WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SOLVAY Société Anonyme v. Not disclosed Not disclosed, MRSOFT Consults
Case No. D2021-4278
1. The Parties
The Complainant is SOLVAY Société Anonyme, Belgium, represented by Petillion, Belgium.
The Respondent is Not disclosed Not disclosed, MRSOFT Consults, Uganda.
2. The Domain Name and Registrar
The disputed domain names <solvaysolutionsuk.com> and <solvaysolutionsuklimited.com> are registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <solvaysolutionsuklimited.com>. On December 21, 2021 the Complainant filed an Amended Complaint to add the second disputed domain name <solvaysolutionsuk.com>. On December 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <solvaysolutionsuk.com>. On December 27, 2021 and January 3, 2022, 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 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 January 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2022.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on February 3, 2022. 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, Solvay S.A., is a global science company specialized in high-performance polymers and composites technologies, and a leader in chemicals. The Complainant’s group was founded 1863, has its registered offices in Brussels, and employs more than 23,000 people in 64 countries. Its net sale was EUR 8,9 billion in 2020.
The Complainant is active in the United Kingdom, including through its wholly owned subsidiary Solvay Solutions UK Ltd.
The Complainant holds an important portfolio of trademarks, including the following:
- SOLVAY, European Union word Trade Mark registered on May 30, 2000, under No. 000067801 in classes 1, 3, 4, 5, 7, 9, 10, 12, 17, 19, 20 and 31;
- SOLVAY, European Union word Trade Mark registered on August 13, 2013, under No. 011664091 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;
- SOLVAY, International word mark registered on March 7, 2014, under No. 1171614 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’s SOLVAY mark is well-known all over the world, both thanks to the Complainant’s international presence and to its marketing investments. The SOLVAY mark is used extensively, including on social media, and has been recently ranked for several years in the top 10 most powerful and valuable Belgian brands. The SOLVAY mark’s value was estimated at EUR 795 million in 2020.
Complainant became aware of the registration of the disputed domain name <solvaysolutionsuklimited.com> which appears to be inactive.
On December 21, 2021, after filing the Complaint with WIPO regarding the disputed domain name <solvaysolutionsuklimited.com> mentioned above, the Complainant discovered that a very similar domain name <solvaysolutionsuk.com> had also been registered on December 2, 2021.
In addition, both disputed domain names are very similar and correspond to the name of one of the Complainant’s wholly owned subsidiaries. Finally, both disputed domain names are inactive.
The language of the Registration Agreement is English.
5. Parties’ Contentions
The Complaint states that the disputed domain names are based on the SOLVAY mark, registered in numerous countries on different continents. The Complainant’s mark has been used since as early as 2000.
The disputed domain names <solvaysolutionsuklimited.com> and <solvaysolutionsuk.com> incorporate the Complainant’s SOLVAY mark in its entirety and simply add terms such as “solutions”, “uk” and “limited”.
Where the relevant trademark is recognizable within the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”, section 1.8). In this case, the distinctive SOLVAY mark is clearly recognizable within the disputed domain names.
Further, the Complainant mentions that it is well established that the addition of generic Top-Level Domains (“gTLDs”) can be disregarded when comparing the similarities between a domain name and a trademark (see WIPO Overview 3.0, section 1.11.1).
In summary, the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel considers that all the information provided by the Complainant attests that the disputed domain names are confusingly similar to the Complainant’s trademark SOLVAY.
Further, the Panel agrees with the Complainant’s contentions that the addition of the terms “solutions”, “uk” and “limited” do not avoid a finding of confusing similarity between the disputed domain names and the Complainant’s trademark, and the addition of gTLDs can be disregarded when comparing the similarities between a domain name and a trademark. See sections 1.8 and 1.11.1 of the WIPO Overview 3.0.
Therefore, this first requirement has been satisfied.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complaint’s contentions, and the Respondent has not alleged any possible rights or legitimate interests it may have in the disputed domain names. Neither has the Respondent refuted the allegations made by the Complainant.
The Panel has not found the occurrence of any of the circumstances mentioned in paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated to be the owner of registered trademarks, including the company name SOLVAY, which are prior to the Respondent’s registration of the disputed domain names, and that it has not licensed the use or exploitation of its trademark to the Respondent.
Accordingly, and considering the unrebutted prima facie case made out by the Complainant, the Panel considers that the Complaint has also fulfilled the second element required by the Policy.
C. Registered and Used in Bad Faith
This third element requires the Complainant to prove that the disputed domain name was registered in bad faith and was being used in bad faith.
According to paragraph 4(b) of the Policy, there are a variety of circumstances to evidence and demonstrate the bad faith of the respondent.
The disputed domain names are identical to the company name of one of the Complainant’s wholly owned subsidiaries, showing that the Respondent targeted the Complainant at least two times. The Complainant trademarks are well-known all over the world. Thus, a simple search on the Internet would have revealed the Complainant’s presence, reputation, and trademark.
The Panel finds that the Respondent must have had knowledge of the Complainant’s mark SOLVAY and its rights therein at the time the Respondent registered the disputed domain names. These findings are based on: (i) the Complainant’s trademark having a strong reputation and being widely known; (ii) the disputed domain names being confusingly similar to the Complainant’s trademark; (iii) the above finding of the Respondent having no rights or legitimate interests in the disputed domain names.
Given the similarity of the disputed domain names with the Complainant’s SOLVAY trademark, and the company name of the Complainant’s subsidiary, the Panel agrees that the Respondent’s motive to register the disputed domain names was likely to take an illegitimate advantage of this similarity. Panels have consistently found that the mere registration of domain names that are identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity – as is the case here – can by itself create a presumption of bad faith (see section 3.1.4 WIPO Overview 3.0).
The disputed domain names currently do not resolve to an active website and the Respondent did not respond to the Complainant’s emails. Under the circumstances of the case, the passive holding of the disputed domain names would not prevent a finding of bad faith registration and use (see WIPO Overview 3.0, section 3.3).
The passive holding of the disputed domain names would not prevent a finding of bad faith when it is difficult to imagine any plausible future active use of the disputed domain names by the Respondent (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
This is especially so since the disputed domain names are incorporating the Complainant’s company name and SOLVAY mark in its entirety and are identical to the company name of one of the Complainant’s wholly owned subsidiaries. As stated above, noting the composition of the disputed domain names Respondent attempts to take advantage of their confusing similarity, as Internet users will directly link these to the Complainant, e.g. as referring to a Complainant’s subsidiary.
Consequently, for all these reasons, the Panel finds that the Complainant has met the third element required by paragraph 4(a)(iii) of the Policy.
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, <solvaysolutionsuk.com> and <solvaysolutionsuklimited.com>, be transferred to the Complainant.
Rodrigo Velasco Santelices
Date: February 16, 2022