WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Albemarle Corporation v. Marino Specogna

Case No. D2016-1960

1. The Parties

The Complainant is Albemarle Corporation of Charlotte, North Carolina, United States of America (“US”), represented by Ladas & Parry, US.

The Respondent is Marino Specogna of Surrey, British Columbia, Canada.

2. The Domain Name and Registrar

The disputed domain name <albemarlelithium.com> (the “Domain Name”) 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 September 28, 2016. On September 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 28, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2016. The Response was filed with the Center on October 18, 2016. On October 28, 2016, the Complainant filed an unsolicited Supplemental Filing.

The Center appointed David Taylor as the sole panelist in this matter on November 3, 2016. 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 global producer of catalyst solutions and performance chemicals based in the US and founded in 1994 (although its origins can be traced back to 1887). Its main website is available at “www.albemarle.com” (the domain name <albemarle.com> was registered on August 13, 1995).

The Complainant has supplied evidence that it owns trade mark registrations in the term ALBEMARLE in connection with chemicals used in industry and in science in many jurisdictions around the world, including in the US and Canada. For instance, US Trade mark No. 3,017,335, ALBEMARLE, registered on November 22, 2005, for goods and services in classes 1, 5 and 40; US Trade mark No. 3,080,479, ALBEMARLE, registered on April 11, 2006, for goods and services in classes 1, 5 and 40; and Canadian Trade mark No. TMA447653, registered on September 15, 1995.

The Domain Name was registered on May 11, 2016. It is currently being used to redirect to a website available at “www.trumpprimaries.com”, which contains information about lithium (including stock picks), links that resolve to websites about Donald Trump (at the time of filing, the Republican candidate for the US presidential election) and also displays at the bottom the message “This domain is for sale”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is nearly identical to its ALBEMARLE trade mark as it wholly incorporates the mark and simply adds to it the generic term “lithium”, which does not prevent a finding of confusing similarity. The Complainant further argues that the addition of the generic term “lithium” may have the effect of increasing confusion as that the Complainant is the industry leader in lithium and lithium derivatives and recently acquired Rockwood Lithium, a global provider of lithium compounds. The Complainant asserts that the addition of the suffix “.com” does not distinguish the Domain Name from the Complainant’s trade mark because it is a functional necessity rather than an arbitrary choice. The Complainant further argues that the Domain Name is nearly identical to many domain name registrations under which the Complainant conducts its business, such as <albemarle.com> and <albemarle-lithium.com>.

The Complainant states that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant argues that the Respondent registered the Domain Name without the Complainant’s authorisation or consent. The Complainant also states that the Respondent’s use of the Domain Name to redirect to “www.trumpprimaries.com” which displays links to other websites relating to lithium and to the Donald Trump presidential campaign as well as to websites containing information about the Complainant’s competitors is not bona fide or a legitimate noncommercial or fair use of the Domain Name under the Policy. The Complainant also asserts that there is no evidence that the Respondent has been commonly known by the Domain Name.

The Complainant asserts that the Domain Name was registered and is being used in bad faith. The Complainant argues that the Respondent registered the Domain Name to prevent the Complainant from reflecting its ALBEMARLE trade mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct, as he is the registrant of a number of domain names, including but not limited to <edhardydenims.com>, <applelithium.com>, <applechargingstation.com>, <appleelectricvehicle.com> and <facebooknewsmanipulation.com>, which incorporate well-known third party trade marks such as APPLE, ED HARDY, and FACEBOOK. The Complainant argues that such conduct demonstrates that the Respondent is a systematic cybersquatter who registered the Domain Name in bad faith.

The Complainant further explains that it contacted the Respondent on June 16, 2016 offering to purchase the Domain Name and that the Respondent offered to sell it originally for CAD 25,000 and then increased the price to 50,000 when the Complainant attempted to negotiate a lower price. On August 2, 2016, the Complainant’s representative sent a demand letter to the Respondent and the Respondent replied on August 18, 2016 offering to sell the Domain Name for “10,000 free trading common shares in Albemarle Corporation”, the market value of which at the time was approximately USD 80,000. The Complainant submits that the Respondent’s offer to sell the Domain Name for a purchase price higher than his out-of-pocket expenses directly related to the Domain Name is evidence of bad faith registration under the Policy.

B. Respondent

The Respondent, who is not represented by counsel, appears to rely on a number of precedents related to trade mark and contract law and argues that he acquired the Domain Name in good faith. The Respondent argues that the Domain Name was available for purchase and that “all rights to partial trade mark use were relinquished by sunrise period, and exhaustion of time to act”. The Respondent thus asserts that the Complaint is frivolous.

