Sipchem Europe SA v Rintuu Mukherjjee

WIPO Case No. D2024-2788

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sipchem Europe SA v. Rintuu Mukherjjee

Case No. D2024-2788

1. The Parties

The Complainant is Sipchem Europe SA, Switzerland, represented by Watson Farley & Williams

(Middle East) LLP, United Arab Emirates.

The Respondent is Rintuu Mukherjjee, India.

2. The Domain Name and Registrar

The disputed domain name <sipchemcorporation.com> 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 July 12, 2024.

On July 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On July 15, 2024, 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 (Unknown [Redacted for Privacy]) and contact information in the

Complaint. The Center sent an email communication to the Complainant on July 16, 2024, 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 amended Complaint on July 16, 2024.

The Center verified that the Complaint together with the amended 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 July 17, 2024. In accordance with the Rules, paragraph 5,

the due date for Response was August 6, 2024. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on August 7, 2024.

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The Center appointed Anna Carabelli as the sole panelist in this matter on August 21, 2024. 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 the trading and marketing entity of Sahara International Petrochemical Company

(Sipchem), a listed Saudi Arabian leading chemical manufacturing company.

The Complainant is owner of the International Trademark Registration No. 1470136 for the word mark

SIPCHEM, registered on April 18, 2019, in classes 1, 17, 22 and 35.

The disputed domain name was registered on May 28, 2024, and connects to a free parking page of the

Registrar displaying the following notice:

“Sipchemcorporation.com

is parked free, courtesy of GoDaddy.com

Get this domain.”

As per the evidence in the Complaint, the IPs addresses associated with the disputed domain name are

reported as possibly associated with malicious activities.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the disputed domain name.

Notably, the Complainant contends that:

- the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, since

it is an exact reproduction of the Complainant’s SIPCHEM mark, save for the addition of the word

“corporation”;

- The Respondent has no rights or legitimate interests in the disputed domain name since: (i) the

Respondent is not commonly known by the disputed domain name; (ii) the Complainant has not authorized

or somehow given consent to the Respondent to register and use the disputed domain name; and (iii) the

Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a

legitimate noncommercial or fair use, particularly considering that the IPs associated with the disputed

domain name are reported as malicious IPs addresses; and

- given the high degree of renown of the Complainant and its SIPCHEM trademark, the disputed domain

name was registered and is being used in bad faith, to divert Internet users and to tarnish the Complainant’s

registered trademark.

Based on the above the Complainant requests the disputed domain name be cancelled.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the panel to decide the complaint based on the statements and

documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it

deems applicable.

Under paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

complainant has rights; and

(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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of

paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the

respondent, shall be evidence of the respondent’s rights to or legitimate interests in a disputed domain name

for the purpose of paragraph 4(a)(ii) of the Policy above.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing

(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison

between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the Complainant’s registered trademark SIPCHEM is reproduced and

recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly

similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The addition of the

generic Top-Level Domain, such as “.com”, is viewed as a standard registration requirement and as such is

typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

Although the addition of other terms, here the word “corporation”, may bear on assessment of the second

and third elements, the Panel finds the addition of such term does not prevent a finding of confusing

similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or

legitimate interests, the burden of production on this element shifts to the respondent to come forward with

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relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

Policy or otherwise. There is no indication before the Panel of any activity in relation to the disputed domain

name that would give rise to rights or legitimate interests to the Respondent. Moreover, as noted in section

6.A above, the disputed domain name is confusingly similar to the Complainant’s SIPCHEM trademark and

carries a risk of implied affiliation with the Complainant. Such a risk for implied affiliation cannot constitute

fair use. WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

In the present case, having considered the Complainant’s submissions and in the absence of a Response, in

the Panel’s view it is difficult to believe that the Respondent did not have in mind the Complainant’s

trademark when registering the disputed domain name. Prior panels have consistently found that the mere

registration of a domain name that is identical or confusingly similar (particularly domain names incorporating

the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by

itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4).

As to bad faith use, the evidence submitted with the Complaint shows that the disputed domain name does

not point to an active website and connects to the Registrar’s free parking page. It should be noted that the

Registrar’s free parking page may well only be a temporary interim use pending some other abusive use that

the Respondent has in mind, and in the view of the Panel that threat itself may constitute a continuing use of

the disputed domain name in bad faith.

In any case, Panels have found that the non-use of a domain name would not prevent a finding of bad faith

under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel finds that in the circumstances of this case the passive

holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Specifically,

the Panel notes that: (i) the Complainant’s trademark is distinctive and well established; (ii) the Respondent

has failed to submit any claims or evidence of good-faith use; (iii) the absence of any relationship between

the Respondent and the Complainant; and (iv) given the confusing similarity to the Complainant’s

trademark, there is no conceivable good faith use to which the disputed domain name could be put by the

Respondent, that would not result in creating a misleading impression of association with the Complainant.

For all the above reasons, the Panel finds that the disputed domain name was registered and is being used

in bad faith by the Respondent.

Therefore, the Complainant has established the third element of the Policy.

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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 disputed domain name <sipchemcorporation.com> be cancelled.

/Anna Carabelli/

Anna Carabelli

Sole Panelist

Date: September 4, 2024