Umicore v Sergio Sandrin

WIPO Case No. D2022-1600

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Umicore v. Sergio Sandrin

Case No. D2022-1600

1. The Parties

The Complainant is Umicore, Belgium, represented by Gevers Legal, Belgium.

The Respondent is Sergio Sandrin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <umicoreservices.com> (“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 May 2, 2022. On May 3, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 3, 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 May 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2022.

The Center appointed Nicholas Smith as the sole panelist in this matter on June 10, 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 Belgian company that specializes in materials technology and recycling. The
Complainant’s annual turnover is over EUR 10 billion and it operates in various jurisdictions across Europe,
North America, Asia, and Africa.

The Complainant is the owner of a trade marks in various jurisdictions consisting of the word “umicore” (the “UMICORE Mark”) including an International Registration for the UMICORE Mark (Registration No. 775794, registered on January 22, 2002) for goods and services in classes 01, 02, 06, 09, 14, 40, and 42,

designating jurisdictions including the United Kingdom, Japan, and Singapore.

The Domain Name was registered on July 15, 2021, and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s UMICORE Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the UMICORE Mark, having registered the UMICORE Mark in various jurisdictions. The Domain Name is confusingly similar to the UMICORE Mark, wholly incorporating the UMICORE Mark and adding the descriptive term “services”.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The is the Respondent commonly known by the Domain Name. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Indeed the Domain Name does not resolve to an active webpage at all.

The Respondent has registered and uses the Domain Name in bad faith. There is no plausible circumstance under which the Respondent could legitimately use the Domain Name, which combines the UMICORE Mark and the descriptive term “services”, other than in bad faith. Given the reputation of the highly distinctive

UMICORE Mark, the Respondent must have been aware of the Complainant’s mark at the time of registration. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

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The Complainant is the owner of the UMICORE Mark, having a registration for the UMICORE Mark as a trade mark in various jurisdictions.

The Domain Name incorporates the UMICORE Mark in its entirety with the addition of the dictionary term,
“services”. Other UDRP panels have repeatedly held that where the relevant trade mark is recognizable
within the disputed domain name, the addition of other terms does not prevent a finding of confusing
similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected

UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that the Domain Name is confusingly similar to the Complainant’s UMICORE Mark.

Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved
based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name,

even if you have acquired no trade mark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial

gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the
Complainant to register or use the Domain Name or to seek the registration of any domain name
incorporating the UMICORE Mark or a mark similar to the UMICORE Mark. There is no evidence that the

Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain use. In fact, there is no evidence of any demonstrable preparations to use the Domain Name at all.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name. The Panel finds

that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph

4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

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1. circumstances indicating that the Respondent has registered or has acquired the Domain Name

primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name;
or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or

service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has
engaged in a pattern of such conduct; or

1. the Respondent has registered the Domain Name primarily for the purpose of disrupting the business

of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial

gain, Internet users to its website or other online location, by creating a likelihood of confusion with the or location or of a product or service on the Respondent’s website or location.

The Domain Name was registered around 20 years after the UMICORE Mark was registered. The Panel finds, on the balance of probabilities, that the Respondent would have been aware of the Complainant and its reputation in the UMICORE Mark at the time the Respondent registered the Domain Name. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the coined UMICORE Mark and the word “services” unless there was an intention to create a likelihood of confusion between the Domain Name and the UMICORE Mark from which the Respondent would likely benefit.

The Panel is prepared to infer, based on the conduct of the Respondent, including the nature of the Domain Name (containing a coined mark and a descriptive term), the passive holding of the Domain Name and the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that combines the UMICORE Mark and the word “services”, that the Domain Name is most likely being held pending use as website or email address that, without the license of the Complainant, will offer or make reference to the Complainant in an illicit manner for the Respondent’s commercial gain. As such, the Panel finds that the passive holding of the Domain Name does not prevent a finding of use in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name <umicoreservices.com> be transferred to the Complainant.

/Nicholas Smith/
Nicholas Smith
Sole Panelist
Date: June 21, 2022