The Respondent also appears to rely on purchases of other domain names reported by the media such as <google.com> and <clintonkaine.com>, for USD 12,000 and USD 15,000, respectively, to justify his acquisition of the Domain Name.

The Respondent further asserts that the Complainant does not own exclusive rights to the term ALBEMARLE and refers to the existence of other trade marks consisting of the term ALBEMARLE that are not owned by the Complainant. The Respondent further argues that the Complainant’s trade mark does not contain any reference to lithium, whether in the name or in the goods or services for which they have been registered. The Respondent has also provided a list showing that there are many domain names following the format <albermarlelithium.TLD> available for registration which in the Respondent’s view proves that the Complainant does not have any interest in such domain names but only in <albemarle-lithium.TLD>. The Respondent underlines that the Complainant had ample time to secure the Domain Name and other domain names that it deemed important to its trade mark, as the Sunrise Period expired a long time ago. The Respondent therefore asserts that the Domain Name was registered legitimately in accordance with the procedures approved by the Internet Corporation for Assigned Names and Numbers (ICANN) as it was available for registration.

The Respondent also invokes the fair use defence as he has recommended the Complainant’s stock on the website associated with the Domain Name and has never disparaged the Complainant. The Respondent also denies that he has ever offered for sale on the associated website products of the Complainant’s competitors.

The Respondent denies that he registered the Domain Name for the purpose of selling it or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs. In this regard, the Respondent underlines that it was the Complainant who contacted the Respondent via an invitation to treat on the website. The Respondent argues that the Complainant made an offer to purchase the Domain Name anonymously which the Respondent rejected. Once the Complainant revealed its identity, the Respondent made an offer and then accepted the Complainant’s counteroffer. The Respondent argues that the accepted offer is “clearly an agreement to sale” and that the Complainant may not seek to withdraw the accepted offer by means of these proceedings.

The Respondent also denies that he registered the Domain Name to prevent the Complainant from reflecting its trade mark and has not engaged in a pattern of such conduct. The Respondent states that he is in the business of acquiring and selling mineral right interests and has completed over 100 legal agreements since 2008 in respect to selling mineral rights and titles in Canada, and that he owns many domain names related to lithium to use as invitation to treat. The Respondent therefore denies that he is a cybersquatter and that this is shown by the fact that he did not accept the Complainant’s anonymous offer (and that he did not put the Domain Name up for auction). The Respondent further argues that it was the Complainant who acted in bad faith by contacting the Respondent anonymously, then denying being a public company in the correspondence but admitted in its Complaint that it was in fact the anonymous initiator of negotiations.

The Respondent further argues that the Complainant and the Respondent are not competitors and denies that he registered the Domain Name for the purpose of disrupting the Complainant’s business or to attract for commercial gain Internet users to the Respondent’s website.

Finally, the Respondent asserts that he does not consent to the remedy proposed by the Complainant but “is willing to pursue the pre-decision settlement by negotiating the sale of the domain to the Complainant as per the agreed Complainant counteroffer of value USD 83,000 that was accepted by the Respondent”. The Respondent also requests that “punitive damages in favour of the Respondent against the Complainant be issued”.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Preliminary issue: Complainant’s Unsolicited Supplemental Filing

With regard to the Complainant’s Unsolicited Supplemental filing, the consensus view amongst WIPO panelists as per paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) is that “Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’ circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing”.

The Panel has examined the Complainant’s unsolicited supplemental filing which responds to the Respondent’s assertions. However, the Panel is able to reach its decision without taking into consideration the arguments put forward by the Complainant in its unsolicited supplemental filing.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in ALBEMARLE in connection with chemicals used in industry and in science. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. The Domain Name incorporates the Complainant’s ALBEMARLE trade mark in its entirety with the addition of the generic term “lithium”, a chemical element. Prior UDRP panels deciding under the Policy have held that “when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy”. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, the addition of the generic term “lithium” does not diminish the confusing similarity with the Complainant’s trade mark as the Complainant’s trade mark is the dominant component in the Domain Name. See, for instance, Pfizer Inc. v. William James, WIPO Case No. D2004-0583 (<buy-generic-viagra-sildenafil-citrate.biz>) (“It is an established principle that the mere addition of generic terms does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name at issue and the complainant’s trademark”). Furthermore, the Panel finds that the addition of the term “lithium” exacerbates the confusing similarity with the Complainant’s trade mark as it is a term that is strongly related to the Complainant and its activities.

The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded for the purpose of assessing identity or confusing similarity as it is a functional element. See paragraph 1.2 of the WIPO Overview 2.0.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s ALBEMARLE trade mark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that the respondent has no rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; 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 trade mark or service mark at issue.

A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant. See paragraph 2.1 of the WIPO Overview 2.0.

