WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solvay SA v. Zhu Xumei
Case No. DCO2014-0022
1. The Parties
The Complainant is Solvay SA of Brussels, Belgium, represented internally.
The Respondent is Zhu Xumei of Huzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <solvay.com.co> 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 August 28, 2014. On August 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2014.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 2, 2014. 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 organized under the laws of Belgium, having its principal place of business at Brussels, Belgium. Established in 1863, the Complainant is an international industrial company active in chemical industry and listed on NYSE Euronext in Brussels and Paris.
In 2011 the Complainant has acquired the Rhodia Group. Due to this acquisition, a major chemical player
was born. The Solvay Group is amongst the world leaders in selected markets and products, generating over 90% of sales in businesses where it is among the top 3 global. The Group employs about 29,400 people in 117 sites over 56 countries and generated EUR 9,94 billion in net sales in 2013.
In the course of its business activity, the Complainant has registered SOLVAY trademark in nearly 100 countries. It owns, inter alia:
- SOLVAY – International Trademark No. 634228, registered on March 2, 1995 for products and services in classes 7,12,17;
- SOLVAY – International Trademark No. 751646, registered on January 18, 2001 for products and services in classes 1,3,5,10,12,16,17,19, 30, 31, 40, 42.
The Complainant has also registered many domain names involving SOLVAY trademark such as: <solvay.com>, <gsolvay.com> or <mysolvay.com>.
According to the latest WhoIs data, the Respondent is Zhu Xumei from China.
The disputed domain name has been registered on January 13, 2014.
5. Parties' Contentions
Firstly, the Complainant asserts that on August 1, 2014 it has contacted the Respondent and requested for the transfer of the disputed domain name. An individual named "Tom Zhu" answered the Complainant's request using the Respondent's email address. The Complainant assumes that "Tom Zhu" and "Zhu Xumei" are the same person. The Respondent or the individual acting on its behalf, offered to transfer the disputed domain name in exchange of EUR 800. The Complainant refused to pay this amount as it, in its opinion, exceeds any reasonable cost associated with registering the disputed domain name. There was no further response from the Respondent. The Complainant presents only an email dated August 1, 2014 in which it refused to pay EUR 800. There is no more evidence to confirm the Respondent's offer.
Secondly, the Complainant contends that the disputed domain name is identical or confusingly similar to its trade name and the SOLVAY trademarks. In its view, the Complainant's trade name and the SOLVAY trademarks enjoy a high degree of reputation in the chemical sector and are broadly used all around the world. Furthermore, the Complainant claims that Colombia, the country corresponding to the ccTLD ".co", is a signatory to the Paris Convention for the Protection of Industrial Property. According to the Paris Convention, a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark. Therefore, the Complainant asserts that its trade name shall be protected in Colombia. The Complainant relies on previous UDRP decisions while claiming that the disputed domain name shall be analyzed without taking into account ".com.co".
Thirdly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the name "Solvay" originates from the individual founder of the Complainant's company name, "Mr. Ernest Solvay". Such a word enjoys a high distinctiveness and it does not have any generic meaning. The Complainant does not cooperate with the Respondent and it did not authorize the Respondent to use its trademarks. Moreover, the disputed domain name is used solely to present sponsored links and offers to sell it. The Complainant underlines that the Respondent is located in China whereas ".co" is a country code for Colombia. Nothing, in the Complainant's view, suggests that the Respondent pursues its business activities in Colombia.
Lastly, the Complainant contends that the disputed domain name has been registered and used in bad faith. As <solvay.com.co> incorporates the Complainant's trademark, it is likely to mislead the public as to the relationship between the Complainant and the Respondent. Further, the disputed domain name resolves to sponsored links and advertisements of offers to sell this domain name. The content of the website, in the Complainant's view, suggests that the disputed domain name was registered for the main purpose of selling or transferring its registration. Finally, the Respondent has registered almost two hundred domain names using the same name and e-mail address, corresponding to and/or containing trademarks belonging to third parties, such as: <chevrolet.com.tw>, <haribo.in>, <sisleyparis.net>, <warnerbros.at> and in particular using the ".com.co" extension such as: <landrover.com.co>, <adobe.com.co>, <hasbro.com.co>, etc. The fact that the Respondent has engaged in a pattern of registering domain names containing famous companies or brands was further confirmed by several UDRP panels and all the cases were resolved against the Respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(b) the respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the respondent in bad faith.
A complaint may only succeed in these Policy proceedings if the above criteria are met simultaneously.
A. Identical or Confusingly Similar
The Complainant holds worldwide trademark registrations for SOLVAY. The disputed domain name <solvay.com.co> incorporates the Complainant's trademark in its entirety without any other word or letter. The Panel finds that the ".com" and ".co" suffixes should not be taken into account while comparing the Complainant's trademark and the disputed domain name (see Southern California Gas Company v. Itzik Levi, WIPO Case No. D2012-1752).
The Panel therefore finds that the disputed domain name is identical to the Complainants' SOLVAY trademark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not authorized by the Complainant to use the SOLVAY trademark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name (especially in Colombia); (d) the Respondent has been making a commercial use of the disputed domain name (through the appearance of advertisements and sponsored results on its website). In line with the previous UDRP decisions, the Panel accepts that the Complainant has presented a prima facie case of the Respondent's lack of rights or legitimate interests in relation to the disputed domain name, and as such the burden of production shifts to the Respondent (Avid Dating Life Inc. v. Zhu Xumei, WIPO Case No. DCO2014-0006).
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no such rights or legitimate interests.
Therefore, the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The disputed domain name was registered in 2014 and incorporates the Complainant's SOLVAY trademark that was registered years before and is widely used in chemical industry.
The disputed domain name resolves to a webpage containing sponsored links, from which the Respondent likely benefits. This fact supports the inference that the purpose of the Respondent's diversion of traffic from the Complainant to itself is for the Respondent's own commercial gain. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel finds that the Respondent's history of registering domain names incorporating third party trademarks is an additional factor supporting the Complainant's contentions regarding the Respondent's bad faith.
As the Complainant listed several UDRP cases filed against the Respondent, all resolved in favor of the complainants, the Panel notes that the Respondent was engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy).
All facts considered, the Complaint satisfies the requirements from paragraphs 4(b)(ii) and (iv) 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 name <solvay.com.co> be transferred to the Complainant.
Date: October 13, 2014