The Complainant is Solvay SA, Belgium, internally represented.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ahmed Bills, United States of America (“United States”).
The disputed domain name <support-solvay.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 24, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2020.
The Center appointed Andrew Lothian as the sole panelist in this matter on December 28, 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.
Founded in 1863, listed on the European Stock Exchange and with its registered office in Brussels, Belgium, the Complainant is in the chemical industry. The Complainant employs over 24,000 people in 64 countries and reported net sales of EUR 10.2 billion in 2019. The Complainant’s social media presence features over 58,000 followers on “www.facebook.com” and over 28,000 followers on “www.twitter.com”.
The Complainant does business under the SOLVAY brand and trademark, which ranked 10th in the “Belgium 10 2019” annual report on the most valuable and strongest Belgian brands, with a 2019 brand value of EUR 847 million. According to a list produced by the Complainant, it is the owner of multiple registered trademarks for the SOLVAY mark, covering territories across the globe. This includes, for example, International registered trademark no. 1171614 for the word mark SOLVAY, registered on February 28, 2013 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, and designated in respect of multiple territories, including the United States where the Respondent is based.
According to the relevant WhoIs record, the disputed domain name was created on October 20, 2020. A screenshot taken by the Complainant on November 16, 2020 shows that, at that date, the associated website displayed pay-per-click advertising which referenced certain of the Complainant’s lines of business and related terms, including chemicals and references to stock markets, along with other unrelated items.
Between September 22, 2020 and September 30, 2020, emails were issued to one of the Complainant’s customers bearing the sender’s address as “…”@support.solvay.com” in which payment of a substantial sum was requested. The Complainant states that these emails did not emanate from it and falsely used its identity.
The Complainant contends as follows:
The disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The disputed domain name incorporates the Complainant’s SOLVAY mark adding the descriptive term “support-”. Said mark is clearly recognizable within the disputed domain name and it is well-established that the addition of other terms, whether descriptive, meaningless or otherwise, and the generic Top-Level Domain (“gTLD”) does not prevent a finding of confusing similarity under the Policy.
The Respondent is not commonly known by the disputed domain name. The Respondent uses a privacy/proxy service aimed at hiding its identity and had the Respondent been known by the disputed domain name there would have been no need for it to shield this. The Respondent has not acquired trademark rights and has no license or permission from the Complainant to use its widely-known trademark. No actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. The disputed domain name points to a registrar parking page which includes pay-per-click links relating to the Complainant and its business, which does not constitute a fair or good faith use of the disputed domain name and is not a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark. The Respondent cannot disclaim responsibility for automatically generated pay-per-click links, nor would these ipso facto vest the Respondent with rights or legitimate interests. In view of the Complainant’s distinctive and well-known SOLVAY mark it is inconceivable that any good faith use would be made of the disputed domain name by the Respondent.
The Respondent issued emails to a customer of the Complainant with an email address based upon the disputed domain name. Said emails are confusingly similar to official emails of the Complainant and fraudulently use the Complainant’s corporate details with alternative contact details, constituting a phishing attempt. The Respondent has registered and used the disputed domain name to attract visitors looking for information about the Complainant. The disputed domain name refers to a registrar parking page containing pay-per-click links referencing the business activities of the Complainant. The fact that such links might have been generated by a third party or that the Respondent itself may not have directly profited would not by themselves prevent a finding of bad faith. It is impossible to imagine any plausible legitimate use of the disputed domain name by the Respondent in view of the well-known and distinctive character of the SOLVAY mark. The Respondent has taken active steps to conceal its identity, further supporting proof of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in its SOLVAY registered trademark with reference to the registration noted in the factual background section above.
Comparing the Complainant’s SOLVAY mark to the disputed domain name, it may be seen that the second level of the disputed domain name merely prefixes this with the descriptive word “support” and a hyphen separator. This is insufficient to avoid a finding of confusing similarity, noting that the Complainant’s mark remains fully recognizable in the disputed domain name. The gTLD, in this case “.com”, is typically disregarded in the comparison process as being wholly generic and required for technical reasons only.
In these circumstances, the Panel finds that the Complainant has rights in a mark and that the disputed domain name is confusingly similar to such mark. The Complainant has therefore established the first element test.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent is not commonly known by the disputed domain name, has received no permission or licence to use the Complainant’s mark therein, is not using the disputed domain name in connection with a bona fide offering of goods or services, and that the disputed domain name refers to a parking page containing pay-per-click links, which in part reference the Complainant’s line of business. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.
The Respondent has failed to file any Response in this administrative proceeding and has put forward no submissions or evidence demonstrating any rights or legitimate interests in the disputed domain name. There is no evidence before the Panel indicating that any of the items in paragraph 4(c) of the Policy might be relevant in the circumstances of this case. In particular, given the well-known and distinctive nature of the Complainant’s SOLVAY trademark, there is no suggestion that the Respondent could be making a bona fide offering of goods and services or be commonly known by the disputed domain name. Equally, the use of the disputed domain name in connection with pay-per-click advertising, which relates at least in part to the Complainant’s line of business, could not be regarded as a legitimate noncommercial or fair use in this case.
In these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The second element under the Policy has been established.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
On this topic, the Complainant focuses on the alleged use of the disputed domain name as part of a fraudulent “phishing” scheme and notes that the disputed domain name has also been used for a parking page featuring sponsored links referencing the line of business of the Complainant. The Complainant asserts that it has made out a case of registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy.
Taking the alleged phishing incident first, the Panel is not entirely convinced that the disputed domain name is necessarily connected with the emails which the Complainant has produced. Based on the fact that the Complainant asserts that it did not send these emails itself, it seems reasonably likely that they were generated as a result of fraudulent activity. Nevertheless, the emails do not use the disputed domain name itself but rather a sub-domain of a domain name which appears to belong to the Complainant, namely <solvay.com> and, of greater significance, such emails were sent almost a month before the disputed domain name was itself created. While the email subdomain does contain an obvious similarity to the disputed domain name, the Panel cannot see how the subsequently created disputed domain name could have been connected to this particular attempt in the absence of further elaboration as to how the scheme is supposed to have worked. That said, the Complainant makes a serious allegation regarding the conduct of the Respondent in this case and it is of some significance therefore that the Respondent has chosen to remain silent in the face of this.
Despite the lack of clear evidence connecting the disputed domain name to the alleged phishing attempt, the Panel is satisfied that the disputed domain name is targeting the Complainant’s rights and that the Respondent more probably than not had the Complainant in mind when it registered the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s distinctive and well-known mark, and it is therefore extremely unlikely that it might have been registered with any good faith purpose in mind. Furthermore, the disputed domain name has been used in connection with pay-per-click advertising which partially references the Complainant’s line of business and activities. Even if these links were not placed directly by the Respondent, it is responsible for the content found at the disputed domain name and does not require to have profited directly from it for bad faith to be made out (on this topic, see section 3.5 of the WIPO Overview 3.0). In the particular circumstances of this case, the fact that the Respondent also selected a privacy service to conceal its details from the WhoIs record is also suggestive of a bad faith motivation, such as an intention to maximize the period of time during which the pay-per-click links would remain active and/or an attempt to delay or frustrate the operation of the Policy.
The Respondent has received an opportunity to reply to the Complainant’s contentions on this topic and to provide an explanation of its motivation in registering and using the disputed domain name but has chosen to remain silent. In the absence of any suitable explanation, the Panel cannot identify a possible good faith reason for the Respondent’s registration and use of the disputed domain name.
In all of the above circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The third element under the Policy has therefore been established.
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 <support-solvay.com> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: January 11, 2021