FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
LyondellBasell Group (referred to as LyondellBasell) is a multinational chemical company with European and American roots going back to 1953-54 when the predecessor company scientists Professor Karl Ziegler and Giulio Natta (jointly awarded the Nobel Prize in Chemistry in 1963) made their discoveries in the creation of polyethylene (PE) and polypropylene (PP).
Ever since, LyondellBasell has become the third largest plastics, chemicals and refining company and the largest licensor of polyethylene and polypropylene technologies in the world. The Complainant has over 13,000 employees around the globe and manufactures at 55 sites in 17 countries. Its products are sold into approximately 100 countries.
LyondellBasell manages its operations through five operating segments:
• Olefins and Polyolefins—Americas: produces and markets olefins and co-products, polyethylene and polypropylene.
• Olefins and Polyolefins—Europe, Asia, International: produces and markets olefins and co-products, polyethylene, and polypropylene, including polypropylene compounds.
• Intermediates and Derivatives: produces and markets propylene oxide and its derivatives, oxyfuels and related products and intermediate chemicals, such as styrene monomer, acetyls, ethylene oxide and ethylene glycol.
• Refining: refines heavy, high-sulfur crude oil and other crude oils of varied types and sources available on the U.S. Gulf Coast into refined products including gasoline and distillates.
• Technology: develops and licenses chemical and polyolefin process technologies and manufactures and sells polyolefin catalysts.
According to the 2017 annual report LyondellBasell generated $4.9 billion in income from continuing operations, EBITDA of $7.1 billion and $12.28 diluted earnings per share.
LyondellBasell is listed on the New York Stock Exchange since 2010.
On December 20, 2017 the company celebrated the 10-year anniversary of the merger of Lyondell Chemical Company and Basell AF SCA, a transaction that created one of the largest plastics, chemicals and refining companies in the world.
LyondellBasell Group is formed of various affiliated companies, all of them under the ultimate control of LyondellBasell Industries N.V., headquartered in The Netherlands.
The disputed domain name <lyondellbasellindustriesnv.com> was registered on October 9, 2021 by the Respondent, whose identity is redacted through the privacy protect service WHOIS Privacy Corp., that is therefore currently indicated as registrant.
The disputed domain name does not currently resolve to an active website, however the domain name holder has used <lyondellbasellindustriesnv.com> to create the e-mail address massimo.selle@lyondellbasellindustriesnv.com to impersonate the sales department of LYONDELLBASELL INDUSTRIES HOLDINGS B.V. and mislead a client, recipients of the e-mails, requesting payments, and signed said message with the name of the Massimo Selle “Sales Director and Marketing Manager”. The disputed domain name is therefore involved in storage spoofing / phishing.
Storage spoofing (also known as terminal spoofing) is a specific form of phishing. Storage spoofing covers all varieties of the sale of non-existent storage capacities and stocks of resources and materials at port terminals.
The target for this kind of fraud are national and multinational companies that either operate or are looking for storage facilities in the port area, as well as all potential buyers of the goods stored at these terminals. These goods are offered under false pretences but turn out to be non-existent. The phenomenon is described in details at the website of the Port of Rotterdam Authority: https://ferm-rotterdam.nl.
LEGAL GROUNDS
A. PRELIMINARY PROCEDURAL QUESTIONS
The Complainant of this administrative proceeding is LyondellBasell Industries Holdings B.V., filer of this Complaint also on behalf of the other interested parties (LyondellBasell Industries N.V. and Lyondell Chemical Company). The transfer decision is to be directed to the Complainant.
B. MERITS
I. IDENTITY OR CONFUSING SIMILARITY
Under the first UDRP element, the straightforward side-by-side comparison of the disputed domain name and the textual components of the marks on which this Complaint is based makes it evident that LYONDELL Trademarks and LYONDELLBASELL Trademarks are easily recognizable within the disputed domain name and, thus, the disputed domain name is confusingly similar to the marks in which the Complainant has rights.
The disputed domain name is undoubtedly confusingly similar to such marks, since it incorporates the entirety of the dominant and distinctive part of the trademark (i.e. the wording LYONDELLBASELL). While each case is judged on its own merits, in UDRP cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark under the first element of the UDRP (see paragraph 1.7 WIPO Overview 3.0 and the decisions mentioned thereto).
