Solidium Oy v Privacy Service Provided by Withheld for Privacy ehf /

WIPO Case No. D2022-3139

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Solidium Oy v. Privacy Service Provided by Withheld for Privacy ehf /
EstormH Etormhosting, Estorm Programming

Case No. D2022-3139

1. The Parties

Complainant is Solidium Oy, Finland, represented by Properta Attorneys Ltd, Finland.

Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / EstormH Etormhosting,

Estorm Programming, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <solidiuminvestments.com> (hereinafter the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2022. On August 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 25, 2022, 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 Complainant on August 26, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 29, 2022.

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 Respondent of the Complaint, and the proceedings commenced on September 1, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 22, 2022.

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The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 26, 2022. 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

Founded in 2008, Complainant is a Finnish state-owned investment company that offers portfolio management and advisory services to individuals, institutions, trusts, private funds, charitable organizations, and investment companies. Complainant owns a Finnish trademark registration for the mark SOLIDIUM, covering, in part, financial services; financial planning and investment advisory services; asset management services; management of investment funds; and investment services in Class 36 (Reg. No. 279110) (Registered November 23, 2020) (the “Mark”). Complainant also owns the domain name <solidium.fi>.

Respondent registered the Disputed Domain Name on December 15, 2021, after Complainant registered its SOLIDIUM mark. The webpage associated with the Disputed Domain Name resolves to a webpage replicating the look and feel of Complainant’s website, including featuring Complainant’s Mark, Complainant’s logo, Complainant’s corporate address, and a link to Complainant’s Finnish corporate registration certificate. Additionally, the webpage features links to select “investment plans,” which provide text fields for visitors to provide personal financial information.

5. Parties’ Contentions

A. Complainant

Complainant contends that its Finnish trademark registration establishes its rights in the SOLIDIUM trademark and that the Disputed Domain Name is confusingly similar to its registered mark. Complainant further alleges that the addition of the descriptive term “investments” to the Mark in the Disputed Domain Name does not prevent confusion, but rather increases the likelihood that visitors to the website will be confused because Complainant offers investment services.

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name
as Complainant has not authorized Respondent to use the SOLIDIUM mark. Complainant alleges that
Respondent’s use of Complainant’s Mark and the incorporation of Complainant’s corporate information on
the webpage associated with the Disputed Domain Name, is meant to deceive users into believing the
Disputed Domain Name is associated with Complainant.

Complainant contends that Respondent registered and continues to use the Disputed Domain Name in bad faith. Specifically, Complainant states that Respondent is trying to attract Internet users to its website and mislead them to believe that the Disputed Domain Name belongs to Complainant. Complainant also alleges that Respondent is using the Disputed Domain Name as part of a scheme to obtain financial information as the website associated with the Disputed Domain name encourages users to provide information and invest their money in “investment plans” purportedly offered by Respondent. According to Complainant, this alleged scam has caused harm to Complainant’s business.

Complainant further states that Respondent has demonstrated knowledge of Complainant through its use of
Complainant’s address and company data shown on the website associated with the Disputed Domain
Name.

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B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant’s trademark registration establishes that it has rights in the SOLIDIUM services).

mark. The Panel further finds that, because the Disputed Domain Name incorporates Complainant’s Mark
entirely, it is confusingly similar to Complainant’s registered mark. Respondent’s addition of the term
“investments” in the Disputed Domain Name does not prevent a finding of confusing similarity. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.8; see also Accenture Global Services Limited v. Steffen Bartsch/crypto earn, WIPO Case No.
D2021-0505 (transferring the domain name <accenture-investment.com> to complainant Accenture Global

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

B. Rights or Legitimate Interests

Complainant has presented a prima facie case for Respondent’s lack of rights or legitimate interests in the
Disputed Domain Name, which Respondent has not rebutted. Complainant has not authorized Respondent
to use its Mark and Respondent’s registration of the Disputed Domain Name without any relationship to
Complainant or Complainant’s Mark itself creates a strong presumption that Respondent lacks rights or
legitimate interests in the Disputed Domain Name. See, e.g., Pfizer Inc. v. NA, WIPO Case No.

D2005-0072.

Additionally, Respondent’s replication of the look and feel of Complainant’s website, as well as
Complainant’s corporate address and certificate of registration, is evidence that Respondent has engaged in
a dishonest impersonation of Complainant with the intent to mislead Internet users. Because Respondent is
passing off its services as those of Complainant, there is no bona fide offering of goods or services, or
legitimate noncommercial or fair use of the Disputed Domain Name, within the meaning of paragraphs 4(c)(i)
and (iii) of the Policy. See WIPO Overview 3.0, section 2.13.1 (“the use of a domain name for illegal activity
(e.g., […] impersonating/passing off, or other types of fraud) can never confer rights or legitimate interests on
a respondent”).

The Panel finds that Respondent does not have rights or legitimate interests in the Disputed Domain Name and that Complainant has satisfied paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith. The fact that the Disputed Domain Name resolves to a website that has the same look and feel as Complainant’s website, and includes Complainant’s corporate address and registration certificate, leads the Panel to conclude that

the registration and use of the Disputed Domain Name are in bad faith. By copying the look and feel of
Complainant’s website in order to impersonate Complainant, it is clear that Respondent was aware of and
targeted Complainant in bad faith. See Elliott Investment Management L.P. v. Domains By Proxy, LLC,
DomainsByProxy.com / Murat Akbala, WIPO Case No. D2022-2699.

Additionally, because the website associated with the Disputed Domain Name intentionally misleads consumers to believe the website is affiliated with Complainant and allows consumers to input financial information for Respondent’s purported ‘”investment services,” it is clear that Respondent is using the

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Disputed Domain as part of a scam or fraudulent scheme. Such use of a domain name is evidence of bad
faith. See Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk,
WIPO Case No. D2020-2773; see also FIL Limited v. fidelity-investments-ivanov.com, Domain Discreet

Privacy Service / Igor Ivanov, WIPO Case No. D2014-0131.

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 <solidiuminvestments.com> be cancelled.

/Lawrence K. Nodine/
Lawrence K. Nodine
Sole Panelist
Date: October 10, 2022