Smartsolutia.com

The timeline behind smartsolutia.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION 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. Identical and/or Confusingly Similar 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. Rights or Legitimate Interests 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). Registration and Use in Bad Faith 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 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.