WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Solvay S.A. v. Ni How / Above.com Domain Privacy

Case No. D2012-1761

1. The Parties

Complainant is Solvay S.A. of Brussels, Belgium, internally represented.

Respondent is Ni How / Above.com Domain Privacy, of Nanjing, China and Beaumaris, Australia, respectively.

2. The Domain Name and Registrar

The disputed domain name <solvaychem.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 30, 2012. On August 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2012, 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 Complainant on August 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Upon Complainant’s request, the Center notified the suspension of this proceeding on September 4, 2012. The proceeding was re-instituted on October 4, 2012. Complainant filed an amended Complaint on October 5, 2012.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 29, 2012.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on November 13, 2012. 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

Complainant was established in 1863, and is an international company that sells chemicals in consumer goods, construction, automotive, energy, water and environment, electronics, and specialty products such as fluorinated chemicals. Complainant now ranks among the top ten chemical companies in the world. It is headquartered in Brussels, Belgium, employs about 31,000 people in 55 countries, and generated EUR 12,7 billion in net sales in 2011.

Complainant owns many registrations for the mark SOLVAY in almost 100 countries. It also owns the domain <solvay.com> and others containing the mark SOLVAY. In particular, Complainant registered <solvaychemicals.com>.

Complainant has a number of affiliates whose trade names contain the SOLVAY mark and the word “chemicals”.

The disputed domain name was registered on June 13, 2012, and WhoIs information dated June 25, 2012 reflects that the disputed domain name was registered to Respondent Above.com Domain Privacy.

On August 3, 2011 [sic], Complainant sent to the previous registrant a request to transfer the disputed domain name, to which it received no response. It sent a reminder on August 12, 2011 [sic], to which it received no response, and Complainant filed a Complaint with the Center. As set forth above, on August 31, 2012, 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 Complainant on August 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant immediately sent an email to Respondent requesting transfer of the disputed domain name to Complainant. Upon Complainant’s request, the Center suspended this proceeding on September 4, 2012. Though Respondent initially responded briefly to Complainant, Respondent did not respond to Complainant’s efforts to obtain more information, so the proceeding was re-instituted on October 4, 2012. Complainant filed an amended Complaint on October 5, 2012.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the SOLVAY mark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s SOLVAY mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of “chem”, a derivative of the common word “chemicals”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

For over 100 years, Complainant has sold chemicals under its SOLVAY mark. It owns trademark registrations for SOLVAY in almost 100 countries. Complainant has proven that it has rights in the SOLVAY mark.

The disputed domain name is confusingly similar to Complainant’s SOLVAY mark. It contains Complainant’s SOLVAY mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of “chem”, which is a derivative of the common word “chemicals”. Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a domain name from a complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

Accordingly, the Panel finds that Complainant has rights in the SOLVAY mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.

Complainant has not authorized Respondent or anyone else to register and use the disputed domain name <solvaychem.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the SOLVAY mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.

The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.

Respondent is in default, and has not provided any evidence in its own favor.

The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that:

“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 website 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.”

This Panel infers that Respondent most likely knew of Complainant’s SOLVAY mark when Respondent registered the disputed domain name. Complainant has sold chemicals under the SOLVAY mark for over 100 years, and is among the top ten chemical companies in the world. It also has trademark registrations in almost 100 countries, including Australia and China, the country of record for Respondent. The Panel finds that Respondent therefore registered the disputed domain name in bad faith.

From the beginning of the Policy, many previous UDRP decisions have held that a respondent’s inactivity with respect to a domain name weighs in favor of finding bad faith, particularly where the respondent has no bona fide use for the domain name and simply is precluding a complainant from using the domain name that corresponds to the complainant’s mark. See, e.g., Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This case follows that line. This Panel finds that the disputed domain name is being used in bad faith under paragraph 4(b)(iii).

The Panel finds that Respondent also has used the disputed domain name in bad faith under the paragraph 4(b)(iv) of the Policy. Respondent’s website intentionally attracts Internet users for commercial gain by linking to other websites through which Complainant’s competitors sell similar goods and services. It has long been held that this type of click through revenue violates the Policy. See, e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

This Panel finds that Respondent has registered and used the disputed domain name in bad faith and that Complainant meets the third criterion of paragraph 4(a) of the Policy.

7. Decision

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 <solvaychem.com> be transferred to Complainant.

Sandra A. Sellers
Sole Panelist
Dated: November 26, 2012