Solvay Société Anonyme v Manlidy, GNN

WIPO Case No. D2023-0966

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Solvay Société Anonyme v. Manlidy, GNN

Case No. D2023-0966

1. The Parties

The Complainant is Solvay Société Anonyme, Belgium, represented by PETILLION, Belgium.

The Respondent is Manlidy, GNN, Singapore.

2. The Domain Name and Registrar

The disputed domain name <solvaypharm.com> is registered with OwnRegistrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2023. On March 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2023, the Registrar transmitted by email to the Center its verification response registrant and contact information for the disputed domain name which differed from the named Respondent (WhoisSecure) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2023 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 March 8, 2023.

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 March 10, 2023. In accordance with the Rules, paragraph
5, the due date for Response was March 30, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 3, 2023.

The Center appointed Mihaela Maravela as the sole panelist in this matter on April 17, 2023. 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

According to information in the Complaint, the Complainant is a global science company specialised in high- performance polymers and composites technologies, and a leader in chemicals. The Complainant’s group was founded in 1863, has its registered offices in Brussels and employs more than 21,000 people in 63 countries.

The Complainant has registered various trademarks consisting of SOLVAY, such as the European Union
trademark registration for SOLVAY (word), registered under No. 000067801 on May 30, 2000, and the
International trademark registration for SOLVAY (word), registered under No. 1171614 on February 28,
2013. The Complainant owns the domain name <solvay.com> since 1995, and uses it to refer to its official
website and for its internal mailing system.

The disputed domain name was registered on February 16, 2023, and does not resolve to an active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the trademark SOLVAY in which the Complainant has rights, as the disputed domain name incorporates the Complainant’s SOLVAY trademark in its entirety and simply adds the descriptive term “pharm”.

As regards the second element, the Complainant argues that the Respondent is not commonly known by the disputed domain name. Further, the Respondent has not acquired trademark rights and the Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. Moreover, the disputed domain name incorporates the distinctive and well-known SOLVAY trademark and company name of the Complainant in its entirety and simply adds the descriptive term “pharm” which is a common abbreviation for “pharmaceutical”. The use of this term increases the risk for confusion as the Complainant offers a range of materials and chemicals for various pharmaceutical applications.

With respect to the third element, the Complainant argues that the Respondent must have known the Complainant and its trademarks at the time the Respondent registered the disputed domain name given that the disputed domain name includes the Complainant’s distinctive trademark in its entirety and combines it with a descriptive suffix that does nothing to avoid any confusion and the fact that the Complainant’s trademark is well-known all over the world. In what concerns the use, the Complainant contends that the disputed domain name does not resolve to an active website but under the circumstances of the case it is impossible to imagine any plausible legitimate use of the disputed domain name by the Respondent, especially in view of the global reach of the Complainant and the distinctive character of its trademarks. Moreover, the Respondent (and its organization) has already been found to be in bad faith in various UDRP proceedings, which demonstrates a pattern of trademark-abusive domain name registrations.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Matters

No communication has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant email and postal addresses disclosed by the Registrar, the Panel considers that this

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satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of

the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the
evidence”, and the Panel can draw certain inferences in light of the particular facts and circumstances of the
case. See section 4.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0“).

6.2 Substantive Matters

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its rights in the SOLVAY trademarks.

The disputed domain name consists of the SOLVAY trademark, in addition to the term “pharm” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of “pharm” does not prevent a finding of confusing similarity with the Complainant’s trademarks. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such trademarks. The addition of another term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.

The gTLD is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie case demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). In the present case, the Complainant has established a prima facie case that it holds rights over the

trademark SOLVAY and claims that the Respondent has no legitimate reason to acquire and use the
disputed domain name.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, nor does the Respondent appear to engage in any legitimate noncommercial

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or fair use of the disputed domain name within the meaning of paragraphs 4(c)(i) and (iii) of the Policy. Also,
there is no evidence that the Respondent is commonly known by the disputed domain name within the
meaning of paragraph 4(c)(ii) of the Policy. The Respondent has not replied to the Complainant’s
contentions, claiming any rights or legitimate interests in the disputed domain name.

Moreover, the nature of the disputed domain name, comprising the Complainant’s trademark in its entirety, adding the term “pharm” that might refer to the Complainant’s services cannot be considered fair as it falsely suggests an affiliation with the Complainant that does not exist (see section 2.5 of the WIPO Overview 3.0).

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfil the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

According to the unrebutted assertions of the Complainant, its SOLVAY trademarks were widely used in commerce well before the registration of the disputed domain name in February 2023 and are well known. The Respondent provided no explanations for why it registered the disputed domain name. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name.

As regards the use, the disputed domain name is passively held.

Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain will be considered to be in bad faith: “While panelists will look at the totality of the circumstances in each case, 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 its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

The Panel finds that passive holding of the disputed domain name does not, in the circumstances of this case, prevent a finding of bad faith. There is no evidence in the record of a legitimate use of the disputed domain name. The trademark of the Complainant is distinctive and widely used in commerce. UDRP panels

have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

Moreover, the Respondent has not formally participated in these proceedings and has failed to rebut the
Complainant’s contentions and to provide any evidence of actual or contemplated good-faith use and indeed
none would seem plausible. In addition, the Respondent engaged the use of a privacy service to mask its
details on the publicly-available WhoIs, which further supports an inference of bad faith. Also, there appears
to be a pattern of abusive registrations by the Respondent, as the unrebutted evidence in the case file shows
that the Respondent was involved in other UDRP proceedings where the UDRP panels decided in favor of
the complainants (e.g. Loft Ipco LLC v. Manlidy, GNN, WIPO Case No. D2022-4627). This fact also
supports a finding grounded on paragraph 4(b)(ii) of the Policy, referring to a respondent registering “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”.

Considering all the above, it is not possible to conceive any plausible actual or contemplated good faith registration and use of the disputed domain name by the Respondent.

Based on the evidence and circumstances of this case, the Panel concludes that the disputed domain name was registered and used in bad faith and the requirement of paragraph 4(a)(iii) of the Policy is satisfied.

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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 <solvaypharm.com> be transferred to the Complainant.

/Mihaela Maravela/
Mihaela Maravela
Sole Panelist
Date: April 26, 2023