WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SOLVAY Société Anonyme v. Aisha Vavilova
Case No. D2020-0650
1. The Parties
The Complainant is SOLVAY Société Anonyme, Belgium, represented by PETILLION, Belgium.
The Respondent is Aisha Vavilova, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <solvay.email> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2020. On March 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2020 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on March 27, 2020 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 March 27, 2020.
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 March 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2020.
The Center appointed Jon Lang as the sole panelist in this matter on April 29, 2020. 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 global leader in chemicals and was founded 1863. The Complainant’s group has its registered offices in Brussels and employs around 24,500 people in 61 countries. Its net sales were EUR 10.3 billion in 2018. The Complainant owns a number of trademarks, including European Union trademark SOLVAY registered on May 30, 2000 under No. 000067801, and International trademark SOLVAY covering numerous countries, including Ukraine where the Respondent is located, which was registered on February 28, 2013 under No. 1171614.
The Domain Name was registered on February 12, 2019. It resolves to an inactive parking page.
5. Parties’ Contentions
A brief summary of the Complainant’s contentions are set out below.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant’s SOLVAY mark is well-known all over the world and is used extensively, including on social media. It has been ranked for several years in the top 10 most powerful and valuable Belgian brands. The SOLVAY mark has been used since at least 2000.
The Domain Name is identical to the SOLVAY mark (given that the generic Top-Level Domain (“gTLD”), such as “.email” can be disregarded when comparing domain name and a trademark).
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Domain Name but to this end, it is sufficient that the Complainant makes out a prima facie case. On doing so, the burden shifts to the Respondent to show that it does in fact have rights or legitimate interests in respect of the Domain Name.
A number of factors indicate that the Respondent has no rights or legitimate interest in the Domain Name:
- the Respondent is not commonly known by the Domain Name;
- the Respondent has not acquired trademark or service mark rights and the Respondent’s use and registration of the Domain Name was not authorized by the Complainant. In the absence of any license or permission from the Complainant to use its widely-known trademark, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed; and,
- the Domain Name is not linked to an active website and given the fact that the Domain Name is identical to the Complainant’s distinctive and well-known SOLVAY mark, it is inconceivable that any good faith use would be made of it by the Respondent.
The Domain Name was registered and is being used in bad faith
Registration in bad faith
At the time the Respondent registered the Domain Name, the Respondent must have known of the Complainant and its trademarks given that:
- the Complainant and its trademarks are well-known all over the world, including in Ukraine where the Respondent is located;
- a simple search on the Internet would have revealed the Complainant’s presence, reputation and trademarks; and,
- previous UDRP panels have already acknowledged the well-known and distinctive character of the Complainant’s SOLVAY mark.
In the circumstances, the Respondent could not reasonably have been unaware of the Complainant and its rights in the SOLVAY mark at the time of registration of the Domain Name.
There is bad faith registration for the purposes of the Policy where the Respondent knew or should have known of the Complainant’s trademark rights but nevertheless registered a domain name incorporating the Complainant’s mark in circumstances where the Respondent itself has no rights or legitimate interest in such mark.
Use in bad faith
By registering the Domain Name, the Respondent prevents the Complainant from reflecting its mark in a corresponding domain name.
The Domain Name will attract visitors looking for information about the Complainant or its mark and create difficulties for people searching the Internet.
The Domain Name does not currently resolve to an active website and the Respondent cannot be contacted. The passive holding of a domain name can amount to bad faith registration and use, particularly where it is difficult to imagine any plausible future active use of the Domain Name by the Respondent that would be legitimate and that would not infringe the Complainant’s mark, or unfair competition and consumer protection legislation. It is impossible to imagine any plausible legitimate use of the Domain Name by the Respondent, especially in view of the global reach of the Complainant and the well-known and distinctive character of its trademarks.
Further, it cannot be ruled out that the Respondent uses or will use the Domain Name for fraudulent activity, e.g. by profiting from the likelihood of confusion with the Complainant’s mark by embarking on phishing activities. In view of the Complainant’s size and wide range of activities, there is a high risk in this regard. This is particularly so given that the Domain Name is identical to the Complainant’s SOLVAY mark and has been registered under the gTLD “.email”, which increases the confusion for Internet users who could reasonably believe that the Domain Name is somehow connected to an official emailing service of the Complainant.
It is clear that the Respondent registered and uses the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its SOLVAY mark.
Ignoring the gTLD “.email” (as the Panel may do for comparison purposes), the Domain Name consists of only the SOLVAY mark and nothing more.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The SOLVAY mark is clearly recognizable within the Domain Name – the gTLD “.email” aside, it is the only element of the Domain Name.
The Panel finds that the Domain Name is identical to the SOLVAY mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it 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. Here, however, the Respondent is not known by the Domain Name. Nor can it be said that there is legitimate noncommercial or fair use. There appears to be no active use of the Domain Name at all. Moreover, given that any noncommercial or fair use must be without intent to mislead, even if the Respondent could point to some use, it is unlikely it would be regarded as legitimate or fair, given that the Domain Name, consisting only of the SOLVAY mark, is inherently confusing and likely to create a false impression of association with the Complainant.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Whilst it appears no use is being made of the Domain Name at present, given the likelihood of a false impression being created if it were to be used, it is unlikely that any offering of goods or services in the future would be treated as bona fide.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response and it can only be assumed that there is nothing it could say that might support an assertion that it does in fact have rights or legitimate interests. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
Sometimes, particularly in cases where nothing at all is done with a domain name, it is not possible for a complainant to demonstrate literal or verbatim application of one of the paragraph 4(b) scenarios. However, given that such scenarios are non-exclusive and simply illustrative, this matters not as long as there is evidence demonstrating that a respondent seeks to take unfair advantage of, or to abuse a complainant’s trademark. Such behavior would satisfy the general principle underlying the bad faith requirement of the Policy.
It is not clear in this proceeding whether the Respondent, in registering the Doman Name, had in mind preventing the Complainant from itself registering the Domain Name or whether there was a “primary intention” to disrupt the Complainant’s business. Moreover, given that no use is being made of the Domain Name, it cannot be said that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion. However, it is unlikely that the Respondent would not have known of the Complainant and its marks at the time of registration of the Domain Name. The Domain Name incorporates entirely the well-known SOLVAY mark and any use of it would inevitably create a risk of misleading Internet users into believing that the Domain Name or any website to which it resolved (or any associated email address), was associated with or emanated from the Complainant.
The Domain Name has the hallmarks of bad faith registration and use. It is inherently misleading and it is difficult to contemplate any legitimate use without permission of the Complainant. Moreover, given its registration under the “.email” gTLD, Internet users could possibly be lead to believe that the Domain Name is connected to an official emailing service of the Complainant. One can only speculate as to the misuse the Domain Name could be put and why the Respondent would want to register such a Domain Name. It cries out for explanation, but none has been forthcoming.
The fact that the Respondent is (presently) passively holding the Domain Name does not prevent a finding of bad faith registration and use. Indeed, a passive holding of a domain name can support a finding of bad faith. UDRP Panels must examine all the circumstances of the case.
Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides:
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
The Domain Name is identical to the well-known SOLVAY mark, which is used extensively. No Response was filed or evidence of actual or contemplated good faith use provided, and none would seem plausible without permission of the Complainant. The passive holding of the Domain Name in the circumstances of this Complaint, supports a finding of bad faith.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name <solvay.email> be transferred to the Complainant.
Date: May 13, 2020