WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solvay S.A. v. Registration Private, Domains By Proxy, LLC / Alix Deschamps
Case No. D2015-0689
1. The Parties
The Complainant is Solvay S.A. of Brussels, Belgium, internally represented.
The Respondent is Registration Private, Domains By Proxy, LLC of Arizona, United States of America / Alix Deschamps of Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <solvayitalia.com> is registered with GoDaddy.com, LLC (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 17, 2015, 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 April 22, 2015 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 April 27, 2015.
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 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 Gunnar Karnell as the sole panelist in this matter on June 4, 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 disputed domain name <solvayitalia.com> was registered January 5, 2015, and it does not resolve to an active website.
The Complainant has requested that the disputed domain name be transferred to the Complainant.
The Complainant is the owner of several registrations for its trademark SOLVAY, applied and registered before the Respondent’s registration of the disputed domain name. Among others listed by the Complainant are the international Registration SOLVAY, Registration No. 1064995, Community Trademark Registration Solvay 004563896 and Italian Registration Solvay No. 634228 and a number of domain names containing the name SOLVAY, to mention in particular the domain names <solvay.it> and <solvayitalia.it>, both registered on July 28, 2000 . The registered trademark SOLVAY originates from the individual founder of the Complainant’s family name, Mr. Ernest Solvay.
5. Parties’ Contentions
The Complainant is an internationally active industrial Group, active in chemistry and the world’s largest producer of essential chemicals, offering a broad range of products in markets such as consumer goods, construction, automotive, energy, water and environment as well as electronics. The Complainant has been active in Italy since 1912. It employs about 26,000 people in 119 sites over 52 countries and generated EUR 10.2 billion in net sales in 2014.
On the day the disputed domain name was registered, the Respondent used an email address based on the disputed domain name ([…]@solvayitalia.com) usurping the identity of one of the Complainant’s employees to send an email requesting sensitive information “the complete bank details (IBAN, Bank name, SWIFT) of Solvay Iberica SL”, an affiliate to the Complainant. The Respondent’s email address, […]@solvay.com, uses the identity of the Complainant’s employee. On February 3, 2015, the Complainant contacted the Registrar for support to prevent the Respondent from fraudulent attempts to gain sensitive information by “phishing” and to prevent risks for cyberflight. The Registrar’s answer was not cooperative.
The disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The association of SOLVAY and Italia refers to the Complainant’s business in Italy, where the Complainant is active since 1912. The disputed domain name clearly suggests that the Complainant and the disputed domain name are connected and it will easily cause the public to refer to the well established reputation of the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no business or any other connection with the Respondent, who has never obtained any agreement, authorization or license justifying its registration or use of the disputed domain name. The Respondent is not actively conducting any legitimate business related to “Solvay in Italy” or “solvayitalia”.
The disputed domain name was registered and it is being used in bad faith by way of its passive holding of the disputed domain name. It constitutes a phishing attempt by identity fraud against the Complainant. It is likely to mislead the public as to the relationship between the Complainant and the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The factual foundation of the Complainant’s contentions, as presented by the Complainant, while supporting its non-contradicted request for transfer of the disputed domain name by written evidence and ample reference to earlier UDRP case decisions, leads the Panel to the following conclusions:
A. Identical or Confusingly Similar
The disputed domain name <solvayitalia.com> fully incorporates the Complainant’s multi-registered and well-known trademark SOLVAY together with the word “Italia”. The latter, in the Panel’s opinion, does not dispel confusion. The Panel disregards the generic Top-Level Domain (“gTLD”) “.com” for purposes of this element of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant has made evident that it has not licensed or otherwise authorized the Respondent to use its trademark SOLVAY. Also, the Respondent does not appear to be commonly known by the disputed domain name and it is evidently not making a legitimate noncommercial or fair use of it.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there has been no rebuttal from the Respondent. Nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In this Panel’s view, there is no indication on the record that might impair the Complainant’s assertions regarding the facts leading up to its conclusions that the disputed domain name <solvayitalia.com> has been registered and is being used in bad faith.
By holding its registration of the disputed domain name, under circumstances satisfactorily explained in the case file for a conclusion of acting in bad faith, the Respondent has prevented the Complainant from reflecting its well-known trademark SOLVAY for goods or services under the gTLD “.com”.
The Complainant has also presented evidence that the Respondent used the disputed domain name to send an email requesting sensitive information to an affiliate of the Complainant. In the Panel’s view, this is evidence of Respondent’s registration and use of the disputed domain name in bad faith.
The disputed domain name does not resolve to an active website. Passive holding of a domain name may also be considered use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In light of the above, the Panel confirms that the conditions for transfer of the disputed domain name to the Complainant are satisfied.
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 <solvayitalia.com> be transferred to the Complainant.
Date: June 11, 2015