Solutia, Inc. v. CG & Asociados c/o
Gylmar Roman Garcia Flores
Claim Number: FA0605000700421
PARTIES
Complainant is Solutia, Inc. (“Complainant”), represented by Ryan M. Kaatz, of Ladas & Parry, Digital Brands Practice, 224 South Michigan Avenue, Chicago, IL 60604. Respondent is CG & Asociados c/o Gylmar Roman Garcia Flores (“Respondent”), Bahia Vizcaino 4516, Monterrey, NL 64790, MX.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartsolutia.com>,
registered with Register.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
David S. Safran as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 3, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 4, 2006.
On May 4, 2006, Register.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <smartsolutia.com>
domain name is registered with Register.com, Inc. and that the Respondent is
the current registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On May 5, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 25, 2006 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@smartsolutia.com by e-mail.
A timely Response was received and determined to be complete on May 19,
2006.
On May 26, 2006, after the deadline for submissions, an additional
submission was received from Complainant.
In view of extenuating circumstances with regard to belated receipt of
the Response, the additional submission has been considered by the Panel.
On May 26, 2006, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that prior to registration of the domain <smartsolutia.com>
by Respondent, Complainant had acquired numerous trademark registrations, in
Mexico and elsewhere, with respect to which the word “solutia” forms all or
part of the trademark. Complainant
further contends that the domain is confusingly similar to its registered
trademark SOLUTIA since it forms the dominant part of the domain name, and that
Respondent knew or should have known of the existence of Complainant’s trademark
due to its presence in Mexico and its trademark registrations there. Still further, Complainant asserts that
Respondent has acquired no rights or legitimate interests in the domain name <smartsolutia.com>
since it is merely being used for a parking site. For the same reason, Complainant contends that Respondent
acquired and is using the domain name in bad faith.
B. Respondent
Respondent contends that SOLUTIA is not a well known trademark in its
country, Mexico, that numerous other marks exist of which the term “solutia”
forms a part, and that its computer services are unrelated to the chemical
industry with respect to which Complainant’s trademark is used and has been
registered so that Respondent’s domain is not confusingly similar to Complainant’s
trademark. Respondent further contends
that it has not adopted and is not using the domain to divert internet traffic
from Complainant, that the mark was adopted for legitimate reasons in
furtherance of an on-going plan to establish an internet presence for its
computer services business when its original name was found to be unavailable
and the name adopted found to be available.
C. Additional Submissions
In its Additional Submission, Complainant essentially reiterates its
position on confusing similarity, and adds to its position as to the fact that
Respondent knew or should have known of Complainant’s marks because Respondent
has indicated that it performed a trademark search during the course of its
search for a mark to adopt when it discovered that its original name was
already taken. Furthermore, Complainant
contends that the fact that a website is under construction by Respondent is
not sufficient to demonstrate any rights to or legitimate interests in the
domain name registered since such activity did not predate initiation of the
dispute.
FINDINGS
The Panel finds that Complainant has no rights to the name “Solutia” as
it applies to computer services as evidenced by U.S. Trademark Registration No.
2,192,228 which has become incontestable on the basis of prior use and which is
for the mark SOLUTIA CONSULTING, INC. for “computer consultation, software
updating, software designing, and system analysis” services, respect to which
“NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CONSULTING, INC."
APART FROM THE MARK AS SHOWN,” and that other third party marks exist of which
the word “solutia” forms a part.
Allegations of bad faith on the part of the
Respondent in registering the domain name for the purpose of disrupting the
business of the Complainant, or intentionally attempting to attract users to
his site because of the confusion resulting from the similarity of names, lack
substantiation. The Panel also finds
that no evidence exists that Respondent has made any attempt to interfere with
Complainant’s use of its mark, and no evidence of actual confusion exists.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted 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 that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
The Panel finds that Respondent’s <smartsolutia.com> domain name is not confusingly similar
to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147
(9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific
concepts. In the Internet context, consumers are aware that domain names for
different Web sites are quite often similar, because of the need for language
economy, and that very small differences matter.”). In the present context, the lack of the right by Complainant to
preempt all use of the “solutia” term in the field of computer services is evidenced
by the by U.S. Trademark Registration No. 2,192,228 cited in the findings
above.
The Panel finds that Complainant has failed
to meet its burden in proving that Respondent does not have rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)
because Complainant has failed to point to particular facts and circumstances
supporting its allegations. See Lush
LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding
that even when the respondent does file a response, the complainant must allege
facts, which if true, would establish that the respondent does not have any
rights or legitimate interests in the disputed domain name); see also Graman
USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16,
2003) (finding that absent a showing of any facts by the complainant that
establish the respondent lacks rights or legitimate interests in the disputed
domain name, the panel may decline to transfer the disputed domain name).
The panel finds that Complainant’s
allegations of bad faith on the part of the Respondent in registering the
domain name for intentionally attempting to attract users to its site because
of the confusion resulting from the similarity of names, lacks
substantiation. In Entercolor Techs. Corp. v. Gigantor Software
Dev., Inc., FA 93635 (Nat. Arb. Forum Mar. 21, 2000), the panel
found that even though “Respondent's domain names [were] identical to
the Complainant's trademark,” the respondent’s “assertion that it [had] been
using the name in its business for several years [was] not rebutted.” Moreover, though there were the troubling
aspects of the response mentioned in the panel decision cited above [the panel
found that the respondent never constructed a web site and while the respondent
said it never heard of the complainant, there was evidence to the contrary],
the complainant had not shown that the respondent registered the domain names
or was using them in bad faith. The
respondent's business was not in any way similar to the complainant’s. There was no indication that the respondent
registered the name with the intent to transfer it to the complainant, to
prevent the complainant from using the domain name, to disrupt the
complainant's business, or to attract Internet users through confusion. While it’s likely that the respondent knew
of the name GIGANTOR from the complainant's character, that was insufficient
under the ICANN policy to order a transfer of a domain name.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
David S. Safran,
Panelist
Dated: June 5, 2006
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