence before this Panel, and in the absence of any Response or other explanation from the Respondent this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in order to take predatory advantage of the Complainant's rights, reputation and goodwill in the SOLVAY mark. In reaching this conclusion this Panel is conscious of the distinctive character of the SOLVAY mark, that it is improbable that the disputed domain name was chosen and registered without the registrant being aware of the Complainant and its reputation, and that the Respondent has no rights or legitimate interest in the disputed domain name.
Turning to whether the disputed domain name is being used in bad faith: the Complainant asserts that it resolves to a hosting provider parking page.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") "panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)."
Applying these principles this Panel finds that in the present case the disputed domain name is being used in bad faith. The cumulative circumstances requiring such a finding are that the disputed domain name was most probably chosen and registered to take predatory advantage of the Complainant's name, mark and <solvay.com> domain name; it is improbable that the Respondent was not aware of the Complainant's goodwill and reputation when she acquired the disputed domain name; and the Respondent did not respond to the initial communication from the Complainant or respond in any way to this Complaint. Furthermore the Respondent availed of a privacy shield service to protect her identity. While the use of a privacy shield is not in any way objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use.
In the circumstances this Panel finds on the balance of probabilities that the Complainant has also satisfied the third and final element of the test in paragraph 4 of the Policy and is entitled to succeed in the Complaint.
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 <solvaycom.com> be transferred to the Complainant.
Date: August 9, 2016