Solvay Société Anonyme v Quisha Jackson

WIPO Case No. DCO2022-0118

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

SOLVAY Société Anonyme v. Quisha Jackson

Case No. DCO2022-0118

1. The Parties

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

The Respondent is Quisha Jackson, United States of America (“U.S.”).

2. The Domain Name and Registrar

The disputed domain name <solvaycorp.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2022. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on December 19, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint.

The Center sent an email communication to the Complainant on December 20, 2022 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 also on December 20, 2022.

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 December 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2023.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on January 16, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

It results from the Complainant’s undisputed allegations that 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. Its net sale was EUR 10.1 billion in 2021.

The Complaint is based amongst others on the European Union trademark (verbal) SOLVAY, registered on applied for before the date of registration of the disputed domain name.

The Respondent registered the disputed domain name on August 31, 2022. The language of the registration agreement at the time of registration was English.

It results from the undisputed evidence provided by the Complainant that the disputed domain name resolved to a parking website showing pay-per-click (PPC) links to topics such as “Pharma” or “Chemical Vendors”. Furthermore, the Respondent registered – in the same month as the disputed domain name – the further domain name <solvaycorp.com>, which is nearly identical to the disputed domain name and which has already been found to be an abusive registration by a UDRP panel in Solvay Société Anonyme v. Quisha Jackson, Jack fit n ups, WIPO Case No. D2022-3305.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant asserts that the Disputed Domain Name is confusingly similar to its SOLVAY trademarks, since it incorporates the Complainant’s mark in its entirety and simply adds the descriptive abbreviation “corp”. Consequently, the distinctive SOLVAY mark is clearly recognizable within the disputed domain name.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent is named Quisha Jackson, which confirms that she/he is not commonly known by the disputed domain name. Furthermore, Respondent has not acquired trademark or service mark rights and Respondent’s use and registration of the disputed domain name was not authorized by Complainant. In addition, the construction of the disputed domain name itself is such to carry a risk of implied affiliation with the Complainant, which cannot constitute fair use. Finally, the Respondent has engaged in a pattern of registering domain names corresponding to the Complainant’s mark, since she/he recently registered the nearly identical domain name <solvaycorp.com>, which has already been found to be an abusive registration by a previous UDRP panel.

Thirdly, the Respondent’s registration and use of the disputed domain name constitutes – in the Complainant’s view – bad faith under several aspects: (1) it is inconceivable that the Respondent was unaware of the Complainant and its trademarks SOLVAY at the time of registration of the disputed domain name, (2) by registering the disputed domain name, the Respondent prevents the Complainant from reflecting its mark in a corresponding domain name, (3) the Respondent has engaged in a pattern of such conduct by registering at least one other domain name corresponding to the Complainant’s mark, (4) the Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, (5) 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 well-known and distinctive character of its trademarks and, finally, (6) the

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Respondent took active steps to conceal his/her identity behind a privacy shield.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(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.

The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will, therefore, proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

According to the Complainant’s contentions supported by undisputed evidence, it is the owner of a portfolio
of trademark registrations consisting of the verbal element SOLVAY, e.g. European Union trademark (verbal)
No. 000067801 registered on May 30, 2000.

Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark for purposes of the first element where the relevant trademark is recognizable within the disputed domain name. Under such circumstances, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (cf. section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This Panel shares the same view and notes that the disputed domain name contains the Complainant’s registered trademark SOLVAY. In particular, the Panel considers the addition of the element “corp” to the Complainant’s trademark in the disputed domain name, would not prevent a finding of confusing similarity under the first element of the UDRP. The Panel has no doubts that in a side-by-side comparison of the disputed domain name and the relevant trademark SOLVAY, the latter mark remains clearly recognizable within the disputed domain name.

Finally, the country code Top-Level Domain (“ccTLD”) “.co” of the disputed domain name may be disregarded under the first element confusing similarity test (see section 1.11.1 of the WIPO Overview 3.0).

In the light of the above, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

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B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to
be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name.
In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima
facie case that none of these circumstances are found in the case at hand and, therefore, that the

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

It results from the records that the disputed domain name resolved to a website featuring PPC advertisement
links such as “Pharma” or “Chemical Vendors” which are applicable to the Complainant’s activity. Such use
cannot be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the
Policy. In fact, this Panel shares the view of previous UDRP panels holding that the use of a domain name
to host a parking page comprising PPC links does not represent a bona fide offering where such links
compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead
Internet users (see section 2.9 of the WIPO Overview 3.0). In addition, the Respondent did not submit any
evidence of bona fide pre-Complaint preparations to use the disputed domain name. In particular, the
Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the
SOLVAY trademarks for registering the disputed domain name, which are confusingly similar.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Finally, there is no evidence in the records showing that the Respondent might be making a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In fact, as

underlined here above, the disputed domain name is used for a parking page with commercial links. Such
use is commercial. Therefore, the Panel holds that such commercial use cannot – from the outset – be
considered a legitimate, noncommercial or fair use of the disputed domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark. In addition,
the Panel is satisfied that the registered trademark SOLVAY is highly distinctive so that it is unlikely that the
Respondent wanted to fairly use the disputed domain name consisting of this term.

It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production under the second element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular, but without limitation, be evidence of the disputed domain name’s registration and use in bad faith.

One of those circumstances are those specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.

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In the Panel’s view, the Respondent has intentionally registered the disputed domain name which contains the Complainant’s distinctive trademark SOLVAY plus the element “corp”, being recognizable as the abbreviation of the term “corporation”. By the time the disputed domain name was registered, it is therefore unlikely that the Respondent did not have knowledge of the Complainant and its mark SOLVAY and its business activity.

The Complainant also provided evidence that the Respondent used the disputed domain name to lead to a website featuring PPC advertisement links. This is indicative of bad faith, even if the webpage is configured automatically by the registrar or any other party. Indeed, particularly with respect to “automatically”

generated PPC links, previous UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith (see section 3.5 of WIPO Overview 3.0).

These facts confirm that the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith:

- the distinctiveness of the trademark SOLVAY which has existed since decades;

- the trademark SOLVAY is fully and identically incorporated in the disputed domain name;
the Respondent not providing any formal response to the Complainant’s contentions with conceivable
explanation of its behavior so that no legitimate use of the disputed domain name by the Respondent
is actually conceivable for the Panel;

- the Respondent using a privacy service to hide its identity; and

- the Respondent is engaged in a pattern of conduct since it did not only register the disputed domain
name but has additionally lost one previous UDRP proceeding initiated by the same Complainant,
involving the same trademark SOLVAY and almost the same domain name than in the present case.
In that case, the panel ordered transfer of the domain name <solvaycorp.com> (see Solvay Société
Anonyme v. Quisha Jackson, Jack fit n ups, WIPO Case No. D2022-3305).

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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, <solvaycorp.co> be transferred to the Complainant.

/Tobias Malte Müller/
Tobias Malte Müller
Sole Panelist
Date: January 30, 2023