Complainant is Solvay Société Anonyme, Belgium, represented by PETILLION, Belgium.
Respondent is Maciej Karpinski, Antdata Sp. z o.o. Sp.k., Poland.
The disputed domain name <solvay.cloud> is registered with Key-Systems GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. Respondent sent an email communication (described below) on January 15, 2020 from a different email account than that confirmed by the Registrar. The Center notified the Commencement of Panel Appointment Process on February 5, 2020.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 19, 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.
Complainant is a company organized under the laws of Belgium that is active in the chemical industry.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to Complainant’s company name and brand “Solvay”, including the following with protection, inter alia, for Poland:
- Word mark SOLVAY, European Union Intellectual Property Office (EUIPO), registration number: 000067801, registration date: May 30, 2000.
Respondent, according to the WhoIs information for the disputed domain name, is a company organized under the laws of Poland, which registered the disputed domain name on December 11, 2019. By the time of the filing of the Complaint, as well as at the point of the rendering of this Decision, the disputed domain name resolved to a website notifying Internet users that the disputed domain name “has been suspended due to non-completion of an ICANN-mandated contact verification” because of an unverified email address submitted in the WhoIs information for the disputed domain name.
On January 15, 2020, the Parties exchanged email communications according to which Respondent claimed to be Complainant’s “Vendor” while Complainant, in turn, asked Respondent to provide the name of its contact person with Complainant, which Respondent apparently failed to do.
Complainant requests that the disputed domain name be transferred to Complainant.
Complainant contends to be a global leader in chemicals founded back in 1863 with its SOLVAY trademark nowadays being well-known all over the world, both thanks to Complainant’s international presence and to its marketing investments.
Complainant submits that the disputed domain name is identical with Complainant’s SOLVAY trademark as it incorporates the latter in its entirety, with the generic Top-Level Domain (“gTLD”) “.cloud” to be disregarded.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not commonly known by the disputed domain name, (2) Respondent has not been given any license or other permission to use Complainant’s SOLVAY trademark and apparently has not acquired such rights on its own, and (3) the disputed domain name is not linked to any active website, but given that the disputed domain name is identical with Complainant’s SOLVAY trademark, any good faith use of the disputed domain name by Respondent is inconceivable whatsoever.
Finally, Complainant argues that Respondent has registered the disputed domain name in bad faith since (1) given the well-known character of Complainant’s SOLVAY trademark, Respondent could not reasonably have been unaware of Complainant’s rights in the term “Solvay” when registering the disputed domain name, (2) the disputed domain name does not resolve to any active website and Respondent’s email address could not be verified, which is why it is difficult to imagine any plausible future active use of the disputed domain name by Respondent that would be legitimate and not infringing upon Complainant’s rights, and (3) Complainant’s use of cloud-based services has been extensively covered by the press, which is why non-infringing use of the disputed domain name under the gTDL “.cloud” again is inconceivable.
Respondent did not reply to Complainant’s contentions but instead sent an email communication on January 15, 2020 to a Solvay email account, stating that the registration of the disputed domain name is linked to the Mobile Apps and Business Intelligence automated reporting Respondent is currently developing for Solvay, as it is a Solvay’s Vendor.
Respondent alleged that it was focused on the timely delivery of the tools and do not want to take any actions which may put the deadlines in danger.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a substantial Response as it considers appropriate.
The Panel concludes that the disputed domain name <solvay.cloud> is identical with the SOLVAY trademark in which Complainant has rights.
The disputed domain name incorporates the SOLVAY trademark in its entirety. Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11) that the applicable gTLD in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test, though the meaning of this gTLD may be relevant to a panel assessment of the second or third element of the URDP. Accordingly, the existence of the gTLD “.cloud” does not dispel the finding of identity arising from the exclusive incorporation of Complainant’s SOLVAY trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not, according to Complainant, been authorized to use Complainant’s SOLVAY trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Solvay” on its own. Finally, Respondent did not provide evidence to have ever used the disputed domain name to resolve it to any valid content on the Internet. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (or as here possibly a surname), does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted to provide evidence of its allegations, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
As a general rule, Panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). 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 e.g., the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.
In the case at hand, it is undisputed between the Parties that Complainant’s SOLVAY trademark enjoys considerable recognition throughout the world, including in Poland where Respondent apparently is situated. Moreover, Respondent not only failed to submit a formal Response to the Complaint, but apparently also kept silent on Complainant’s request of January 15, 2020, to provide the name of its alleged contact person with Complainant. Accordingly, Respondent’s assertion to be Complainant’s “vendor” remains unsubstantiated and must, therefore, be classified as pretextual, which is why the case file does not contain any otherwise legitimate indication as to why Respondent needed to rely on the term “Solvay” in the disputed domain name if not to somehow profit from the reputation which Complainant’s SOLVAY trademark enjoys, especially given that Complainant’s use of cloud-based services has been extensively covered by the press. Against this background, it is more likely than not – regardless of the fact that the disputed domain name so far at no point resolved to any valid content on the Internet – that Respondent has registered and is using the disputed domain name in a way to take unfair advantage of or otherwise abuse Complainant’s SOLVAY trademark, thus acting in bad faith within the larger meaning of paragraph 4(b) of the Policy (see WIPO overview 3.0, section 3.3). Such finding is bolstered by the fact that the disputed domain name apparently has been suspended due to non-completion of an ICANN-mandated contact verification because of an unverified email address submitted in the WhoIs information for the disputed domain name, which also points to Respondent’s bad faith behaviour.
Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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.cloud> be transferred to Complainant.
Stephanie G. Hartung
Date: March 1, 2020
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