The Complainant was founded in 1994 and has registered trade mark rights for ALBEMARLE since at least 1995. The Complainant does not appear to have licensed or otherwise authorised the Respondent to use its trade mark, in a domain name or otherwise, and there is no evidence suggesting that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

The Respondent’s use of the Domain Name to redirect to the website at “www.trumpprimaries.com” cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraphs 4(c)(i) and (iii) of the Policy, as the Respondent is using the Domain Name to profit from the trade mark value attached to the Complainant’s trade mark to misleadingly divert Internet users searching for the Complainant to the Respondent’s website. The Respondent’s argument that he is providing a positive recommendation for the Complainant on his website is not relevant.

The Respondent argues that he is in the business of acquiring and selling mineral right interests since 2008 in Canada, and has acquired many domain names related to lithium to use as “invitation to treat” seeking to justify a right or legitimate interest in the Domain Name. Whilst the practice of acquiring and selling domain names for profit is not in itself illegitimate, it is so when the domain name in question, as in the present case, is identical or confusingly similar to a trade mark and there is evidence that it was acquired for its trade mark value as opposed to its generic value, if any. The Panel is therefore of the view that in the circumstances of this case, the Respondent’s mere offer to sell the Domain Name cannot give rise to rights or legitimate interests in the Domain Name. See Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (“There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name ‘toefl.com’, other than that it has registered and offered to sell the domain name. …the Panel finds that the mere offering of the domain name for sale to any party does not constitute a right or legitimate interest in that name”).

The Respondent also argues that the Complainant’s failure to register the Domain Name during the Sunrise Period implies that the Complainant relinquished its rights in the Domain Name. A complainant is under no obligation to make use of the Sunrise period in order to protect its trade mark. See Germanwings GmbH v. Domain Admin. Privacy Protect.org/Artur Lewandowski, WIPO Case No. D2009-1155 (“The Complainant is under no obligation to use the provisions available during the sunrise period in order to protect its mark. It is perfectly free to invoke the Policy after the sunrise period, and this whether or not it invoked the special provisions available during the sunrise period”). The Panel thus find that the fact that the Complainant decided not to register the Domain Name during the Sunrise period does not extinguish its trade mark rights and neither does it confer upon the Respondent a right or legitimate interest in the Domain Name.

Given the above, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that the Respondent has failed to rebut such a showing.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:

(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel finds that the Respondent registered the Domain Name in bad faith. The Complainant’s ALBEMARLE trade mark predates the Domain Name by at least 20 years and has been used extensively in connection with chemicals used in industry and in science, such as lithium, in many jurisdictions around the world, including in Canada, where the Respondent is based. Given the nature of the Domain Name, which reproduces the Complainant’s trade mark in conjunction with the term “lithium”, which is strongly related to the Complainant’s activities, the Panel finds, on the balance of probabilities, that the Respondent was aware of the Complainant’s rights at the time of registration of the Domain Name and that he registered it in bad faith seeking to take advantage of the Complainant’s rights (as described further below). The fact that the website contains an explicit reference to the Complainant leaves no doubt as to the Respondent’s knowledge of the Complainant’s rights.

The fact that the Domain Name was available for registration is of no consequence. As held by prior UDRP panels deciding under the Policy, “the Policy does not impose [upon trade mark holders] an obligation to register their trademarks as domain names...; nor does it penalize failure to do so by permanently releasing the domain name to any other comer. Rather, the Policy prohibits people from registering someone else’s trademark as a domain name to take advantage of it for its trademark significance”. See Maplin Electronics Limited v. ME New Enterprise, Mayni Efrem, WIPO Case No. DCO2010-0016 (<maplin.co>).

The Panel further finds that the Respondent registered the Domain Name in order to prevent the complainant from reflecting its trade mark or service mark and that the Respondent has engaged in a pattern of such conduct, in accordance with paragraph 4(b)(ii) of the Policy, given that, as demonstrated by the evidence put forward by the Complainant, the Respondent is the registrant of a number of domain names which incorporate well-known third party trade marks.

The Panel also finds that the Respondent’s use of the Domain Name to redirect to a website offering the Domain Name for sale strongly suggests that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant or to a competitor, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name, in accordance with paragraph 4(b)(i) of the Policy. This is further confirmed by the Respondent’s response to the Complainant’s demand letter, whereby he offered to sell the Domain Name for “10,000 free trading common shares in Albemarle Corporation” (or approximately 80,000 USD). The fact that the Complainant had previously contacted the Respondent further to the Respondent’s offer on the website does not reduce or eliminate the Respondent’s bad faith.

The Complainant has therefore satisfied paragraph 4(a)(iii) 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 Domain Name, <albemarlelithium.com>, be transferred to the Complainant.

David Taylor
Sole Panelist
Date: November 21, 2016