Solvay SA v Moses Mawanda, MRSOFT Consults

WIPO Case No. D2022-0978

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Solvay SA v. Moses Mawanda, MRSOFT Consults

Case No. D2022-0978

1. The Parties

The Complainant is Solvay SA, Belgium, represented by Petillion, Belgium.

The Respondent is Moses Mawanda, MRSOFT Consults, Uganda.

2. The Domain Name and Registrar

The disputed domain name <solvaysolutionsuglimited.com> is registered with Internet Domain Service BS

Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2022. connection with the disputed domain name. On March 23, 2022, 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 March 28, 2022. In accordance with the Rules, paragraph
5, the due date for Response was April 17, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 19, 2022.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on April 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.

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4. Factual Background

The Complainant is a global science company specialized in high-performance polymers and composites technologies, and a leader in chemicals. The Complainant’s group was founded in 1863 and employs more than 23,000 people in 64 countries. The Complainant has numerous wholly owned subsidiaries, including Solvay Solutions UK Ltd.

The Complainant owns trademark registrations in various jurisdictions, including the European Union
trademark SOLVAY (Reg. No. 000067801, registered on May 30, 2000) and the International trademark
SOLVAY (Reg. No. 1171614, registered on February 28, 2013).

The Complainant further holds the domain name <solvay.com> under which the official website of the Complainant is available. The Complainant advertises and sells its services through its <solvay.com> domain name.

The disputed domain name was registered on October 14, 2021 and resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

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

6. Discussion and Findings

Based on the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and

(c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence to demonstrate its registered rights in the SOLVAY trademark.

The SOLVAY trademark is wholly reproduced in the disputed domain name.

A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Hence, the Panel holds that the addition of the terms “solutions”, “ug” and “limited” to the Complainant’s SOLVAY trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

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B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of
the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the
Complainant nor making any bona fide use of the disputed domain name.

Furthermore, the composition of the disputed domain name, wholly incorporating the Complainant’s trademark and the terms “solutions” (which appears related to the Complainant’s business and its United Kingdom subsidiary), “ug” (the country code for Uganda, where the Respondent is located) and “limited”, cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the

Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

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. The totality of the circumstances in each case will be examined, and factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing of its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put (see WIPO Overview 3.0, section 3.3).

Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, the Panel finds that the Respondent was most likely aware of the Complainant’s trademark when registering the disputed domain name. The Respondent did not submit any response or provide any evidence of actual or contemplated good-faith use in these proceedings. The Panel sees no plausible good faith use to which the disputed domain name may be put. The Respondent has therefore registered and is using the disputed domain name in bad faith.

Accordingly, the Complainant has also fulfilled 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 disputed domain name <solvaysolutionsuglimited.com> be transferred to the Complainant.

/Tobias Zuberbühler/
Tobias Zuberbühler
Sole Panelist
Date: May 3, 2022