WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solutia Inc. v. Whois Privacy Protection Service, Inc. / Patricia Gee
Case No. D2011-0285
1. The Parties
The Complainant is Solutia Inc. of St. Louis, Missouri, United States of America, represented by Ladas & Parry LLP, United States of America.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America / Patricia Gee of Forney, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <solutiacorp.com> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2011. On February 11, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On February 11, 2011, eNom 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 February 16, 2011, providing the registrant and contact information disclosed by eNom and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 24, 2011.
The Center verified that the Complaint together with the amendment to 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 February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2011. The Respondent sent an email communication to the Center on March 14, 2011, but did not submit any formal Response. Accordingly, the Center notified the Respondent’s default on March 21, 2011.
The Center appointed Michelle Brownlee as the sole panelist in this matter on April 1, 2011. 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 owns numerous registrations for the mark SOLUTIA throughout the world, including United States Registration Nos. 2,482,655 and 2,578,953 in connection with various chemicals, plastics, synthetic fibers, yarns, threads, and carpets, among other goods. The registrations claim a first use of the SOLUTIA mark at least as early as 1997.
The Respondent registered the Domain Name on November 1, 2010.
5. Parties’ Contentions
The Complainant is a leader in the applied chemistry industry, with more than three billion US dollars in annual global sales and over 9,000 employees located at 35 manufacturing sites around the world. The Complainant’s chemical and plastics business was founded as Monsanto Company, and was spun off into a separate company in 1997. The Complainant maintains an extensive business portfolio of products and services, including laminated glass, aviation hydraulic fluids, polymers and polymer products. The Complainant is the owner of more than 300 registrations worldwide for trademarks that include the word “solutia”.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s SOLUTIA trademark, that the Respondent has no rights to or legitimate interests in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Domain Name resolves to a site that does not conduct any active business. The web site says “Welcome to solutiacorp.com,” and “If you are the domain administrator get started creating your home page with Google Sites,” and contains the Google logo. Further, the Respondent has been using the Domain Name to send emails that appear to come from the Complainant’s Vice President, James Voss, in which the Respondent has attempted (and succeeded in some instances) to order equipment in the Complainant’s name. The Respondent is not affiliated with the Complainant, and the Respondent has fraudulently and illegally misrepresented that the Respondent is affiliated with the Complainant without the Complainant’s authorization.
The Respondent did not reply to the Complainant’s contentions. The Center received an email communication from Patricia McGee stating that she had received a letter informing her about the Complaint. Ms. McGee stated that she was not affiliated with Solutia Corp or with any domain names. She stated, “You have the WRONG person,” and asked to be removed from the case.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the SOLUTIA trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the SOLUTIA trademark with the word “corp,” an abbreviation for the Complainant’s form of business organization, is confusingly similar to the Complainant’s SOLUTIA trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent 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 at issue.
The Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent has used the Domain Name as part of a fraudulent scheme to order products without paying for them by misrepresenting an affiliation with the Complainant. This activity cannot under any circumstances be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has demonstrated that the Respondent has used the Domain Name to send emails that are designed to appear as though they come from one of the Complainant’s employees as part of a scheme to defraud others. Under such circumstances, there is no question that the Respondent was aware of the Complainant’s trademark and registered and is using the Domain Name in bad faith.1
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <solutiacorp.com> be transferred to the Complainant.
Dated: April 10, 2011
1 Whether or not the Respondent’s identity was “hijacked” by a third party, whoever registered the Domain Name did so in bad faith and is also using it in bad faith.