Comparing the disputed domain name and the LYONDELLBASELL Trademark the only difference is the addition of the generic, non-distinctive and descriptive word “industriesnv”. Such addition neither effects the attractive power of such trademark, nor is sufficient to prevent the finding of confusing similarity between the disputed domain name and such mark, but even enhances the likelihood of confusion. Conversely, considering that the term “INDUSTRIES” and the acronym “N.V.” constitute the company name LyondellBasell Industries N.V. of one of the related companies of the Lyondell Basell Group and are included in different domain names LYONDELLBASELLINDUSTRIES registered by complaint prior to the registration to lyondellindustriesnv.com, their addition to the trademark LYONDELLBASELL in the domain name reinforce the risk of confusion for Internet Users.
The disputed domain name is registered under the top-level domain (TLD) .com, which is to be disregarded for the purpose of determination of identity or confusing similarity between the disputed domain name and the Complainant’s trademark as it is a technical requirement of registration (see paragraph 1.11.1 WIPO Overview 3.0 and the decisions mentioned thereto).
The Complainant therefore contends that:
- LyondellBasell is a well-known chemical company, one of the world’s largest producers of polymers, operating refineries worldwide;
- The domain name is not only identical to the trademarks LYONDELL but also identical to the Company name LyondellBasell Industries N.V.;
- The domain name has been used to create at least one account e-mail to impersonate Complainant and target its clients
II. RESPONDENT’S LACK OF RIGHTS AND LEGITIMATE INTERESTS
It is a consensus view of UDRP panels that the Complainant shall establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent (see paragraph 2.1 of the WIPO Overview 3.0: "[...] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name for the following reasons:
- The Complainant (or the other related parties) has (have) no relationship with the Respondent whatsoever;
- the Respondent has never received any approval of the Complainant (or the other related parties), expressed or implied, to use its (their) trademarks or any other mark identical or confusingly similar to such marks, nor to register any domain name identical or confusingly similar to such marks;
- there is no evidence that the Respondent has acquired any rights in a trademark or trade name corresponding to the disputed domain name;
- the disputed domain name has been used to create an account email involved in phishing activities (storage spoofing).
Such use of the domain name is clearly not a bona fide, legitimate or fair use under the UDRP Policy.
III. REGISTRATION AND USE IN BAD FAITH
The Respondent registered the disputed domain name confusingly similar to the Complainant’s well-known prior trademarks cited above and identical to the Company name LyondellBasell Industries N.V..Given, the distinctiveness and reputation of LyondellBasell’s business and trademarks worldwide, it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of LyondellBasell and its rights in such marks.
The misappropriation of a well-known trademark as domain name by itself constitutes bad faith registration for the purposes of the Policy. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
In light above, it is inconceivable that Respondent was not well aware of Complainant’s trademark rights at the time of the registration of the Domain Name. Indeed, Respondent's purpose in registering the Domain Name, incorporating LYONDELL BASELL, was probably to capitalize on the reputation of Complainant's trademark by diverting Internet users seeking information about this distinctive sign to its own website, where sponsored links are published. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.
Furthermore, the disputed domain name has been registered long after the filing/registration of the Complainant’s trademarks.
The disputed domain name is currently not redirected to an active website: with respect to the use in bad faith, since the inception of the UDRP, panellists have found that the non-use of a domain name (including as in this case a blank page) would not prevent a finding of bad faith under the doctrine of passive holding.
In this regard, different factors have been considered relevant in applying the passive holding doctrine including the degree of distinctiveness or reputation of the complainant’s mark and the implausibility of any good faith use to which the domain name may be put, and both factors are indeed relevant in the present case. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Jupiter Limited v. Aaron Hall, WIPO Case No. D2000-0574; Virgin Enterprises Limited v. Ceasr Alvarez, WIPO Case No. D2016-2140.
Such finding is also supported by the fact that the disputed domain name has been used to create an account email involved in phishing activities (storage spoofing).
Carrying out unlawful and illicit activities through the disputed domain name is to be considered evidence of the registration and use of the disputed domain name in bad faith.
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