WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solvay SA v. Cameron David Jackson
Case No. D2016-0559
1. The Parties
The Complainant is Solvay SA of Brussels, Belgium, internally represented.
The Respondent is Cameron David Jackson of New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <ernestsolvay.xyz>, <solvaybelgium.xyz>, <solvaycanada.xyz>, <solvaychemicalgroup.xyz>, <solvaychemistry.xyz>, <solvaypharmaceuticals.xyz>, <solvaypharma.xyz>, <solvaypolymers.xyz>, <solvaysa.xyz>, <solvaystockprice.xyz> and <solvay.xyz> are registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2016. On March 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2016.
The Center appointed Jane Lambert as the sole panelist in this matter on May 3, 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 one of the world’s largest chemicals multinationals manufacturing polymers and pharmaceutical goods. It was founded by Ernest Solvay in Belgium in 1863 and now employs 30,000 people in over 53 countries. Its turnover in 2014 was EUR 12 billion and its shares are traded on the Brussels, Paris and New York stock exchanges.
It has registered the word trade mark SOLVAY alone or in combination with other elements as a trade mark in the countries in which it does business. Those registrations include the word trade mark SOLVAY which has been registered as a European Union trade mark under number EU67801 for a wide range of goods in several classes including chemicals, pharmaceuticals and polymers with effect from April 1, 1996. The Complainant has registered over 500 domain names incorporating the SOLVAY mark.
The Respondent appears to carry on a business of registering domain names that correspond to, or contain, well known trade marks. His registrations include <hugobossdeodorant.com>, <cashconvertersmobile.com>, <bayer.click> and <volkswagenag.click>. Since XYZ.COM LLC started to register “.xyz” domain names the Respondent has registered such domain names as <wholesaleprada.xyz>, <footlocker.xyz> and <helsinn.xyz>. Several UDRP cases have been filed against him all of which he has lost. Examples include Statoil ASA (“statoil”) v. Cameron Jackson, WIPO Case No. D2015-2226 and Chocoladefabriken Lindt & Sprüngli AG v. Cameron Jackson, WIPO Case No. D2007-1290.
The disputed domain names have been registered between March 10, 2016 and March 17, 2016.
5. Parties’ Contentions
The Complainant seeks the transfer of the disputed domain names on the grounds that:
- each and every one of the disputed domain names is similar to trade marks in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in any of the disputed domain names; and
- the Respondent has registered the disputed domain names and used them in bad faith.
As to the first ground the Complainant refers to the registration of the word SOLVAY as a trade mark in trade mark registries around the world and to the fact that each and every one of the disputed domain names combines that mark with a word that is associated with the Complainant such as a country in which the Complainant does business or a product or business of the Complainant.
As for the second element of the Policy, the Complainant says that it has no business connection with the Respondent, that it has never authorized nor licensed the Respondent to use any of its marks. The SOLVAY mark is derived from the surname of the Complainant’s founder and is therefore distinctive.
As regards the third ground, the Complainant says that the Respondent had offered to sell the disputed domain names to the Complainant for EUR 800 which is many times more than the Respondent had paid for them. He has also tried to register domain names and ransom them back before and had many adverse decisions against him.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) Each of the disputed domain names is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Each disputed domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant has to prove that each of those three elements is present.
A. Identical or Confusingly Similar
The Panel finds that the first element is present.
Each of the disputed domain names incorporates the SOLVAY mark mentioned above.
Some of the disputed domain names combine the mark with a country in which the Complainant does business such as <solvaybelgium.xyz> and <solvaycanada.xyz>. Others combine the mark with a product or activity of the Complainant. Examples include the disputed domain names <solvaychemicals.xyz> and <solvaypharmaceuticals.xyz>. Yet others like the disputed domain names <solvaysa.xyz> and <solvaychemicalgroup.xyz> reflect its corporate name. The disputed domain name <solvaystockprice.xyz> suggests an investor relations site of the Complainant.
The combination of the trade mark of a well-known multinational enterprise with a word associated with that enterprise is likely to lead those seeking to do business with, or to learn about the Complainant or its business to believe that the websites under the disputed domain names are official sites of the Complainant and it is reasonable to infer that that was the Respondent’s intention when registering the disputed domain names. For instance, Internet users are likely to believe that a website under the disputed domain name <solvaybelgium.xyz> is a website for the Complainant’s subsidiaries in Belgium or that a website under the disputed domain name <solvaychemicals.xyz> is a site about its chemicals business. That is quite enough to support a finding that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds the second element to be present.
Paragraph 4(c) of the Policy lists a number of circumstances in which a respondent can show that it has a right or legitimate interest in a disputed domain name:
“(i) before any notice to you [the Respondent] of the dispute, your [the Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have [has] been commonly known by the domain name, even if you [the Respondent] have [has] acquired no trademark or service mark rights; or
(iii) you [the Respondent] are [is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence that any of these apply in the present case.
The first is unlikely to apply because of the scale of the Complainant’s business and its portfolio of trade mark registrations throughout the world. It would be impossible for a business other than the Complainant to carry on business under, or otherwise use, the SOLVAY name or mark without the Complainant’s license as such use would provoke an action for trade mark infringement or passing off. The Complainant has stated clearly that it has never granted such license.
The second is unlikely to apply because SOLVAY is not a common surname. Moreover, there is no evidence that the Respondent has been commonly known by the disputed domain names.
The third cannot apply because the disputed domain names have been parked with “Only Domains” and the Panel finds that that does not amount to a legitimate noncommercial or fair use of the disputed domain names.
If there is any other evidence to show that the Respondent has rights or legitimate interests in any of the disputed domain names it was up to him to adduce it but he has chosen not to do so. There are therefore no grounds for supposing that the Respondent has any rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
The Panel is satisfied that the third element is present.
Paragraph 4(b) of the Policy lists the following circumstances as evidence of registration and use 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 trade mark 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 web site 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.”
The Complainant has exhibited correspondence showing that the first of those circumstances applies. The day after the Respondent had registered the disputed domain name <solvay.xyz> the Complainant contacted the Respondent and asked him to transfer it to the Complainant. The day after that, the Respondent registered several of the disputed domain names and told the Complainant that he had also registered <jean-pierre-clamdieu.com> which incorporates the name of the Complainant’s chief executive officer. Shortly afterwards he demanded EUR 800 and followed his demand with a number of emails and a phone call when he did not receive an immediate reply. The Complainant offered the Respondent USD 40 which is twice the amount of the estimated cost of acquiring the disputed domain names. The Respondent rejected that offer, registered the disputed domain name <solvaystockprice.com> and repeated his demand for EUR 800. That is nothing more than old fashioned cybersquatting which the Policy was intended to suppress.
Further, the previous UDRP decisions against the Respondent indicate a pattern of registering domain names for the purpose of preventing trade mark owners from registering corresponding domain names. The registration of the disputed domain names would have prevented the Complainant from registering domain names that it might well have wished to register in the “.xyz” Top-Level Domain.
These matters are evidence of registration and use in bad faith and in the absence of any evidence from the Respondent to the contrary the Panel must conclude that each and every one of the disputed domain names was registered and is being used in bad faith.
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 names <ernestsolvay.xyz>, <solvaybelgium.xyz>, <solvaycanada.xyz>, <solvaychemicalgroup.xyz>, <solvaychemistry.xyz>, <solvaypharmaceuticals.xyz>, <solvaypharma.xyz>, <solvaypolymers.xyz>, <solvaysa.xyz>, <solvaystockprice.xyz> and <solvay.xyz> be transferred to the Complainant.
Date: May 7, 2016