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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Solvay SA v. WhoisGuard Protected, WhoisGuard, Inc. / Thomas Hutton, Thomas LLC

Case No. D2020-1553

1. The Parties

The Complainant is Solvay SA, Belgium, represented internally.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Thomas Hutton, Thomas LLC, United States of America (“United States”).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2020. On June 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2020, 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 June 24, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the Complaint

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 July 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2020.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on August 4, 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 company founded and organized in 1863 under the laws of Belgium, which operates in the chemicals industry, being listed in the European Stock Exchange (Euronext). The Complainant’s group employs around 24,000 people in 64 countries and its net sales for 2018 amounted to EUR 10.3 billion.

The Complainant owns an extensive portfolio of trademark registrations for the mark SOLVAY (collectively the “SOLVAY mark”), including:

- European Union Trademark No. 000067801 SOLVAY, registered on May 30, 2000, in classes 1, 3, 4, 5, 7, 9, 10, 12, 17, 19, 20 and 31; and

- International Trademark Registration No. 1171614 SOLVAY, registered on February 28, 2013, in classes 1, 2, 3, 4, 5, 7, 9, 10, 12, 17, 19, 22, 23, 24, 25, 30, 31, 34, 35, 36, 37, 39, 40 and 42.

The Complainant further owns numerous domain names incorporating the SOLVAY mark and operates numerous websites, including under the domain name <solvay.com> (registered on March 21, 1995) and <solvay.us> (registered on May 3, 2002), which are linked to corporate websites in connection with the Complainant’s products and services.

The disputed domain name was registered on June 8, 2020, and it resolves to a registrar parking page displaying pay-per-click (“PPC”) links related to various sectors.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

Due to the Complainant’s marketing investments, international presence and extensive use, the SOLVAY mark is well-known worldwide, being ranked in the top 10 most powerful and valuable Belgian brands. Its value was estimated in 2019 in EUR 847 million.

The disputed domain name is confusingly similar to the SOLVAY mark, which is clearly recognizable despite of the inversion of the letters “v” and “l”. This alteration constitutes a common misspelling of the Complainant’s mark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, has no trademark rights over the mark SOLVAY and has used the disputed domain name to impersonate the Complainant, sending various emails in the name of the Complainant’s employees in a phishing attempt, intentionally trying to mislead and confuse the Complainant’s customers. In these emails a false new bank account and payment instructions were provided, requesting sensitive information from the receivers (“complete bank details (IBAN, Bank name, SWIFT)”). The Complainant completed a standard abuse form and contacted the Registrar requesting measures to prevent these fraudulent attempts.

The disputed domain name was registered and is being used in bad faith. The same day of its registration, the disputed domain name was used to send emails in the name of two of the Complainant’s employees in a phishing attempt. The passive holding of the disputed domain name resolving to a "parking site" as well as the Respondent’s effort to conceal its identity in the WhoIs record of the disputed domain name are further evidence of bad faith.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position and requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, a domain name consisting of a common, obvious, or intentional misspelling of a trademark, containing sufficiently recognizable aspects of that mark, is considered confusingly similar to the relevant mark for the purposes of the first element, and employing a misspelling in this way normally signals an intention to confuse users seeking or expecting the complainant. Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, it is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.9 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant indisputably has rights in the registered trademark SOLVAY. The disputed domain name incorporates the SOLVAY mark almost in its entirety altering the order of two of its letters placed next to each other in the middle of the mark (the letters “vl” instead of “lv”), which may be considered a common misspelling not avoiding the direct perception of the mark. It is a common mistake when typing a term to alter the order of some of its letters located next to each other. Furthermore, due to the position of the altered letters (“vl” instead of “lv”), placed in the middle of the disputed domain name, this misspelling may easily go unnoticed. The SOLVAY mark is recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.

The Complainant’s assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation and evidence of rights or legitimate interests in the disputed domain name.

A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark almost in its entirety with a sole common misspelling (altering two of its letters placed next to each other in the middle of the mark, the letters “vl” instead of “lv”). The Panel considers that this common misspelling points to an intention to confuse Internet users seeking for or expecting the Complainant, existing a high risk of implied affiliation and confusion.

The Panel further considers that 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 Respondent’s name and his company’s name have nothing in common with the term “sovlay” and the disputed domain name resolves to a parking page displaying PPC links.

Furthermore, the Complainant has presented evidence that the Respondent used the disputed domain name to send emails requesting sensitive information to the Complainant’s customers, and the Respondent has not rebutted these allegations.

All the above mentioned circumstances lead the Panel to conclude that, 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. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel notes the centennial existence of the Complainant, as well as the extensive presence over the Internet of the SOLVAY mark, its use internationally and its global reputation in the chemical sector. The Panel has verified that the Complainant’s group operates in many jurisdictions around the globe, including the United States of America (“United States”) (where the Respondent is located according to the Registrar verification). In the United States, the Complainant’s group operates through 11 R&I centers, 50 production sites, 9 headquarters and 10 offices in different locations. The Panel, in use of the general powers articulated in the Policy, has consulted the Complainant’s corporate websites (under “www.solvay.com” and “www.solvay.us”), and has corroborated through various searches over the Internet the use of the Complainant’s trademark.

The Panel further notes that the well-known character of the SOLVAY mark has been recognized by previous decisions under the Policy. See Solvay S.A. v. Registration Private, Domains By Proxy, LLC / Alix Deschamps, WIPO Case No. D2015-0689; Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357; and Solvay S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Jie Zhang, Jie Inc CEO, WIPO Case No. D2020-0059.

The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:

(i) the disputed domain name incorporates the Complainant’s trademark SOLVAY almost in its entirety, introducing a common misspelling (altering two of its letters placed next to each other in the middle of the mark), which intrinsically creates a likelihood of confusion and affiliation;

(ii) the Complainant’s trademark is well known, and the Complainant operates internationally, including in the United States (where the Respondent is located according to the Registrar verification);

(iii) the disputed domain name resolves to a parking page displaying PPC links;

(iv) the Respondent used a privacy service to avoid revealing the Respondent’s identity in the disputed domain name’s registration;

(v) the Respondent used the disputed domain name to send emails requesting sensitive information to the Complainant’s customers; and

(vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.

In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities the Panel considers that the disputed domain name was very likely registered and is being used targeting the SOLVAY mark in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant. Specifically, the disputed domain name was registered and is being used to intentionally mislead and attract Internet users to the parking page containing PPC links linked to it, and to create email addresses for illegitimate or fraudulent purposes in a phishing scam or any other type of fraud.

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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, <sovlay.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: August 11, 2020

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